Quarterly Journal 49-3
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.
Private collection and processing of consumers’ personal data gives rise to significant privacy risks for the subjects of the data collected, but there is also significant social and economic value in the continued collection and processing of consumer information. Unfortunately, the risks and rewards of continued consumer data collection are poorly balanced. The entities who collect and process consumer data suffer little risk but reap most of the reward. The consumer whose data is collected, in contrast, suffers high risk but little reward. Recent privacy legislation provides a strong foundation for privacy rights but should be supplemented to address the risk-reward imbalance.
This Article proposes an individualized, market-based solution to balance the risk-reward scales while protecting the social and economic benefits of a healthy consumer data economy: a new intellectual property right in consumers’ personal information. Central to the proposed model is the right to exclude data traders from collection and transfer of data associated with that individual. As this Article explains, a limited right to exclude collection and transfer of consumer data is supported by leading property and economic theory as a bridge between the current consumer data economy and a more desirable one. The Article finishes with an examination of the proposed rights and the most important limitations on them: fair use, duration, and exceptions to enforcement.
THE DOJ & FTC—ONCE FRIENDS, NOW FRAND-EMIES: THE DIVERGING PERSPECTIVES OF THE TWO ANTITRUST AGENCIES ON THE FUNDAMENTAL ROLE OF ANTITRUST LAW IN THE ENFORCEMENT OF FRAND TERMS IN SEP LICENSING
During the Trump Administration, The Department of Justice (“DOJ”) and the Federal Trade Commission (“FTC”) seemed to no longer share the same philosophies regarding the role of antitrust law in the enforcement of Fair, Reasonable, and Non-Discriminatory (“FRAND”) terms when dealing with Standard Essential Patents (“SEPs”). The two entities have historically viewed violations of FRAND terms by SEP holders as threats to competition, primarily using antitrust law as the means with which to respond to such violations. During the Trump Administration, however, the DOJ departed from this view and instead embraced contract law as the answer to violations of FRAND terms. This Article will explore this new approach and ultimately argue that the contract approach likely fails to adequately respond to the threat of monopolization posed by SEP holders who violate FRAND terms after Standard Setting Organizations (“SSOs”) have integrated an essential patent into the standard.
Robert L. Bollier
A hypothetical electric car manufacturer holds design patents that protect the exterior shapes of the body, hood, and head lamp of its new aerodynamic vehicle. In an infringement suit, a manufacturer of replacement parts claims that the design patent for the head lamp is invalid because the claimed shape serves a primarily functional purpose: fitting the touted aerodynamic profile of the exterior design, which benefits from another design patent.
This fact pattern brings out some questions in the existing analytical framework for the functionality doctrine in design patent law. The functionality doctrine is the mechanism that screens out designs that are not “ornamental” as required by 35 U.S.C. § 171. Although the Federal Circuit maintains that no single test dominates the functionality inquiry, the court has gravitated toward an analysis that asks (1) whether alternative designs can accomplish the same function as a claimed article of manufacture and (2) whether other factors indicate that a design is primarily dictated by its function. Under current precedent, the ordering and weight of these steps are not clearly defined. In some cases, the Federal Circuit has stated that the alternative designs inquiry should happen first and may be dispositive on its own. In other cases, the court has stated that all considerations—including some commercially motivated factors—must be weighed simultaneously with the alternative designs inquiry. In over twenty years of jurisprudence, the court has seemingly vacillated between two lines of precedent without providing clear guidance on how they fit together. This absence of clarity could lead to ongoing inefficiencies and inconsistencies at the trial level.
This Note proposes that Congress should codify a new test to assist courts in applying the functionality analysis more consistently in factually complex situations. Specifically, this Note proposes that, under a new test, courts would need to: (1) define the function of the claimed design, and (2) determine whether alternative designs could perform the same function. The various factors from the existing precedent could still be helpful to guide courts toward appropriate conclusions on each determination. By following this new analysis, courts should be better equipped to resolve situations like the above hypothetical in a more consistent and predictable manner.
Chieh-Ming (Ben) Hsu
Drug prices in the United States are extraordinarily high. This phenomenon is in part due to patent rights, which enable drug companies to charge exorbitant prices without the threat of competition. Patent rights, however, also incentivize innovation—innovation that led to the discovery of the drugs in the first place.
This Note proposes a solution to strike the balance between drug price accessibility and innovation incentives. First, the government should intervene if a drug is not cost effective for patients. This can be determined using the Quality-Adjusted Life-Year (“QALY”) index, which quantifies the impact of a drug. Second, the government should limit excessive drug prices by invoking the patent “eminent domain” provision, 28 U.S.C. § 1498, and license drug patents using an auction system. Additional competitors would lower drug prices while the auction system adequately compensates patent holders, thus preserving the incentives to innovate. People should have access to both the drugs of today and the drugs of tomorrow.
Henry Loznev and Christine Reid
Compulsory licensing is not the answer to reducing high drug prices in the United States. First, intellectual property rights are not the primary reason for high drug prices. Drug prices result from a variety of different standards that are put in place to ensure that the pharmaceutical industry in the United States is both safe and innovative. A practical solution to lowering drug prices would likely require a holistic approach considering multiple factors rather than identifying a single factor to blame, such as proposed by the PRICE Act. Secondly, even if intellectual property rights did contribute to high drug prices, compulsory licensing goes against the spirit of intellectual property law in the United States. Incorporating compulsory licensing into the everyday pharmaceutical market would hamper the industry because it would likely divert funding from the research and development of new drugs, decreasing innovation in a life-saving field of science. Manufacturers in the industry may also be more likely to utilize trade secrets, thereby reducing the flow of information. Finally, high drug prices may be addressed through other, less intrusive and established legal means such as antitrust law. Thus, the proposed PRICE Act is unlikely a reasonable solution to high drug prices in the United States.
2022 Virtual PCT Seminar
July 11 to August 1, 2022This live multi-day webinar offers a deeper “nuts and bolts” introduction to the Patent Cooperation Treaty. Learn about recent updates and frequently performed tasks, tools and resources, strategies, and best practices. The Webinar is focused primarily on the important PCT work carried out by paralegals, paralegal managers, and legal staff. Because attorneys are ultimately responsible for instructing staff and the work they perform, the Webinar welcomes and encourages attorney attendance. Webinar materials and discussions have proven to be helpful to all attendees, including attorneys, paralegals, patent agents, portfolio managers, and administrative assistants.
2022 PCT Seminar Web Series
July 11 to August 1, 2022 | This is a Non-CLE EventThis live multi-day webinar series offers a deeper “nuts and bolts” introduction to the Patent Cooperation Treaty. Learn about recent updates and frequently performed tasks, tools and resources, strategies, and best practices. Perfect for Paralegals, docketing specialists, and other legal staff. Become an AIPLA member and save on the registration fee.
AIPLA CLE Webinar: Daubert-Proofing Your Survey: Best Practices for Survey Evidence in Trademark Infringement and False Advertising Litigation
July 14, 2022 12:30 PM to 2:00 PM | 90 Minutes of CLEThis webinar will focus on the best practices for surveys in trademark infringement and false advertising litigation. We will review the court-approved methodologies for the various types of surveys often used in trademark infringement and false advertising litigation. We will then present the recent case law discussing survey evidence, the pitfalls that often lead to a survey being excluded or accorded little weight, and the best practices for increasing the likelihood that surveys will be admitted and used persuasively to help prove your case. This webinar is a must not just for trademark litigators but also in-house counsel who want to make sure that the expense of a survey is well justified.
AIPLA Ethics Webinar: Trending Ethical Issues for Virtual (and Remote) Practitioners: Where You Can Practice and What You Should Consider
July 19, 2022 12:30 PM to 2:00 PM | 90 Minutes EthicsA spinoff of the a live program at the recent AIPLA 2022 Spring Meeting, this program discusses the UPL issues related to remote practice (including the status of the rules nationwide) as well as the ethical considerations when working remotely. Hear from both the practitioner perspective and the academic perspective from two presenters who were both formerly attorney regulators. They will discuss your obligations when “working from home” and how best to comply with them.
2022 AIPLA Corporate Practice Institute
August 23 to 24, 2022 | Up to 360 minutesAIPLA is hosting a two-day Virtual Corporate Practice Institute with limited unique sponsorship opportunities for our exhibitors. The Institute is designed for Corporate in-house counsel, including attorneys and patent agents. The program will run from 12 noon to 5:30 and include 3 one-hour CLE sessions and a one-hour networking session each day. Registration coming soon!