Quarterly Journal 50-3 Volume 50, Issue 3 September 2022

Please sign in to view the articles. Once you've signed in please refresh the page to see the download link. 
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.

This year marks the 50th Anniversary of the Quarterly Journal.  Watch for the special anniversary edition later this year.  Many thanks to our issue advertiser CAS!  We'd also like to thank our 125th Anniversary Sponsors.
QJ 50.3 - Marijuana and Patents: The Complicated Relationship Between Patent Rights and the Federal Criminalization of Marijuana

Reza Roghani Esfahani and Howard Bromberg


Despite being expressly protected by the U.S. Constitution, patent protection and enforcement for marijuana-related inventions is mired in many questions. These questions are a subset of the contradictions in the law of marijuana, where the federal government prohibits marijuana use and yet many of the states legalize, regulate, and tax it. In patent procurement context, these questions arise because of the interplay between marijuana prohibition as a Schedule I drug and the patentability requirements of the Patent Act. In patent enforcement context, these questions are the result of the federal judiciary’s responsibility to interpret and administer all federal laws—including the Controlled Substance Act, classifying marijuana as a Schedule I drug, and the Patent Act, demanding remedy for infringement of patents that necessarily advance illegal activity. This article examines the interface of some of the patentability requirements of the Patent Act with marijuana-related inventions. The article concludes that although marijuana-related inventions are likely patentable, criminalization of marijuana affects the quality of the granted patents. Further, this article identifies several issues that arise in enforcing a marijuana-related patent in federal court. These issues may include securing representation, dangers of self-incrimination, and identifying infringing parties. As a byproduct of these issues, this article concludes that the marijuana industry may be particularly vulnerable to frivolous lawsuits by Patent Assertion Entities.

QJ 50.3 - Tragedy of the Commons: Why the Supreme Court’s Literal Application of “Product of Nature” Rule in AMP v. Myriad Genetics Necessitates a Legislative Change to 35 U.S.C. § 101

Henry Loznev


The Supreme Court’s literal application of the “product of nature” rule in AMP v. Myriad Genetics necessitates a legislative change of 35 U.S.C. § 101. Heavily influenced by the writings of John Locke, the founding fathers appreciated the importance of protecting property acquired through physical labor. In line with these ideals, the legislature established patent statutes that allowed the federal government to incentivize and reward innovation through patent grants. This original purpose, however, was thwarted when the Supreme Court expanded on the “product of nature” exception from the current iteration of the patent statute and declared gene patents invalid. This decision ignored the intricacies of genomic research and led to a rise in trade secret use that limits further research in the field. Furthermore, the decision can result in the diversion of funds from potentially life-saving research in the future. The legislature needs to address this issue by ensuring access to patents for innovators that discover new and useful applications of the products of nature. As a possible solution, this note proposes enabling USPTO with broad rule-making authority, akin to that given to the SEC, to retain the property law’s original spirit. Thus, USPTO would be able to recognize that different fields of technology with their unique research applications may necessitate different requirements for patent grants.
QJ 50.3 - Not So Natural Phenomena: A Look at § 101’s Impact on Biotech Patents

Jordan M. Cowger


This note seeks to address the uncertainty surrounding patent eligibility for DNA and DNA-derivative pharmaceuticals. Inconsistent judicial decisions and lack of action by the Supreme Court make this issue ripe for resolution. Due to the importance of DNA-derivative pharmaceuticals—not just to precision medicine but also to the United States’ position as a life science leader in the global economy—Congress must take action now. Following Europe’s approach, Congress should adopt a revised version of the draft Tillis-Coons STRONGER Patents Act, which includes an additional subsection to section 101 specifically calling for patent protection for DNA-derivative inventions.

QJ 50.3 - Technological Fault Lines: The Problems with Tailoring Patent Eligibility at the USPTO

Joshua A. Lopez


Many members of the patent community seek clarification of subject matter eligibility law, but administrative rulemaking would be a problematic approach. The Supreme Court has carved out what qualifies as a “process, machine, manufacture, or composition of matter” under 35 U.S.C. § 101 - Inventions patentable. Although the Court has dealt with this statute in decades past, it began in 2012 to reinvigorate the rule that “laws of nature, natural phenomena, and abstract ideas” are not patent eligible. Mayo, Myriad, and Alice mark the Court’s recent encounters with section 101. Respectively, these cases have heightened the patent standard for three major areas: diagnostic tools, genetics, and software. If Congress grants the USPTO rulemaking authority to clarify or enhance the eligibility standards, the agency’s rules would likely reflect a similar technological split. This is problematic because technological discrimination is prohibited under TRIPS Article 27, and divided USPTO rule makers could invite harmful divide-and-conquer influence. Legislators should work to make section 101 more fair and sensible, but they should delegate rulemaking authority with caution.

Knobbe Martens

Upcoming Events

  • AIPLA CLE Webinar: USPTO Professional Responsibility with an Overview of Patent and PTAB Pro Bono Programs

    April 12, 2023 1:00 PM to 2:30 PM   |   60 Minutes Ethics PENDING

    This webinar will provide an overview of core aspects of OED’s disciplinary enforcement functions, including an overview of various OED programs and initiatives that are relevant to legal ethics and practice before the USPTO and a discussion of select regulations governing the USPTO’s disciplinary process and statistics regarding recent disciplinary orders. A discussion of case law relevant to practice before the USPTO in patent and trademark matters with an emphasis on USPTO disciplinary decisions will also be discussed. The USPTO will also present information on both the Patent Pro Bono Program and the Patent Trial and Appeal Board (PTAB) Pro Bono Program. Staff from OED and PTAB will provide a brief overview of the Programs including their establishment and implementation. The presentation highlights the benefits of participation and the positive impacts each program has had on under-resourced independent inventors and small businesses, volunteer patent practitioners, and the USPTO.
  • World IP Day 2023

    April 26, 2023 4:00 PM to 7:00 PM   |   No CLE

    Join the United States Patent and Trademark Office (USPTO) and partner organizations for a special three-hour program to celebrate World Intellectual Property Day 2023. 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 “Women and IP: Accelerating Innovation and Creativity.”
  • 16th Annual Design Day

    May 4, 2023 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.
  • AIPLA 2023 Spring Meeting

    May 10 to 12, 2023

    Join us for a great program at the Westin Seattle in Seattle, WA. Educational and Networking events are May 10-12. AIPLA Board and Leadership Meetings are May 9.
  • 2023 Spring Meeting

    May 10 to 12, 2023