Quarterly Journal Volume 53, Issue 1 March 2025

AS RARE AS HEN’S TEETH?: THE PERVASIVE DYSFUNCTIONALITY OF IP RECORDING SYSTEMS 

This Article considers the dysfunctional nature of the existing systems for recording notice of security interests in patents and copyrights. It starts by discussing how the relevant recording statutes came into being, deriving in the 19th century from real-property recording statutes, but frozen at that stage. It then considers the leading cases for assessing priority of security interests in copyrights and patents, and then discusses practical and interpretive problems with those systems as those cases leave them. The Article closes by suggesting reforms that could be implemented by the courts in some cases, but by Congress in most.

HOW TO RESOLVE DOUBLE PATENTING: RECOGNIZE IT IS AN ARCHAIC LEGAL DOCTRINE THAT WAS EFFECTIVELY ELIMINATED FOR AIA PATENTS 

The U.S. Patent and Trademark Office (USPTO) improperly attempted to expand the judicially created doctrine of double patenting through proposed rule changes in May 2024. These changes sought to simplify challenges to drug-related patent thickets by requiring broad concessions in terminal disclaimers, potentially invalidating entire patent families if a single claim was deemed invalid. Fortunately, the proposed rule changes were withdrawn. This article revisits the legal and policy reasons for why the proposed rules were improper for pre-AIA patents and statutorily unauthorized for AIA patents. It advocates for alternative approaches that eliminate doubling patenting for AIA patents and encourage enhanced examination and procedural reforms for all continuations applications which would better serve the patent system.

THE EMINEM SHOW(DOWN): LEGAL FACE-OFF AMONG MUSIC PUBLISHERS, STREAMING SERVICES, AND THE FIFTH AMENDMENT 

Vested in copyright owners is the right to file an infringement suit when an unlicensed party infringes on the copyright owner’s original work of authorship. However, an amendment to the Copyright Act of 1976 removes this right from copyright owners of musical works (predominantly songwriters and music publishers) when a streaming service infringes upon their music. The problem with this amended provision is that it possesses characteristics suggesting it may be a regulatory taking under the Fifth Amendment. By applying the ad hoc takings analysis to this Limitation on Liability provision, this Note concludes that the provision in question can constitute a regulatory taking. Then, several recommendations are suggested to remedy this finding.

BOUREÉ-ING BETWEEN COPYRIGHTED CHOREOGRAPHY AND UNCOPYRIGHTED DANCE: WHERE DO WE DRAW THE LINE?  

While copyright law purports to protect choreography, choreographers and legal scholars face problems. Choreographers have rights pertinent to public performance and the public display of their work, but the law provides no helpful guidance when distinguishing between mere inspiration and outright copying. Choreography in copyright law has remained a largely undefined area. Very few courts have considered the scope of copyright protections for choreographic work. This Note proposes rethinking how we define “choreographic work” and moving towards a broader definition of choreography so that courts and parties may better distinguish protected elements and expression such that alleged defendants cannot hide behind the excuse that their copying was mere “inspiration.”

RETHINKING THE OBVIOUSNESS INQUIRY IN THE AGE OF GENERATIVE AI 

Human inventors are increasingly employing artificial intelligence in the inventive process. With the availability of generative AI, which can create new contents in a manner that exceeds human capabilities, inventors have the best tools at their disposal. However, in evaluating the patentability of AI-assisted inventions, the traditional obviousness inquiry under Graham does not adequately capture the extent of which a skilled person in the art can judge the obviousness of such inventions. This Note thus addresses the impact of generative AI on the level of ordinary skill in the art and the person having such skill in the art. It also discusses the need for a separate disclosure requirement for patent applications that claim AI-assisted inventions. Next, it proposes a set of criteria that augments the obviousness inquiry into AI-assisted inventions. Finally, it applies the proposed criteria to evaluating the obviousness of a controversial AI-assisted invention that was once rejected by the USPTO for listing AI as its sole inventor.