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Quarterly Journal 42-1

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Table of Contents

The Respective Roles of the Courts and Congress in Shaping Patent Policy Members Only

Honorable Kathleen M. O'Malley

This is a transcript of a keynote speech delivered at the Fifth Annual Conference on The Role of the Courts in Patent Law and Policy, hosted by Georgetown University Law Center and Berkeley Center for Law and Technology on November 1, 2013 in Washington, D.C. In her keynote speech, Judge O’Malley addresses the grave risks that are created when parties turn to the Courts for substantive policy-making or turn to Congress for rule-making and case management in an attempt to improve the patent system. The speech stresses the need to adhere to the structural limitations on the branches of government established by the Constitution and the importance of focusing not just on the changes that parties think need to occur, but on which branch of government should be asked to effectuate those changes.

The Patent Box as the New Innovation Incentive for the Several States: Lessons from Intellectual Property-Tax Competition Members Only

W. Wesley Hill

This Article suggests that three events are common to national and state IP tax competition: (1) a foreign jurisdiction enacts IP tax incentives, such as the patent box in Europe or the exemption of intangibles income in Delaware; (2) to avoid the income tax liability associated with its IP, domestic entities transfer their IP to the foreign jurisdiction; and (3) after discovering the IP migration, domestic governments enact protectionist tax policies to stop such transfers and recoup revenues. This Article proposes that a fourth action can end the cycle: the embrace of a policy of competition, not protectionism, by domestic governments through enacting their own properly designed patent box. This could benefit governments by incentivizing domestic research and development, innovation, and commercialization of IP and by removing the incentive to transfer IP abroad.

The New Battlefield: One Year of Inter Partes Review Under the America Invents Act Members Only

Yasser El-Gamal, Ehab M. Samuel, and Peter D. Siddoway

Interest in Inter partes review (IPR) proceedings has steadily increased since IPR proceedings first became available in September of 2012. This Article examines a number of emerging trends, strategies, considerations, and practices that might shed light on the reason these proceedings have gained popularity so quickly. The Article undertakes a brief review of IPR procedures in the context of other patent review proceedings, presents a one-year statistical analysis of IPR filing rates, institution rates, technology, ownership, settlement, and motions to stay in pending litigation, and addresses important lessons learned from the first year of IPR.

Student Notes

A Failure to Communicate: How Linguistics Can Inform Trademark Law Members Only

Jared Stipelman

Economic globalization depends largely upon globally harmonized intellectual property protection regimes. The prudential Doctrine of Foreign Equivalents seeks to harmonize international trademark law and to regulate the global linguistic commons by determining when a word mark in a particular language should be translated to determine descriptiveness, genericness, and likelihood of confusion. In practice, the Doctrine has been applied inconsistently, creating transactional and informational costs that hinder international business expansion. This Note proposes using anthropological and psycholinguistic insights into language processing and acquisition to fashion a scientifically-grounded Doctrine of Foreign Equivalents that is faithful to the Doctrine’s policy considerations and predicated on objective factual inputs.

Contract Principles: A Sensible Alternative to the “All Substantial Rights” Standard in Licensee Standing Members Only

Sarah Greibrok

Patent licensing is an increasingly profitable and prolific industry. Licensors and licensees want to protect their licensing investments, and be certain they are receiving the rights they bargained for. This can be difficult where there is uncertainty surrounding who has standing to bring a suit against potential infringers. This Note examines the current "all substantial rights" standard used to determine whether a licensee has standing and argues that a stronger reliance on pure contract principles brings more clarity and predictability to the currently unpredictable standing doctrine.