Quarterly Journal 47-3
In This Section
The AIPLA Quarterly Journal, a publication of the American Intellectual Property Law Association, is housed at the George Washington University Law School and is edited and managed by an Editorial Board of intellectual property experts and a staff of law students under the direction of the Editor-in-Chief, Professor Joan Schaffner.
The Quarterly Journal is dedicated to presenting materials relating to intellectual property matters and is published four times per year. Editorial Board members (all of whom are lawyers) are selected based upon demonstrated interest and experience, and student staff members are selected from the students of the GWU Law School.
QJ 47.3 - Patent Eligibility of Inventions Directed to Graphical User Interfaces
Malgorzata Kulczycka
Patent Eligibility of Inventions Directed to Graphical User Interfaces
The 2019 Guidance provides some clarity for determining patent eligible subject matter under § 101. For example, it clarifies that to be patent eligible, a claim needs to state a new and practical application of an alleged abstract idea.
As the USPTO continues to apply the 2019 Revised Guidance, the number of rejections under § 101 issued in patent applications directed to graphical user interfaces should continue to decline.
This article discusses several recent patent cases in which the inventions were directed to graphical user interfaces. In each of those cases, an applicant would have had a chance to advance their arguments against the § 101 rejections by showing how the recited graphical user interface integrates the alleged abstract idea into a practical application.
QJ 47.3 - The “Unwilling Licensee” in the Context of Standards Essential Patent Licensing Negotiations
Andre Schevciw
The “Unwilling Licensee” in the Context of Standards Essential Patent Licensing Negotiations
This article proposes a framework to determine whether an implementer of standards-essential patents (“SEPs”) is an “unwilling licensee” of fair, reasonable, and non-discriminatory (“FRAND”) licensing terms.
In recent years, scholars and courts have discussed extensively the potential for SEP holders to engage in “patent hold-up.” As a result, SEP holders are now mostly blocked from seeking injunctions, with a possible exception when the SEP implementer is an “unwilling licensee” of FRAND terms.
The SEP holder’s difficulty in seeking an injunction, the uncertainty in determining FRAND rates, and a lack of an agreed definition for “unwilling licensee” create the risk for the so-called “patent hold-out” problem. This article focuses on the “unwilling licensee” determination problem and proposes a framework based on a step-by-step, objective fact-based analysis. The framework aims to increase predictability for both SEP holders and SEP implementers.
QJ 47.3 - Artificial Human Life: Patentable, Playing God, Both?
Austin Grossfeld
Artificial Human Life: Patentable, Playing God, Both?
We as a species have been trying to learn how and why we do the things we do for hundreds of years. This curiosity resulted in scientists at the University of Cambridge making a revolutionary breakthrough by artificially creating an embryo in a laboratory setting.
However, with great discoveries come many questions. One of these questions is whether or not these scientists can patent their work. Attaining the answer to this question requires the analysis of decades of judicial, legislative, and agency decision-making.
This Note looks at the history of all three of these branches that factor into patent rights and requirements, while trying to narrow down the applicable precedent.
QJ 47.3 - Music to My Ears: Adding a Fair Use-Like Provision to the Anti-Bootlegging Statutes
Sean Hanlon
Music to My Ears: Adding a Fair Use-Like Provision to the Anti-Bootlegging Statutes
The federal anti-bootlegging statutes protect live musical performances from unauthorized use. The statutes were conceived in good faith, but have flaws and ambiguities that may impede their effectiveness. The main issues with the statutes are their conflicts with the First Amendment and Commerce Clause. While the statutes have survived challenges regarding the Commerce Clause, they remain vulnerable to First Amendment scrutiny because they lack a fair use exception.
This note delves into the existence and possible resolutions to these problems using social media and modern recording technology as possible bootlegging tools. It is imperative to make these changes as soon as possible considering the Beijing Audiovisual Treaty may further expand the copyright landscape to protect more forms of audiovisual works.
This Note suggests that the federal anti-bootlegging statutes be amended to add a fair use-like exception that may balance performers' rights with users' rights. In reaching this conclusion, this Note describes the digitization of recording technology, provides a comprehensive look into the anti-bootlegging statutes and their legislative history, and discusses copyright and anti-bootlegging cases addressing fair use and the First Amendment. Finally, this Note provides an example of how the anti-bootlegging statutes can be amended to prevent future problems.
QJ 47.3 - Product Hopping Analysis: A More Beneficial Approach
Divesh Patel
Product Hopping Analysis: A More Beneficial Approach
Product hopping in the pharmaceutical industry has become more prevalent over recent years, and courts have had varying responses to address this behavior. By focusing on a traditional antitrust analysis for the pharmaceutical industry, which is not a well-functioning market, courts have reached inconsistent decisions that do not necessarily punish the market exploiter and reward the honest competitor.
This Note looks to the drug approval process in the European Union, specifically Germany, and proposes a new standard that focuses on additional clinical benefits. Although courts do not typically assess the value of parties’ innovations, the pharmaceutical field is unique in its relationship between competitors and consumer, and thus warrants a new approach to address these issues.
By focusing on the clinical benefits of new formulations, courts can better encourage valuable innovation by branded drug companies and protect the market from trivial advancements made solely for the purpose of excluding generic companies from the market.
Upcoming Events
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AIPLA CLE Webinar: Copyright Implications in Generative AI
April 23, 2024 1:00 PM to 2:30 PM | Up to 90 CLE Minutes
Join distinguished speakers Matt Castle from OpenAI and Chelsea Handler from Google AI, with Mark Schenkel of Sullivan & Cromwell as moderator, for an engaging session tailored to IP professionals seeking insight into the transformative impact of generative AI on the law and legal practice. Delve into the complexities surrounding the copyrightability of AI-generated works and stay updated on proposed legislation and other legal developments. The webinar will also provide practical insights into evolving market trends, strategies for negotiating AI-related contracts, and guidance on effectively leveraging generative AI tools in legal practice. -
World IP Day 2024
May 1, 2024 4:00 PM to 7:00 PM
Join AIPLA and partner organizations on May 1 in Washington, DC, for a special three-hour program to celebrate World Intellectual Property Day 2024. This annual international event is an opportunity to learn about the role that intellectual property (IP) rights play in encouraging innovation and creativity. The theme of this year’s celebration is “IP and the SDGs: Building Our Common Future With Innovation and Creativity.” -
17th Annual Design Day
May 9, 2024 10:00 AM to 5:00 PM
Join us for an in-person or virtual day of lively and thought-provoking discussion about various aspects of design patents, hosted at the United States Patent and Trademark Office (USPTO). Get insights from USPTO design managers, design patent practitioners, and industrial designers. No CLE credit is offered for attendance. -
2024 Advanced Chemical Patent Practice Institute
May 14 to 15, 2024
This advanced course is designed for patent attorneys and patent agents actively practicing in the chemical and related arts and will be presented from both prosecution and litigation perspectives and equips practitioners to prepare and prosecute patent applications, withstand challenges from PTAB and district courts, including such hot button issues as advanced claim drafting, claim construction, written description, enablement, and legislative proposals. Attendees will be armed with strategies and best practices to maximize the scope of patent protection while minimizing challenges to the validity and enforceability of the patents. The program also offers information that will assist in client counseling and making strategic portfolio and business decisions. -
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2024 Spring Meeting - Austin, TX
May 16 to 18, 2024
Join us as we bring IP professionals together to learn and connect. More information coming soon! The 2024 Spring meeting will take place in downtown Austin, at the Hilton Austin. Leadership Meetings on Wednesday, May 15. Programming scheduled May 16-18.