Intellectual Property Doctrine Research Articles

Trade Secrets in Biologic Medicine

Can something be both open and secret? That is the conundrum facing society as trade secret rights chafe against patent rights in cutting-edge, biologic medicine. The conflict is unsurprising. Trade secret has emerged as a relatively late bloomer among the family of intellectual property rights and only recently has begun to establish the boundaries of its own space, a process in which it will inevitably knock against other intellectual property doctrines already occupying their own domains. Nor is it surprising that the clash would arise in a fast-moving area of medical science. From insulin products, to cancer treatments, to mRNA vaccines, companies are staking the health of their companies on biologics. There is a dearth of legal literature on the topic of trade secrets in the biologic space and almost nothing regarding how trade secrets interact with the patent system in that domain. These scientific and legal areas are sufficiently complex that even the most intrepid scholars fear to tread. This article explains in detailed and accessible language how the systems are working together to the detriment of society. To address the problem, this article argues that a company receiving a patent on a drug product should be required to disclose the full range of trade secrets necessary to make that drug. As the descriptions below will explain, patent applicants are able to satisfy the patent requirement of providing sufficient disclosure that “one skilled in the art can make and use” the invention, without actually providing the information to do so. The surrounding regulatory systems intended to facilitate sharing of clinical trial data suffer the same problem. As is frequently said in biologics, “the process is the product.” In other words, the only way to define something derived from elements of living organisms is by describing the process of producing it. Thus, lack of process information is particularly problematic with biologics. Being faithful to the theoretical underpinnings of the intellectual property regimes requires a resolution of this problem and the establishment of a more effective boundary line between trade secrets and patents for biologic medicine.

Moral Bars to Intellectual Property: Theory & Apologetics

Various intellectual creations are raising complex moral issues in intellectual property law.  Videos of mass shootings made by perpetrators, statues of the Confederacy displayed openly, torture techniques used on criminal detainees, and devices for consuming illegal drugs are only a few examples.  These expressive and inventive works pose the question of whether their apparent immoral nature should preclude intellectual property protection.  Although courts and scholars have long debated moral values in intellectual property doctrines, the literature is largely silent on the effect of intellectual property theory.  The question thus arises: Do the utilitarian, labor-desert, and autonomy theories of intellectual property imply that morality is relevant to whether a work should receive patent or copyright protection?  This is a critical question left unanswered by the scholarship and jurisprudence dealing with intellectual property and morality.  This Article considers the question. This Article posits that each theory of intellectual property suggests that moral values should inform whether intellectual works receive protection.  The Article then contemplates likely objections, responding to arguments that academics have raised against the position that moral values should define intellectual property.  Specifically, it responds to the argument that denying protection in some instances may increase the output of an immoral work, that laws in areas other than intellectual property should address moral problems, and that the government should not interfere with the laissez-faire approach of letting the public decide the moral worth of an intellectual creation.  The Article concludes that, within constitutional limitations, certain moral values may serve as reasons to deny intellectual property protection.

Of ‘Authorless Works’ and ‘Inventions without Inventor’ – The Muddy Waters of ‘AI Autonomy’ in Intellectual Property Doctrine

Artificial intelligence (AI) has entered all areas of our life, including creative production and inventive activity. Modern AI is used, inter alia, for the production of newspaper articles; the generation of weather, company, and stock market reports; the composition of music; the creation of visual arts; and pharmaceutical and medicinal research and development. Despite the exponential growth of such real- world scenarios of artificial creativity and inventiveness, it is still unclear whether the output of creative and inventive AI processes – i.e., AI-generated ‘works’ and ‘inventions’ – should be protected under cop- yright or patent law. Current doctrine largely denies such protection on the grounds that no human crea- tor exists in cases where AI functions autonomously in the sense of being independent of and uncontrolled by humans. More recently, both the European Parliament and the EU Commission have put the topic on their agenda. Interestingly, their positions seem to contradict each other – one in favour of, one against creating new instruments of protection for AI-generated output. This and the rising debate in legal schol- arship (with equally contradictory positions) invites more analysis. A closer look at the doctrinal founda- tions and economic underpinnings of ‘work without author’ and ‘invention without inventor’ scenarios reveals that neither the law as it stands nor scholarly debate is currently up to the challenges posed by AI creativity and inventiveness.

Intellectual Property, Independent Creation, and the Lockean Commons

Copyrights and patents are differently-structured intellectual property rights in different kinds of entities. Nonetheless, they are widely regarded by U.S. scholars as having the same theoretical underpinnings. Though scholars have sought to connect philosophical theories of property to intellectual property, with a particular interest in the labor theory of John Locke, these explorations have not sufficiently probed copyrights’ and patents’ doctrinal differences or their philosophical implications for the theories explored. This Article argues that a defining difference between copyrights and patents has normative significance for the framework of Lockean property theory: namely, that copyright law treats independent creation as a complete defense to claims of infringement while patent law does not. This distinction entails that the two legal systems differ in their effects on the “intellectual commons”, or what exactly they give to rights-holders and take away from the rest of the world. It also entails that Seana Shiffrin’s seminal challenge to Lockean theories of intellectual property—arguably the most significant philosophical exploration of intellectual property so far, but which fails to distinguish between these two areas of law—is a success as to patents but not as to copyrights. Disentangling this and other distinctions in copyrights and patents within the Lockean framework, as well as between tangible and intellectual property generally, this Article outlines a number of possible implications for intellectual property doctrine. Specifically, it identifies revisionary implications for copyright required by the Lockean framework in order to better protect the intellectual commons, as well as for the copyright/patent division of labor if the two legal systems have distinct theoretical grounds. The Article thereby uses the Lockean framework to call attention to intellectual property’s underexplored philosophical complexity, as well as its doctrinal stakes, so that we begin considering it more carefully than it has yet been.

Anti-Innovation Norms

Intellectual property (IP) scholars have recently turned their attention to social norms-informal rules that emerge from and are enforced by non-hierarchically organized social forces-as a promising way to spur innovation in communities as diverse as the fashion industry and the open source software movement. The narrative that has emerged celebrates social norms' ability to solve IP's free-rider problem without incurring IP's costs. But this account does not fully consider the dark side of social norms. In fact, certain social norms, when over-enforced, can create substantial barriers to the most socially beneficial creative pursuits. Because IP scholars have left unexplored how social can hinder innovation in this way, the harm they cause has gone unmitigated. This Article sheds light on the dark side of innovation norms. It coins the term norms to label these counterproductive social forces. Using the double lens of sociology and psychology, it gives a full theoretical account of three types of anti-innovation norms: research priority, methodology, and evaluation norms-all of which interfere with socially beneficial boundary-crossing innovation. Our elucidation of anti-innovation has both theoretical and policy implications. On the theory side, it suggests that IP scholars to date have been too focused on addressing the free-rider problem. This has caused them to overlook other barriers to innovation, like those posed by the set of anti-innovation we describe here. This focus on free-riding may also help explain why innovation and scholars have paid little attention to debates within the broader literature on law and social concerned with identifying situations in which social are welfare reducing. On the policy side, it points to innovation dilemmas that IP is not fully equipped to solve. While changes to the IP doctrines of attribution and fair use in copyright and nonobviousness in patent law can counteract anti-innovation at the margin, a comprehensive solution requires innovation scholars to broaden their vision beyond the IP toolkit. We take the first steps in this direction, proposing a number of interventions, including novel funding regimes and tax credits.

Economic Analysis of Network Effects and Intellectual Property

The information revolution has brought demand-side effects to the fore of economic activity, business strategy, and intellectual property jurisprudence and policy. Intellectual property doctrines play a central role in harnessing network effects, promoting innovation to overcome excess inertia, and balancing consumer welfare, competition, and innovation. This chapter surveys and integrates the economic, business strategy, and legal literatures relating to network effects and intellectual property. Part I introduces the topic of network effects and provides an overview of this Chapter. Part II describes the functioning of network markets. Part III examines the interplay of business strategy, contract, standard setting organizations, intellectual property, and competition policy. Part IV presents three principles for tailoring intellectual property regimes and competition policy for network technologies. Part V traces the evolution of intellectual property protection for network features of systems and platforms. Part VI discusses the interplay of intellectual property protection and competition policy. Part VII assesses the extent to which intellectual property protection and competition policy align with the normative design principles. Part VIII identifies promising areas for future research.

Non-Linear Innovation

Contemporary intellectual property theory concentrates on the cumulative and incremental nature of innovation and creation. A prevalent image depicts authors and inventors as “standing on the shoulders of giants.” This article focuses on a different type of innovation that has been largely overlooked by intellectual property theory and doctrine: innovation in the domains of science and art that breaks with convention, disputes existing paradigms, and “steps off” giants’ shoulders. I term it “non-linear innovation”. Drawing on multidisciplinary research ranging from the history of science, through network analysis of radical inventions, to studies of creativity, this article illuminates an embedded socio-cultural preference for incremental and linear novelty over paradigm-changing innovation. It then inquires whether intellectual property doctrine reflects this bias and whether the intellectual property regime can better foster non-linear innovation. The examination yields a series of counterintuitive recommendations concerning numerous patent and copyright law doctrines. More broadly, the analysis indicates that neither the “shoulders of giants” metaphor nor the opposite image of the “lone genius” adequately capture the dynamics of non-linear innovation. It further suggests that expanding intellectual property’s narrative of progress to accommodate non-linear innovation, alongside cumulative innovation, could significantly contribute to the ecosystem of innovation and creation.

Intellectual property, antitrust, and the rule of law: between private power and state power

AbstractThis Article explores the rule of law aspects of the intersection between intellectual property and antitrust law. Contemporary discussions and debates on intellectual property (IP), antitrust, and the intersection between them are typically framed in economically oriented terms. This Article, however, shows that there is more law in law than just economics. It demonstrates how the rule of law has influenced the development of several IP doctrines, and the interface between IP and antitrust, in important, albeit not always acknowledged, ways. In particular, it argues that some limitations on IP rights, such as exhaustion and limitations on tying arrangements, are grounded in rule of law principles restricting the arbitrary exercise of legal power, rather than solely in considerations of economic efficiency. The historical development of IP law has reflected several tensions, both economic and political, that lie at the heart of the constitutional order of the modern state: the tension between the benefits of free competition and the recognition that some restraints on competition may be beneficial and justified; the concern that power, even when conferred in the public interest, can often be abused and arbitrarily

Overlapping Intellectual Property Doctrines: Election of Rights versus Selection of Remedies

Overlaps exist across various doctrines in federal intellectual property law. Software can be protected under both copyright law and patent law; logos can be protected under both copyright law and trademark law. Design patents provide a particular opportunity to consider the issue of overlap, as an industrial design that qualifies for design patent protection might also, in particular circumstances, qualify for copyright protection as well as function as protectable trade dress.When an overlap issue arises — that is, when an intellectual property rights holder asserts rights under more than one doctrine — the question then becomes how courts should respond. One response, of course, is that courts should do nothing, on the theory that the doctrines developed in a way that permit such overlapping rights, and so the courts should continue to enforce them. The opposing response is to argue that overlapping rights make it difficult for intellectual property users to determine the scope of another’s rights, particularly when those rights have different terms or limitations, and so the courts should require intellectual property owners to choose the right they want enforced at the outset.Neither response is entirely satisfying. Without some signal from Congress that it intended to limit the scope of intellectual property rights when overlaps occur, the imposition of restrictions by the courts simply to achieve predictability for users seems problematic. At the same time, courts should not be blind to the difficulties that doctrinal overlap pose for potential defendants and the temptation it presents to intellectual property owners to push for even stronger protection.This Article therefore proposes something of a middle ground. Courts should not require intellectual property owners to elect one form of protection at the outset. But they should be attentive to whether the right asserted in any litigation proceeding aligns with the harm claimed by the plaintiff and, relatedly, should try to devise remedies that address only those harms.

Private Copyright Reform

The government is not the only player in copyright reform, and perhaps not even the most important. Left to free market negotiation, risk averse licensors and licensees are contracting around the statutory license for certain types of copyright-protected content, and achieving greater efficiency via private ordering. This emerging phenomenon, herein termed “private copyright reform,” presents both adverse selection and distributive justice concerns: First, circumvention of the statutory license goes against legislative intent by allowing for the reduction, and even elimination, of statutorily mandated royalties owed to non-parties. In addition, when presented without full term disclosure, privately determined royalty rates can lead to industrial and statutory adoption of inaccurate “market” valuations. Finally, private copyright reform can exacerbate market inequalities by leaving smaller, less powerful parties with a weaker, less effective statutory regime. These concerns could be addressed by comprehensive copyright reform, an ambitious and lengthy process at best. The concerns might also be eliminated by making compliance with the statutory license mandatory, thereby eliminating private copyright reform as an option. Recognizing the efficiency-enhancing value of private copyright reform, however, this Article leaves the option to circumvent in place, and instead suggests two modest statutory amendments to alleviate the adverse selection and distributive justice concerns presented. Private copyright reform also challenges traditional intellectual property doctrine; specifically, it questions the efficiency of statutory licenses and collective rights organizations, while also raising questions of fairness around the ability of private parties to make law. While resolution of these doctrinal questions is outside the scope of this Article, the recent proliferation of private copyright reform suggests they are ripe for reconsideration.

Carte Blanche, Quanta, & Competition

This paper, prepared for a symposium by the Journal of Corporation Law at The University of Iowa College of Law, analyzes the Supreme Court's 2008 decision in Quanta v. LG Electronics, which deals with the first sale doctrine and patent exhaustion. The author shows that the Quanta decision follows a line of cases in which the Supreme Court was recognizing norms of competition in interpreting and applying intellectual property doctrine. The paper makes the case for recognizing intellectual property law as a type of competition policy, complementing antitrust law.

Constructing Commons in the Cultural Environment

This Essay considers the problem of understanding intellectual sharing/pooling arrangements and the construction of cultural commons arrangements. We argue that an adaptation of the approach pioneered by Elinor Ostrom and collaborators to commons arrangements in the natural environment may provide a template for the examination of constructed commons in the cultural environment. The approach promises to lead to a better understanding of how participants in commons and pooling arrangements structure their interactions in relation to the environment(s) within which they are embedded and with which they share interdependent relationships. Such an improved understanding is critical for obtaining a more complete perspective on intellectual property doctrine and its interactions with other legal and social mechanisms of governing creativity and innovation. We propose an initial framework for evaluating and comparing the contours of different pooling arrangements with an eye toward developing an understanding of the institutional and structural differences across arrangements and industries as well as the underlying contextual reasons for such differences. The proposed approach would draw upon case studies from a wide range of disciplines. Among other things, we argue that a theoretical approach to cultural constructed commons should consider rules pertaining to membership criteria, contribution and use of pooled resources, internal licensing conditions, management of external relationships, and institutional forms along with the degree of collaboration among members, sharing of human capital, degrees of integration among participants, and whether there is a specified purpose to the arrangement.

Unnatural Rights: Hegel and Intellectual Property

Many proponents of intellectual property law seek refuge in a personality theory of property associated with G.W.F. Hegel. This theory seems to protect intellectual property from potential attacks by a utilitarian analysis that would recognizes property only contingently insofar as it furthers society's goals of utility or wealth maximization. Personality theory, in contrast, supposedly offers a principled argument that intellectual property right must be recognized by a just state, regardless of efficiency considerations. Personality theory also seems to protect intellectual property from assault by critics who maintain that it is not a form of property at all. Finally, personality theory has also been used to support an argument for heightened protection of intellectual property beyond that given to other forms of property - the Continental right of artists in their creations is an example. Unfortunately, references to Hegel by personality theorists are almost always incorrect. Prof. Schroeder seeks to save Hegel from the misperceptions of his well-meaning proponents. It is true that Hegel thinks that a modern constitutional state should establish a minimal private property regime because property plays a role in the constitution of personality. It is not true, however, that Hegel thought that society is required to respect any specific type of property or any specific claim of ownership. It is also true that Hegel thought that intellectual property could be analyzed as a form of property and not as a sui generis right that is merely analogous to property. However, it is not true that Hegel ascribes any special role to intellectual property. As such, Hegel's theory can not be used to support the proposition that the state must recognize intellectual property claims, only that it may do so. Moreover, the Continental moral right of artists is inconsistent with an Hegelian analysis of property. In contrast to a widespread misconception, Hegel completely rejects any concept of law generally, and any right of property, specifically. Indeed, Hegel considers the expression natural to be an oxymoron. To Hegel, nature is unfree and rights are artificial constructs created as a means of actualizing freedom by escaping the causal chains of nature. Consequently, rights are not merely not natural, they are unnatural. Having no recourse to nature, Hegel justifies the concept of property on purely functional grounds - the role it plays in the modern state. Specifically, property is necessary for the development of one limited aspect of personality that I call legal subjectivity. Legal subjectivity is the mere capacity to respect the rule of law - nothing more. This is a precondition to the liberal state which is supposed to be governed by the rule of law, not the rule of men, as the feudal state was. Hegel's property analysis does not directly relate to any other aspect of personality - and certainly not to what Margaret Jane Radin calls human flourishing. Hegel calls this regime of property and contract right precisely because, it is a necessary but insufficient part of modern society. The subjectivity created by abstract right only provides the form of personality. Content is only added to personality through more complex interrelationships among people at the higher levels of morality and ethical life. It follows from the fact that the subjectivity created by abstract right is purely formal, that it is only the form of property, and not its content that is relevant to Hegel's analysis. This means that if copyright can serve property's function in the production of subjectivity, it is not because of any affirmative, concrete content that the creator pours into the object she creates. Hegel argues that copyright can serve as property because of its formal characteristics, despite its unique content. A Hegelian property analysis has two important implications for intellectual property law. First, if society decides to adopt an intellectual property law regime, then it is logically coherent to analyze the regime as a form of property. Indeed, Prof. Schroeder shows that a Hegelian understanding of property solves many of the problems of intellectual property doctrine that seem baffling from a traditional property analysis. Consequently, a Hegelian property analysis can aid legislators and judges in formulating a more internally consistent and predictable positive law. But, unfortunately for most personality theory proponents, Hegel's logic has absolutely nothing to say on the issue as to whether society should adopt a positive law of intellectual property. The question as to what positive laws society should adopt is purely a matter of practical reasoning.

Can Intellectual Property Law Regulate Behavior? A "Modest Proposal" for Weakening Unclean Hands

Surprisingly, current intellectual property law protects materials that are criminally prohibited or were made as a result of illegal criminal actions. Thus, a filmmaker may commit or induce various illegal acts, record them, and receive and enforce a copyright on the depictions, just as a corporation may patent drugs developed with stolen materials or through illegal experiments on human subjects. That creators who produce works with unclean hands may enjoy the benefits of federally protected monopolies is an oddity that requires scrutiny. This paper argues that a potential remedy to this situation would be the use of compliance conditions for copyright registration and patent grants. Though compliance conditions could be crafted in various ways, this paper suggests adopting federal legislation that would invalidate a copyright registration or a patent if the creator (or her agent) violated specific criminal laws in the immediate production of the material for which the protection is sought. Once implemented, compliance conditions might stop intellectual property laws from contributing, even remotely, to illegal conduct. This proposal also raises the more general question of when it is desirable to use one governmental function to aid the legitimate purposes of another. Thus, the viability of a compliance standard has potential implications for how we think about the disbursement of government privileges more broadly. The paper begins by examining how certain intellectual property doctrines already manifest some concern for compliance with various public policies. It then assesses the constitutionality of compliance conditions in intellectual property law and concludes by discussing the mechanics of implementing and administering a compliance standard in the more difficult context of copyright law. The paper ends with a suggestion of how a compliance standard can be justified.

Are Business Method Patents Bad for Business?

This article examines business method patenting. After describing State Street Bank & Trust Co. v. Signature Financial Group, Inc., the Federal Circuit's 1998 decision recognizing business method patents, I discuss the problems arising from extending patent law to the business environment. First, I show why many invalid patents are likely to issue. Second, I review the rationales for intellectual property protection and demonstrate why none are relevant to business methods. Third, I argue that business model patenting can distort competition by insulating inefficient business operations. Because of network effects and lock in, these inefficiencies?and the resulting distortion?can persist even if the patent is later invalidated. The last part of the article suggests that patents should be permitted on the software that implements business methods, but not cover business models themselves. Such an approach would better accord with core intellectual property doctrine, which permits protection for instantiations of principles (expression in the case of copyright; applications in the case of patents), but not protection for the principles themselves. This approach would also withhold protection from business methods that do not require the special incentives of patent protection and it would focus both the PTO and the courts on the inventiveness of the software rather than the clever idea of transferring real-world business models (such as the Dutch auction protected by the Priceline patent) into cyberspace. Most important, if patent protection were to run only to software and not to the model the software implements, then others would be able to utilize the model with different software (or without software). Thus, distortive impacts on the competitive marketplace would largely be eliminated.

Intellectual property implications of multimedia products: A case study

This paper explores the intellectual property issues that arise in connection with the production and distribution of a multimedia product. The analysis focuses on a recent effort by a major US art museum to prepare a CD‐ROM edition of its collection and catalogue. The issues discussed include: the copyright interests and moral rights of artists and others whose works were to be included in the product; the respective rights of the museum and the various expert contractors whom it proposed to employ in the production process; and the ability of the museum to use copyright, patent and licensing law to protect the finished product against unauthorized exploitation. These issues are examined comparatively, from both US and European legal perspectives. The museum's case is broadly applicable, as the legal questions that it confronted are likely to arise in a variety of multimedia contexts. The general conclusion is that the producer of a multimedia product faces significant legal uncertainty because of the law's limited experience in applying traditional intellectual property doctrines to this novel environment.

Timeshift: technologies of reproduction and intellectual property

In recent years two factors have significantly affected the underlying conditions for the public circulation of ideas and information. On the one hand, the development of technologies for the electronic reproduction and dissemination of information has in principle made information limitlessly available; on the other hand, the process of legal regulation has, in all Western countries, constructed or affirmed property rights restricting and channelling the use of information. This paper analyses one of the most important recent American cases in intellectual property law, the 1984 Supreme Court majority and minority decisions in Sony vs Universal City Studio. It argues that, in allowing home video recording if off-air programmes and extending or at least upholding the doctrine of fair use, the Court's decision nevertheless fails to challenge the philosophical contradictions in intellectual property doctrine which have allowed the progressive encroachment of private property rights on the public domain.

At Play in the Fields of the Word: Copyright and the Construction of Authorship in the Post-Literate Millennium

In his celebrated essay, What is an Author?, Michel Foucault suggested: It would be romanticism ... to imagine culture in which the fictive would operate in an absolutely free state, in which fiction would be put at the disposal of everyone and would develop without passing through something like necessary or constraining figure.' In this essay I offer just such an exercise in romance. I consider some of the ways in which intellectual property doctrines, prompted into existence by the emergence of the printed word in the fifteenth century, have accommodated the ends of Western culture by enabling authority to authorize authorship in fiction-by which I mean, with Foucault (and, for that matter, Freud, Gadamer and Derrida, among others), creative play. I observe how new technologies, the most significant among them still essentially beyond imagining as Foucault wrote, are undermining the efficacy of intellectual property as a constraining figure in the evolving embodiments of creative play. I imagine culture of precisely the sort Foucault thought pure romanticism: culture, that is to say, in which creative play is beyond the reach of constraint.