Antitrust Treatment of the No Challenge Clause

Antitrust Treatment of the No Challenge Clause

This Article examines a patent licensing practice that has hitherto escaped the attention of U.S. antitrust law: the no challenge clauses. Under these clauses, a patent licensee is prohibited from challenging the validity of the licensed patent. These clauses have so far only been examined under patent law in terms of enforceability. This oversight by antitrust law is unfortunate, as no challenge clauses can create consumer harm by protecting an otherwise invalid patent from challenges and artificially extending the exclusive period granted by the patent law. This means that consumers have to bear supra-competitive prices for longer than necessary. A number of factors are relevant to the analysis of the legality of no challenge clauses, such as market power, patent validity, and market structure at the licensee level. This Article proposes a framework based on the Rule of Reason that incorporates all of these relevant factors and structures them in a way that renders the framework easy to apply. Lastly, the Article rejects a number of justifications that have been offered to argue for the legality of these clauses across the board.

Let’s Be Reasonable! The Broadest Reasonable Interpretation in the PTAB

Let’s Be Reasonable! The Broadest Reasonable Interpretation in the PTAB

While the Patent Trial and Appeal Board (PTAB), a part of the United States Patent and Trademark Office, uses the “broadest reasonable interpretation” for inter partes review proceedings (IPRs), district courts apply the “ordinary and customary meaning” standard for civil litigation. The disparity between standards in similar adjudicatory proceedings is not explicitly justified by existing law and creates uncertain outcomes for practitioners. This note explores the usage of the broadest reasonable interpretation in IPRs, the problems created by dichotomous claim construction standards between the two forums, and possible avenues of correcting this disparity. The Supreme Court acknowledged the issue posed by disparate standards by granting certiorari in Cuozzo Speed Technologies, LLC v. Lee. Therefore, this note argues that the Supreme Court, in this case, ought to require the PTAB to use the district court’s “ordinary and customary meaning” standard.

Interview: The Indigo Book: A Manual of Legal Citation

Interview: The Indigo Book: A Manual of Legal Citation

In this interview, NYU Law Professor Christopher Sprigman discusses his experience conceiving, drafting and producing the Indigo Book, a manual of legal citation that replicates the uniform system of citation expressed by Harvard Law Review’s Bluebook. Formerly known as “Baby Blue,” the Indigo Book is published by Public.Resource.Org under a creative commons license and may be freely modified or distributed without restriction under copyright law. Professor Sprigman details his vision for the Indigo Book, the legal copyright and trademark uncertainties the project faced, and his plans for the citation manual’s future.

Smiley Face
Copyright Symbol
Book
: Emoji as Language and Their Place Outside American Copyright Law

<figure><img src="/wp-content/uploads/2016/04/NYU_JIPEL_Vol-5-No-2_3_Scall_EmojiAsLanguage_Image_Title1.png" alt="Smiley Face" align="left" width="30" height="30" /></figure><figure><img src="/wp-content/uploads/2016/04/NYU_JIPEL_Vol-5-No-2_3_Scall_EmojiAsLanguage_Image_Title2.png" alt="Copyright Symbol" align="left" width="30" height="30" /></figure><figure><img src="/wp-content/uploads/2016/04/NYU_JIPEL_Vol-5-No-2_3_Scall_EmojiAsLanguage_Image_Title3.png" alt="Book" align="left" width="30" height="30" /></figure>: Emoji as Language and Their Place Outside American Copyright Law

As emoji become more ubiquitous in society, users are learning to express themselves through these symbols. Copyright protection of emoji would hamper this growing area of free expression. This note argues that, given the ways in which emoji are used in American culture, they should not receive copyright protection, in order to encourage the use of emoji as an “accessory” to language. Emoji do not readily fit under U.S. copyright protection and their maintenance would be best left to private organizations. This structure would allow people to use emoji freely, in order to develop common meanings for symbols among emoji users and thereby maximize their communicative and expressive functions.

How Rings Fit into the Copyright Scheme: Assessing Their Intrinsic Utilitarian Function

How Rings Fit into the Copyright Scheme: Assessing Their Intrinsic Utilitarian Function

This Note examines how rings fit into the copyright system as sculptural pieces not subject to the separability test under the useful articles doctrine. It focuses exclusive on rings, as they seemingly possess numerous functions; they have been used for mystical purposes, portable bank accounts, and as a signal of socially meaningful codes. Moreover, since jewelry designers consider functional features in the design process, should rings be treated as useful articles? After examining the purposes of the Copyright Act and conversing at length with designers, this Note concludes that rings are more of an art form. Although jewelry designers are limited by a finger’s constraints, they employ a great deal of artistic creativity in expressing a message though the details of a ring.

Obviousness Guidance at the PTO

Obviousness Guidance at the PTO

An invention is patentable only if it is “nonobvious to a person having ordinary skill in the art.” This obviousness determination is prone to two types of errors: type I errors, which are patent rejections that should have been granted, and type II errors, which refer to granted patents that are actually invalid. Although such errors can occur at both the agency level and the court level, this note focuses on errors at the level of patent prosecution at the United States Patent and Trademark Office (PTO). The note proposes that the PTO, in order to clarify its policy position on obviousness issues long before courts have the opportunity to weigh in, should promulgate forward-looking obviousness guidance under its nonlegislative rulemaking authority. This would increase the determinateness of the obviousness doctrine, producing more uniform results and reducing the level of uncertainty and error in patent prosecution. Guidelines of this sort are feasible under the current regime of institutional authority and will withstand judicial challenges. Moreover, they would be particularly suitable for the field of emerging technology, in which legal guidance is the most lacking.

Foreword: The International Evolution of Intellectual Property Rights

Foreword: The International Evolution of Intellectual Property Rights

A recurring tension in international law is whether countries ought to strive for uniformity when developing legal regimes in any given subject matter, or ought to instead construct systems that are uniquely adapted to their particular circumstances. This foreword explores several areas in which that tension plays out in the context of intellectual property rights (IPRs) and also previews how the tension emerges in two of the articles featured in this journal issue.

Lost and Found: Intellectual Property of the Fragrance Industry; From Trade Secret to Trade Dress

Lost and Found: Intellectual Property of the Fragrance Industry; From Trade Secret to Trade Dress

Since the beginnings of the modern fragrance industry, fragrance manufacturers have relied on secrecy to protect information about distillation techniques, product composition, and other elements of the production process. In the last century, however, increases in employee mobility and improvements to reverse engineering techniques have undermined the fragrance industry’s reliance on trade secrecy to protect its proprietary information. Patents and copyrights are similarly of limited efficacy as a means of protecting this information. Fragrance manufacturers may have some recourse in trademark and unfair competition law, however, specifically in the context of multisensory trade dress.