New IP reading from law professors: 

StarAthleticaPeter Menell and Daniel Yablon, Star Athletica’s Fissure in the Intellectual Property Functionality Landscape.  The article advises courts to “disregard the unsubstantiated dicta in Star Athletica” that potentially promotes the “protection for functional features of useful articles outside the auspices of the utility patent system.”  For practitioners, the professors’ concerns should likely be considered as strategies for layering of intellectual property rights.

Stefano Comino, et al., The Diffusion of New Institutions: Evidence from Renaissance Venice’s Patent System. The article finds that even in ancient Venice, the patent system was used by outsiders while insiders (here, medieval religious confraternities) preferred to regulate entry and competition through guild statutes.  I see this article as an extension of the interesting work by Sichelman and O’Connor. See, Patents as Promoters of Competition: The Guild Origins of Patent Law in the Venetian Republic.

BursteinSSarah Burstein, The ‘Article of Manufacture’ TodayBurstein argues, inter alia, for the historical meaning of the phrase “article of manufacture” in interpreting and applying 35 U.S.C. § 289. The article is relevant to Step 1 of the Supreme Court’s design patent analysis from Samsung v. Apple: identify the ‘article of manufacture’ to which the infringed design has been applied.

Graham Dutfield, Collective Invention and Patent Law Individualism, 1877-2012; or, the Curious Persistence of Inventor’s Moral Right. The book chapter is actually a few years old, but is interesting in how it considers the question of “Why do inventors continue to be named in patents when most are owned by firms rather than individuals?”

Eric Johnson, The Case for Eliminating Patent Law’s Inequitable Conduct Defense. Arguing that, “in the real world, the inequitable conduct defense can make a mess of things.”


33 thoughts on “New IP reading from law professors: 

  1. 2

    OT [to be different] the short and accurate answer to “the question of “Why do inventors continue to be named in patents when most are owned by firms rather than individuals?” is that the IEEE and NSA and … strongly opposed such a change.
    That opposition has a rational basis for their members. It affects their resumes and thus their job mobility opportunities. The legal importance of correct inventor designations on patents tends to make them somewhat more accurate than the names listed on technical papers.

  2. 1

    In the United States, can a person obtain a patent on a non-obvious method of flag desecration?

    Address three distinct situations: (1) no limitations regarding flag; (2) limited to the US flag; (3) limited to non-US flags.

    Assume all materials and isolated process steps are legal (i.e., the descecration doesn’t involve shoving the flag up the sphincter of a warm orange body and lighting it on fire).


    [I’ve got a wealthy client who’s very very interested in this]

    1. 1.1

      You haven’t given any clue to the method itself, so it is rather impossible to discuss in light of what you are asking for (the distinct situations of limitations are meaningless, given that you have not disclosed WHAT those limitations may or may not be in relation to).

      1. 1.1.1

        You haven’t given any clue to the method itself,

        It’s a method of flag desecration.

        You start with a nice clean flag and at the end of the process it’s all desecrated and completely ruined, not even recognizable as a flag. Assume the combined steps are non-obvious and — special for you — a computer is involved. Can one obtain a patent on that?


              If he is going to use your answer, then obviously the answer to the original question is “no patent for you.”

              I don’t think that the reason why may reach where Malcolm may want it to reach.


                Why is that obvious?

                When an examiner requires an applicant to provide method details in order to evaluate the invention, an assertion that those details are “unknown and/or not readily available” is a complete reply and is certainly not a basis for denying a patent.

                1. At 2.1.1 he says the process starts with a clean flag and then the process ends with a ruined flag. Who are you to say he can’t claim this process at this rung on the ladder of abstraction?

                2. I didn’t say he can’t.

                  I said that as provided, he won’t get a patent.

                  Your DISQUS days of upvoting anything at all that Malcolm posts is being reflected with your abject mindlessness here.

                3. Glad to see you agree he won’t be getting a patent. What non-prior art basis do you think would be used to reject his claim?

                  (I know you won’t listen, but for the lurkers I’ll note that 1. anon incorrectly think’s I’m someone else, and 2. I am not a MM cheerleader, as I rank him as slightly worse than anon).

                4. Lol – sure, like you don’t agree with nearly ALL that Malcolm posts…

                  Not listen? (Sure)

                  You too want me to finish Malcolm’s hypo…

                  Too funny.


            Again, you omit the method details.

            Provide the details that you think are important to answering the question. It’s an enabled method and it’s non-obvious.

            What sort of “detail” changes your answer and why?


                Question: “Client wants to patent a method of ruining his/her spouse’s reputation. Assume the steps are non-obvious and enabled. Can he get a patent on that?”

                “anon” : “Provide the details.”

                Question: “Which details matter?”

                “anon”: “Waaaah, you made me follow my train of thought. And it’s such a tiny train.”

                Question: “Client wants to patent a method of poisoning his children without anybody detecting it. Can he get a patent on that.”

                “anon” : “Provide the details.”

                Rinse. Recycle. Repeat.

                Remember: “anon” is all about “patent quality.” Sure he is!

    2. 1.2

      Not sure why people are having trouble with MM’s hypo. 35 USC 101 probably prohibits patenting illegal subject matter, or perhaps it doesn’t. If you feel it does not prohibit illegal subject matter, then explain why and stop. If you think that it does, then which of the three situations would be patentable (eligible).

      I don’t think subject matter that is illegal from a judicially created doctrine (such as flag desecration) would be unpatentable. After all, the illegality could change. However, such patent would certainly be unenforceable in any jurisdiction where the claimed subject matter is considered illegal.

      To be safe, the prosecutor should certainly include a dependent claim to “non-US flags.”

      1. 1.2.1

        addendum to my answer. Apparently, flag desecration is not illegal by any doctrine in the U.S. Thus, such a claim of course cannot be denied. However, I think the original hypothetical was under the assumption that flag desecration could in some cases be illegal.

      2. 1.2.2

        35 USC 101 probably prohibits patenting illegal subject matter, or perhaps it doesn’t.



        JUICY WHIP, INC., v. ORANGE BANG, INC. and UNIQUE BEVERAGE DISPENSERS, INC.,; 185 F.3d 1364 (Fed. Cir. 1999)

        link to


          Ah, so “anon” thinks Juicy Whip controls here and illegality is meaningless to patentability.



            Ah, I think that the case of Juicy Whip is (and remains) good law as pertains to the comment by Patent Leather.

            IF you have some legal resource saying why Juicy Whip is no longer good law, I would love to hear it.

            In the meantime though, I am STILL waiting for you to stop accusing me of what you are doing and provide the rest of your hypo so that we may have a conversation.

            Or maybe you did not want to have an actual conversation, but instead merely wanting to throw out some type of snide monologue at an ultra-glib level….


              Anon, thanks for the Juicy Whip link. I forgot all about that case. Although there is a difference between illegality and deceptiveness. I suspect that the hypo MM really intended to present is whether an otherwise patentable claim to something illegal is nonstatutory (notwithstanding that flag desecration is not currently illegal).

              There is really nothing relevant missing from MM’s hypo. Stated another way, what about a non-obvious claim to a method of counterfeiting a dollar bill. Eligible under 101? My thought is probably not. A bit of a different situation than Juicy Whip.


              I think that the case of Juicy Whip is (and remains) good law

              That’s not the issue. My preceding comment is directed to the question as to whether the facts in my hypo are distinguishable from those in Juicy Whip, and also to the separate question as to whether Juicy Whip means that non-obvious illegal activities are patentable.

              [and regardless: Juicy Whip is a highly dubious decision]


                as to whether the facts in my hypo are distinguishable from those in Juicy Whip

                THAT’S just it – you haven’t bothered with filling out the facts of your hypo.

                As to “[and regardless: Juicy Whip is a highly dubious decision]” – read what I wrote: IF you have some legal resource saying why Juicy Whip is no longer good law, I would love to hear it.


                “[and regardless: Juicy Whip is a highly dubious decision]”

                Why? I can’t imagine it any other way. As the decision alludes to, should patents on cubic zirconia be invalid because they deceive people into thinking they are diamonds?


            and illegality is meaningless to patentability.

            So Brer Rabbit of you.

            NONE of your earlier comments actually used the word “illegallity” just as none of MY replies indicate any position on such. Even though you are so eager to make that leap here.

            You snidely only state: “Assume all materials and isolated process steps are legal ” but when I pressed you to fill out YOUR hypo so that the claim as a whole could be discussed, you threw a conniption and fell back to your number one meme of Accuse Others.

            Maybe you should read the Juicywhip case itself. Have you done so? I mean lately, and not some decades ago.

    3. 1.3

      What we need is a legal defense of “provocation” for those who act against provokers disrespecting America during the presentation of the flag and the signing of the national anthem.

      1. 1.3.1

        You are looking for a law that sanctions private actions designed to suppress political speech? Are you familiar with something called the First Amendment?

        I’m not sure the Supreme Court is going to go along with a loophole that essentially is the government giving immunity for people to do something that the government, itself, is prohibited from doing. What’s next? If you burn down a Catholic Church (but not a Protestant Church), you’ll be given immunity (i.e., a legal defense) for arson?

      2. 1.3.2

        What was that word….?


        (from the wiki: Robespierre in February 1794 in a speech explained the necessity of terror:

        If the basis of popular government in peacetime is virtue, the basis of popular government during a revolution is both virtue and terror; virtue, without which terror is baneful; terror, without which virtue is powerless. Terror is nothing more than speedy, severe and inflexible justice; it is thus an emanation of virtue; it is less a principle in itself, than a consequence of the general principle of democracy, applied to the most pressing needs of the patrie [homeland, fatherland].

      3. 1.3.3

        You cannot be serious. I find this manner of protest quite disagreeable, but to advocate a “provocation” defense is itself indefensible. Have you stopped beating your wife yet? I mean, she did provoke you, after all, right?

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