Law Review 2008: Ideas for Student Notes.

Let me know if you use one of these. dcrouch@patentlyo.com.

12 thoughts on “Law Review 2008: Ideas for Student Notes.

  1. “Given that works created by government employees in the course of their duties are not subject to copyright, I’m not sure what the point of the authorship part of the paper would be.”

    This limitation on federal copyright results from a federal statute, 17 USC 105, and it has qualifiers that enable it to be bypassed with ease. There is no limitation regarding states; hence, we have seen attempts by state and local governments to assert copyright claims over subject matter such as state laws (Oregon quickly comes to mind, but it is not unique).

    Of course, states and the federal government stand on equal footing regarding patents when review of this question is limited solely to federal statutes.

    Since sovereigns in the US are “mythical” entities incapable of doing anything except via their employees, and since sovereigns enjoy certain privileges not available to the public at large (e.g., Sovereign Immunity), I believe it is fair to ask the question if the implementation of Article 1, Section 1, Clause 8 is permissible as applied to domestic sovereigns.

  2. “Given that works created by government employees in the course of their duties are not subject to copyright, I’m not sure what the point of the authorship part of the paper would be.”

    Your factual assertion is certainly correct. However, does that mean that the constitutional question is not worth addressing? First, a finding that the gov’t can’t be an inventor would render the above-mentioned law completely superfluous (which is admittedly of little importance). Second, and obviously of more importance, the issue would still be live with regards to patent law/inventors. Let me know if I have missed something or you disagree.
    Best,
    MS

  3. Given that works created by government employees in the course of their duties are not subject to copyright, I’m not sure what the point of the authorship part of the paper would be.

  4. PAS asked: “Can a government employee performing his/her governmental duties constitutionally be deemed an author or inventor? The answer has been taken as an article of faith without ever having been examined in the context of constitutional law.”

    If one were to argue that a gov’t employee acting in that capacity isn’t an author or inventor, the initial argument that I would see is: 1. A government employee acting in their capacity is part of the government (at that time), and thus isn’t an individual (I hesitate to actually say “citizen” here) or doesn’t enjoy all of the rights of individual (at that time), 2. only an individual can be an author or inventor, and thus 3. a person acting in his governmental capacity cannot be an author or inventor. Thoughts?
    This sounds like a fun paper to write, and I see several interesting areas that could be addressed, but I’m curious to see if I am viewing the problem in the same light that the original poster did (or that any other contributors might).

  5. For these (and other) statistical analysis suggestions, is there an easy way to get patent data to perform a statistical analysis?

  6. Thanks for the topic ideas and feel free to keep them coming. I know some of these have been written on before, I can post links or cite them if I come across them.

  7. An anlysis of the how the PTO’s own procedural changes have led to the backlog they so righteously complain about.

    1) Single sequence restriction and how it increases patent numbers and the backlog
    2) Overzealous restriction practice generally and how it increase patent number and the backlog
    3) Rewarding rejection, thus not allowing good patents to issue and thus increasing the backlog (and the CON and RCEs they complain about)
    4) The huge discrepancies between how the Office uses “patent quality” as a sword or shield depending on which is convenient that day (see Patentdocs.us)
    5) The new Appeal rules which create procedural hurdles, increase cost, and increase the number of patent before the office

    To name a few…

  8. 1. The “flip-side” of Blueport and Zoltek. If you cannot prevail against Uncle Sam, what about the private sector actor(s)? This makes one have to analyze what sovereign immunity really covers and what can be done if it is successfully asserted by Uncle Sam.

    2. Can a government employee performing his/her governmental duties constitutionally be deemed an author or inventor? The answer has been taken as an article of faith without ever having been examined in the context of constitutional law.

    3. “Best edition” deposit requirements for copyright registration versus the Export Administration Act and the Arms Export Control Act and their regulatory implementations (EAR and ITAR). For example, one invents an important military weapon, prepares a technical data package (TDP) illustrating the weapon in detail, together with manufacturing processess and specs, and then seeks to register the TDP with the Copyright Office.

    Note: Each of the above are based on real life scenarios, and are not mere hypotheticals.

  9. I would recommend an economic analysis of the USPTO’s “quality initiative,” particularly the impact the initiative is having on small businesses here in the US.

  10. Lots of others I can think of. Assuming that we are dealing with “fresh” 2008 issues. Examples:

    1. Dethmers, Star Fruits, Tafas, Aristocrat and Cooper: when does the PTO receive deference?

    2. Conditional sales and the scope of Mallinckrodt after Quanta.

    3. KSR and retroactivity: does an infringer need to be clairvoyant to preserve error?

  11. I am especially interested in seeing an article on “Rationalizing the CAFC’s Inequitable Conduct decisions of 2008 (compare Star Scientific and Eisai with Nilssen and Aventis)”

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