Quarterly Journal 46-1 Volume 46, Issue 01 September 2018

Mistakes in Patent Law: Reforming the Reissue Statute in Light of Alice

This Note argues for an amendment to 35 U.S.C. § 251 — the Reissue Statute. Specifically, it proposes a change that would enable patent owners to cure defects in their patents for want of subject-matter eligibility. The Note explains that both mutual mistake and the primary-jurisdiction doctrine provide the theoretical foundations behind an amendment to the Reissue Statute. Application of the mutual-mistake doctrine to patent law shows that § 101 drafting issues are worthy of a do-over. The primary-jurisdiction doctrine provides a justification for the conclusion that the USPTO is the best forum to allow amendments to the patent, based on agency expertise and the court’s lack of power to amend patent claims during litigation, when § 101 issues often arise. Amending the Reissue Statute incorporates the mutual-mistake concept, providing an avenue for patent owners to cure patents defective due to potentially poor draftsmanship at the USPTO rather than the courts.

The Stakes Have Never Been Higher: Why States Should Adopt a Model State Intent-to-Use Trademark Registration System to Facilitate the National Expansion of the Marijuana Industry

Marijuana legalization is one of the hot-button issues being debated in the United States. While a majority of citizens support marijuana legalization, the drug remains an illegal substance under the Controlled Substance Act (CSA). The United States Patent and Trademark Office has also made clear that until marijuana is rescheduled under the CSA, it will not register trademarks for marijuana goods and services because of the lawful use in commerce requirement. Accordingly, states have become the primary avenue for marijuana business to register their trademarks because they do not require a mark to be lawfully used in commerce. However, the current state-trademark-registration regime is inadequate because the Model State Trademark Act, which all states adopt in full or in part, only provides for use-based trademark applications. As such, marijuana businesses risk trademark dilution if they expand into other states because they can only register their trademarks after they begin operating in a state.

This Note argues states that have legalized medical marijuana should adopt a Model State Intent-to-Use Registration System (Model ITU System) to facilitate the expansion of the marijuana industry. A Model ITU System would provide marijuana business quasi-national trademark rights through the use of intent-to-use trademark applications and secure protection for their brand signals before making substantial investments toward expansion. Additionally, a Model ITU System would promote the policy of trademarks serving as source identifiers for goods and services.