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Quarterly Journal 42-3

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Table of Contents

Trade Dress 2.0: Trademark Protects in Web Design What Copyright Does Not​ Members Only

Gregory Melus

This comment argues that web designers and application developers should use trade dress to protect the web design of websites and Internet applications.  Currently, protections for websites and Internet applications exist under copyright; however, the limited right of copyright is not broad enough to protect all elements of web design.  Trade dress would provide more effective protection because the protection is based on the user experience, similar to the concept of a store instead of the underlying code, the basis of copyright.  Additionally, rather than copyright, which is based on creativity, trademark law, based on commercial principles, would more effectively protect the user interface and ultimately the value of the website or application.  Practically, the copyright infringement analysis does not provide the full protections that a trade dress likelihood of confusion analysis would provide.  Thus, courts should use trade dress analysis because: 1) web designers and application developers need to protect the user interface of their products and 2) the legal analysis for finding trade dress infringement protects the composition of the web design over the individual elements, which is the reverse of the copyright infringement analysis for software

Reforming the Utility Model System in China: Time to Limit Utility Model Patents' Scope of Protection and Improve the Quality of Chinese Utility Model Patents Members Only

Yieyie Yang

With the rapid economic development in China, the utility model system has quickly become one of the most adopted elements of Chinese Patent Law, and the number of Chinese utility model patents granted annually exceeds that of any other country.  Nevertheless , whereas utility model patents are extremely popular among Chinese domestic applicants, foreign companies and legal scholars are increasingly concerned over the quality and stability of Chinese utility model patents, their interference with market competition, and their perceived negative impact on investment in true innovation.  This article aims to provide a better understanding of the Chinese utility model system.  Moreover, it proposes changing the utility model patent system to stimulate innovation by limiting the scope of protection provided by utility model patents and fundamentally improving their quality.  Part I introduces the main difference between utility model patents and invention patents in China.  Part II provides the historical background, establishment, and development of the utility model system in Germany, Japan, and China.  Part III explains the popularity of utility model patents among Chinese domestic applicants.  Part VI provides patent strategies for foreign applicants to take advantage of the current Chinese utility model system.  Part V proposes changes to the Chinese Patent Law and SIPO’s Patent Examination Guidelines to reform the Chinese utility model patent system by limiting the scope of utility model patents and improving their quality.​

Revisiting the Human Gene Patenting Debate in the Wake of Myriad Genetics Members Only

Seamus Lovelace

The Supreme Court’s landmark Association for Molecular Pathology v. Myriad Genetics decision invalidated Myriad’s patent claims to human gene sequences marks a significant departure from long-established USPTO patent practice and Supreme Court precedent. As a result, the Myriad decision dealt a significant blow to both established patent law and the biomedical industry – in which patent protection is a key driver of research and development investment – by potentially exposing more than 3,500 patents covering isolated human DNA to the risk of challenge and invalidation. Given the significant cost of research and development investment and the length of time involved in bringing a new drug or diagnostic product to market, biomedical firms will likely respond by patenting around genes or choosing to protect scientific knowledge as trade secret rather than disclosing and sharing such important information – and scientific progress and public health and prosperity may suffer as a result. This decision comes despite a lack of substantial or convincing evidence that such an overhaul to gene patents was necessary or favorable. On the contrary, it appears that a return to the status quo of patent practices with respect to certain industries, such as the biomedical industry, may actually be warranted.

Student Notes

Infringement by Blueprint: Protecting Patent Rights in a World of Low-Cost 3D Printing Members Only

Sam Dillon

As the capabilities of personal 3D printers expand, so does their ability to infringe patent rights. When a user downloads a digital blueprint for a patented invention and prints it at home, the only direct infringer of the patent is the user themselves. The digital blueprint designer and distributor (such as a website) are insulated from liability through the heightened knowledge requirements for proving indirect infringement. This Note discusses the technology and ecosystem of 3D printing, and compares patent liability for 3D printing to that of software. Finally, it argues that Beauregard claims, already used to provide direct infringer liability to those who trade in software inventions, can be adapted to cover digital blueprints in the 3D printing space.

Discovering Discovery Technology! A Model Order and Pilot Program For Implementing Predictive Coding and Other New Technologies in Document Review Members Only

Andrew John Sutton

Discovery accounts for over half of all litigation expenses; discovery costs in intellectual property cases are 61% higher than in regular litigation cases. Reducing litigation costs can result in cost savings for both plaintiffs and defendants in infringement cases, and ultimately a more efficient and fair intellectual property enforcement system in the United States. New document review technologies have been introduced that have been shown to be more accurate and more efficient than manual document review in some cases. The Federal Circuit in 2011 introduced model orders to reduce discovery costs; this note proposes a modification of these orders to include the use of new technology such as predictive coding. Judicial understanding and approval of new technology during the discovery stage will improve the parties’ confidence in using such new technologies. Additionally, this note proposes that the expedited litigation processes at the Patent Trial and Appeals Board (PTAB) and at the International Trade Commission (ITC) are excellent for a discovery pilot program. Implementing a discovery pilot program at the PTAB and the ITC can result in new discovery technologies being vetted more quickly than in regular litigation at the district court level, resulting in the sooner implementation of cost saving techniques in patent cases.