Intellectual Property
Article
The Antibody Patent Paradox
Shifts in patent law’s enablement and written description requirements make it impractical for patentees of antibody technologies to disclose and claim their inventions. We describe this as a doctrinal paradox and offer a solution that gives patentees the power to claim antibodies without giving the…
Note
Rulemaking § 101
This Note chronicles the Patent Office’s use of guidance to reduce the judicially created uncertainty that surrounds patentable subject matter. It argues that these guidance documents closely resemble legislative rulemaking and thus push the boundaries of the Office’s current authority.
Review
The Law of Informational Capitalism
Informational capitalism brings new dangers of surveillance and manipulation—but also of accelerating monopoly, inequality, and democratic disempowerment. Examining two important new books on the topic, this Review maps the law and political economy of informational capitalism, a domain of rising pr…
Article
Innovation Policy Pluralism
Intellectual property is not a monolith. It rewards innovators with temporary exclusive rights to their creations, and it conditions consumers’ access to such goods through proprietary pricing. Using this insight, this Article develops a more accurate framework for analyzing the innovation policy la…
Forum
When Patents are Sovereigns: The Competitive Harms of Leasing Tribal Immunity
The Hatch-Waxman Act and the AIA balance exclusive rights of pharmaceutical patent holders with entry of generic competitors. Allergan’s recent patent transfer to the Saint Regis Mohawk Tribe threatens this balance. This Essay proposes antitrust suits to sidestep sovereign immunity and prevent compa…
Forum
Vaccine Licensure in the Public Interest: Lessons from the Development of the U.S. Army Zika Vaccine
This Essay analyzes the recent attempted exclusive licensing deal for a Zika vaccine, which would have hampered the drug’s affordability and availability. Revising the Patent Act to increase transparency and accountability in the licensing process would ultimately result in more affordable vaccines …
Note
What’s Wrong with Intentionalism? Transformative Use, Copyright Law, and Authorship
Copyright law’s experiment with transformative use is failing. So argue a growing number of scholars who contend that the standard conflicts with the goals of art. In their view, transformative use goes astray by conflating the accused work’s meaning with the defendan…
Forum
A Trademark Defense of the Disparagement Bar
The Supreme Court will soon hear argument over whetherCongress may forbid registering trademarks that consist of “matter which may disparage or falsely suggest aconnection with persons, living or dead, institutions, beliefs, or nationalsymbols, or bring them into contempt, or disrepute.” The dispara…
Comment
Reimagining Finality in Parallel Patent Proceedings
Parties may challenge the validity of issued patents in federal courts and before the Patent and Trademark Office (PTO) and its administrative tribunal, the Patent Trial and Appeal Board (PTAB). Recently, the Court of Appeals for the Federal Circuit, which has exclusive appellate jurisdict…
Comment
Toward an Efficient Licensing and Rate-Setting Regime: Reconstructing § 114(i) of the Copyright Act
Why is Sony/ATV Music Publishing, the world’s largest music publisher,1 unhappy about its massive hit single “Happy”?2 According to CEO and Chairman Martin Bandier, the answer comes down to the math behind digital streaming revenues. In the first three months of 2014, the Internet ra…
Article
The First Patent Litigation Explosion
The twenty-first century “patent litigation explosion” is not unprecedented. In fact, the nineteenth century saw an even bigger surge of patent cases. During that era, the most prolific patent enforcers brought hundreds or even thousands of suits, dwarfing the efforts of toda…
Forum
Claim Construction or Statutory Construction?: A Response to Chiang & Solum
Introduction “Claim construction” is the process by which a court determines the meaning of a patent’s claims—a process that in turn determines the scope of the covered invention. This process is extremely important because a court must determine what the patent covers before it ca…
Forum
Garcia v. Google and a "Related Rights" Alternative to Copyright in Acting Performances
A recent Ninth Circuit case, Garcia v. Google, held that an actor can maintain a copyright interest in her acting performance in a film—independent of the copyright held by the filmmaker—and that this copyright can sometimes be sufficiently powerful to allow the actor to prevent public di…
Forum
The Unconvincing Case for Resale Royalties
Introduction Here we go again. In late February 2014 a group of congresspersons introduced a bill—The American Royalties Too Act of 2014 (known for its catchy abbreviation: the ART Act),1 which, if passed, will grant visual artists2 a right to collect royalties when their artworks are r…
Essay
The Continuum of Excludability and the Limits of Patents
122 Yale L.J. 1900 (2013).
In IP scholarship, patents are commonly understood as more efficient than other approaches to innovation policy. Their primary ostensible advantage is allocative: as a form of property rights, patents act as a conduit between market signals and potential innovators, ostensi…
Comment
Copyright Protection in an Opt-Out World: Implied License Doctrine and News Aggregators
122 Yale L.J. 837 (2012).
Note
The Artist as Brand: Toward a Trademark Conception of Moral Rights
122 Yale L.J. 218 (2012).
The Visual Artists Rights Act of 1990 (VARA) controversially recognized artists’ “moral rights” by protecting their work from alteration or destruction and by preventing the use of an artist’s name on a work he did not create. While moral rights are frequently criticized as …
Forum
Inflation Indicators
**This is the sur-reply to a series of responses to Jonathan Masur's recent article, Patent Inflation, which appeared in the December issue of YLJ. For Professor Arti Rai's response, see here. For Lisa Ouellette's response, see here.**
In Patent Inflation, I argued that the asymmetry in Federal Cir…
Forum
What Are the Sources of Patent Inflation? An Analysis of Federal Circuit Patentability Rulings
**This is the second in a series of responses to Jonathan Masur's recent article, Patent Inflation, which appeared in the December issue of YLJ. For Professor Arti Rai's response, see here. For Professor Masur's sur-reply, see here.**
Professor Jonathan Masur’s recent article, Patent Inflation, argue…
Forum
Who’s Afraid of the Federal Circuit?
**This is the first in a series of responses to Jonathan Masur's recent article, Patent Inflation, which appeared in the December issue of YLJ. For Lisa Ouellette's response, see here. For Professor Masur's sur-reply, see here.**
Jonathan Masur’s argument regarding “Patent Inflation” rests on the a…
Article
Patent Inflation
121 Yale L.J. 470 (2011).
For more than two decades, the Patent and Trademark Office (PTO) and the Federal Circuit have exercised nearly complete institutional control over the patent system. Yet in recent years their stewardship has been widely criticized, largely on the basis of two particular fail…
Article
The Inducement Standard of Patentability
120 Yale L.J. 1590 (2011).
In Graham v. John Deere Co., the Supreme Court explained that patent law’s nonobviousness doctrine is meant to restrict the award of patents to only “those inventions which would not be disclosed or devised but for the inducement of a patent.” This Article argues that th…
Article
Patent Law and the Two Cultures
120 Yale L.J. 2 (2010).
A half-century ago, author and physicist C.P. Snow warned of a “gulf of mutual incomprehension” between the liberal arts and sciences. Snow’s “Two Cultures” thesis is particularly relevant to patent law, a realm where law and science intersect. Drawing on Snow’s framework, …
Comment
Addressing the Green Patent Global Deadlock Through Bayh-Dole Reform
119 Yale L.J. 1727 (2010).
Forum
A Brief Defense of the Written Description Requirement
The Federal Circuit’s December 7, 2009 hearing of oral argument in Ariad v. Lilly has generated significant interest among those who follow patent policy. An en banc decision is expected within the next few months. The dispute arises from the interpretation of 35 U.S.C. § 112, which states in …
Article
Property as Process: How Innovation Markets Select Innovation Regimes
119 Yale L.J. 384 (2009).
It is commonly asserted that innovation markets suffer from excessive intellectual property protections, which in turn stifle output. But empirical inquiries can neither confirm nor deny this assertion. Under the agnostic assumption that we cannot assess directly whether …
Review
Debunking Blackstonian Copyright
118 Yale L.J. 1126 (2009).
Copyright’s Paradox
BY NEIL WEINSTOCK NETANEL
NEW YORK, NY: OXFORD UNIVERSITY PRESS, 2008, PP.ix, 274. $34.95.
Article
The Ideology of Authorship Revisited: Authors, Markets, and Liberal Values in Early American Copyright
118 Yale L.J. 186 (2008).
The concept of the author is deemed to be central to copyright law. An important strand of copyright scholarship explores how the development of modern copyright law was intertwined with the rise of a new ideology of authorship as an individualist act of creation ex nihilo…
Forum
Linking Ideas to Outcomes: A Response
It is a distinct pleasure to have the chance to respond to the insightful commentaries of Peter Drahos, Ruth Okediji, and Tomiko Brown-Nagin. I find much to agree with in each, but I will focus on a few areas of divergence in the hope of clarifying our differences. Drahos’s work on the role of id…
Article
The Access to Knowledge Mobilization and the New Politics of Intellectual Property
117 Yale L.J. 804 (2008).
Intellectual property law was once an arcane subject. Today it is at the center of some of the most highly charged political contests of our time. In recent years, college students, subsistence farmers, AIDS activists, genomic scientists, and free-software programmers have…
Note
Profits as Commercial Success
117 Yale L.J. 642 (2008).
Courts often use the extent of a patented invention’s commercial success as crucial nontechnical proof of the patent’s validity. Relying on misguided economic reasoning, most courts use revenue as the primary yardstick for commercial success. This Note argues that courts i…
Article
Intellectual Property as Property: Delineating Entitlements in Information
This Article proposes that intellectual property’s close relationship to property stems from the role that information costs play in the delineation and enforcement of exclusion rights. As theorists have emphasized, the nonrivalness of information causes exclusive rights to be more costly in terms o…
Review
Wealth Without Markets?
116 Yale L.J. 1472 (2007)
The Wealth of Networks: How Social Production Transforms Markets and Freedom
BY YOCHAI BENKLER
NEW HAVEN: YALE UNIVERSITY PRESS, 2006. PP. 528. $40.00
Article
Risk Aversion and Rights Accretion in Intellectual Property Law
116 Yale L.J. 882 (2007)
Intellectual property’s road to hell is paved with good intentions. Because liability is difficult to predict and the consequences of infringement are dire, risk-averse intellectual property users often seek a license when none is needed. Yet because the existence (vel non)…
Essay
Copy This Essay: How Fair Use Doctrine Harms Free Speech and How Copying Serves It
114 Yale L.J. 535 (2004)
Recent cases and scholarship have debated whether copyright law is consistent with the First Amendment. Much of the discussion has centered on copyright law's ability to suppress transformative, creative reuses of copyrighted works and on copyright's fair use doctrine as a m…
Note
Patents, Paradigm Shifts, and Progress in Biomedical Science
114 Yale L.J. 661 (2004)
This Note applies the concept of paradigm shifts from the history and philosophy of science to describe how patents on biomedical research tools--inputs to basic research--can help advance scientific theory. Patents on research tools frustrate scientific norms of sharing and …
Essay
Sharing Nicely: On Shareable Goods and the Emergence of Sharing as a Modality of Economic Production
114 Yale L.J. 273 (2004)
This Essay offers a framework to explain large-scale effective practices of sharing private, excludable goods. It starts with case studies of carpooling and distributed computing as motivating problems. It then suggests a definition for shareable goods as goods that are "lump…
Comment
Renting Space on the Shoulders of Giants: Madey and the Future of the Experimental Use Doctrine
113 Yale L.J. 261 (2003)
The experimental use doctrine in patent law protects alleged infringers who use patented inventions solely for experimental purposes, such as testing whether a device functions as claimed or re-creating a process to observe its effects from a scientific perspective. The judi…
Essay
Eldred and Lochner: Copyright Term Extensionand Intellectual Property as Constitutional Property
112 Yale L.J. 2331 (2003)
As intellectual property has become increasingly important to the national economy, a consensus has emerged among academics that courts should scrutinize congressional legislation closely under the Constitution's Copyright Clause. This Essay has challenged the academic conse…
Note
Limiting Locke: A Natural Law Justification for the Fair Use Doctrine
112 Yale L.J. 1179 (2003)
Focusing a discussion of intellectual property on a 300-year-old text may seem unusual, but John Locke's Two Treatises of Government has an uncommon place in American intellectual property theory. Historically, Lockean natural rights informed the Framers' understanding of i…
Article
The Freedom of Imagination: Copyright's Constitutionality
112 Yale L.J. 1 (2002)
In some parts of the world, you can go to jail for reciting a poem in public without permission from state-licensed authorities. Where is this true? One place is the United States of America.
Copyright law is a kind of giant First Amendment duty-free zone. It flouts basic fr…
Article
The Law and Economics of Reverse Engineering
111 Yale L.J. 1575 (2002)
Reverse engineering has a long history as an accepted practice. What it means, broadly speaking, is the process of extracting know-how or knowledge from a human-made artifact. Lawyers and economists have endorsed reverse engineering as an appropriate way to obtain such info…