Here is a sneak peak at what is inside Volume 101 Issue 3! 

- Markus Nolff, The “Patent Provisions” of the United States-Mexico-Canada Agreement (USMCA)

- John Mixon, Netflix and Not-So-Chill: The Legality of Sharing Passwords for Netflix and Other Streaming Services

- Jasper L. Tran & Sean Benevento, Alice at 5.5

- Hyojeong Son, Request a Re-Examination (“RRE”) Practice in South Korea: A Proposal to Make RRE Fair and Efficient 


Preambles: Form over Substance

Roy Y. Yi

Patent claim preambles perplex and confound even the most seasoned patent practitioners. Ranging from inventors to Federal judges, understanding the purpose and meaning of a patent claim preamble is elusive; primarily in determining whether the preamble limits the scope of the patent claim. The Federal Circuit developed a framework to facilitate in determining a limiting preamble in Catalina Marketing International v. Coolsavings.com. The framework, however, does not recite any clear rules or tests for practitioners to performmaking preamble determination subjective in nature. This framework may leave a patent drafter feeling insecure that the preamble he writes will not be understood properly. Likewise, the USPTO also has difficulty in assessing the limiting or non-limiting nature of a claim preamble. Examiners use a non-legal authority manual during examination which is called the Manual of Patent Examining Procedure (MPEP). With the MPEP, the USPTO tries to describe and reduce legal principles into manageable and digestible pieces of legal information for the examiner. But like the Catalina framework, there are no clear rules or tests for the examiner to use; therefore, each examiner must determine the nature of preamble subjectively. 


I Wrote This, I Swear!: Protecting the “Copyright” of Fanfiction Writers from the Thievery of Other Fanfiction Writers

Narisa Bandali

People who write fanfiction do so to explore, sustain, and contribute to content to which they feel a connection––content that is generally protected under copyright. The legal status of fanfiction in comparison to copyright law is a gray area, but fanfiction is generally considered to be transformative. Regardless of how a court may view fanfiction, writers of fanfiction invest time, effort, and passion into works that can sometimes be longer than a normal published novel. While fanfiction is currently a topic of discussion in the legal world, plagiarism of fanfiction tends to be ignored. Similarly, plagiarism within the fanfiction community does not currently have any real regulation besides social pressure, like online shaming. 


Vanda v. West-Ward: Swinging Back the Pendulum for Patenting Natural Phenomena

Kevin A. Sforza, Ph.D.

Since the Human Genome Project was completed in 2001, the U.S. Patent and Trademark Office granted patent protection to nearly sixty thousand DNA-based patents, about twenty-six hundred of which are for isolated DNA. However, the rulings of two Supreme Court decisions, Mayo in 2012 and Myriad in 2014, put an end to the laissez-faire environment for DNA-based patents. Under those decisions, natural gene and protein sequences are per se ineligible subject matter. The Court’s decisions left the USPTO and many DNA-based patent-holders bewildered. While the Court attempted to define a bright-line rule proscribing natural phenomena, known as the Mayo/Alice framework, its lack of clear guidance on how to apply the test left the lower courts to wrestle with its practical administration. The Supreme Court rightfully aimed to avoid preempting researchers and the public from using natural phenomena, but in doing so gutted the patent incentives for modern research. This Note argues that in a recent decision, Vanda v. West-Ward, the United States Court of Appeals for the Federal Circuit misapplied the Mayo/Alice framework when analyzing a method patent involving a natural relationship. However, the Federal Circuit was justified in redrawing the bounds of patentable subject matter requirements for pro-patent and pro-scientific research reasons. The current patentability statutes under 35 U.S.C. bleed together, and clarifying the requirements may require Congressional and Supreme Court intervention and cooperation. 


Computer-Generated Inventions

Michael McLaughlin

Technological advancements in artificial intelligence have threatened the axiom that conception, the mental part of invention, is a function exclusive to the human mind. Recently, machine learning technologies have allowed artificially intelligent computers to compose patent claims that amount to patentable subject matter. This technology is similarly used by innovators to optimize design configurations beyond the scope of human capacity. The type of patent protection to be afforded to computer-assisted and computer-generated inventions with minimal to no human intervention has yet to be determined. This article illuminates how such technological advances could wreak havoc on the patent legal system as it currently stands. It then offers a proposal for a legal standard that is supported by the philosophical justifications for property rights. The structure of this proposal is derived from the human creativity framework used to analyze the copyrightability of computer-generated works –– paralleling the creativity standard to an intervention standard in the inventive process. Finally, this article provides a potential legislative and judicial framework for determining the amount of human intervention required to ensure protection against computer-assisted or computer-generated inventions. 


Patenting an Invention as a Free Black Man in the Nineteenth Century

Kathleen Wills

During the nineteenth century, the view of property rights in patents generally fell into two camps: an inventor’s inherent natural right to protect their property versus a limited-term monopoly that the government grants inventors. In the period before the Civil War, known as the antebellum period, lawmakers either viewed patents in the first camp as securing rights which coincided with the natural rights philosophy, or the second camp believing patents were government grants of limited monopolies. Lawmakers found textual support for the concept that patents involve regulation of economic development within the Constitution, including the Contract Clause, Patent Clause, and Commerce Clause. The foundational principles of patent law were often mentioned in early Supreme Court opinions that ensconced property rights, often written by Justice Taney, and those opinions are still cited by courts to this day.

As the debates ensued over which camp of fundamental perspective of patent law should govern, free black men faced many challenges in their fight to patent their inventions. One challenge came from the 1790 Patent Oath, where applicants had to swear to be both the “original” inventors of the claimed invention and citizens of the United States. While black inventors could fulfill the first requirement of the Oath and swear to be an original inventor, black inventors could not fulfill the second requirement because, in the years between 1857 and the 14th Amendment, black people were not seen as citizens of the U.S. This issue of citizenship which challenged free black men in their pursuit to procure patent rights was decided by the Supreme Court in 1857 with Justice Taney’s opinion in Dred Scott v. Sandford (“Dred Scott”). Justice Taney held that neither slaves nor their descendants were citizens entitled to Constitutional rights. With the 1857 Dred Scott decision, free black men’s status and citizenship changed, altering their natural rights and privileges to property as guaranteed by the Constitution. Thus, the Supreme Court’s decision posed an immediate challenge to black inventors’ patent rights because, as non-citizens, they could not sign the Patent Oath. 


The Inherency Doctrine: A Performance Review

Ryan Pool

The doctrine of inherency is relatively straight forward and there is very little subjectivity in the proper analysis. Nevertheless, both Patent Examiners at the USPTO and many Applicants struggle to conduct a proper analysis under this doctrine.

The USPTO takes the position that “the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable.” Whether a property is inherent or not is a question of fact, the fact in question being, does the claimed property inherently occur in the prior art. With regard to defining inherency in the context of patent law, the Federal Circuit held in In re Robertson that, “It is well-settled that inherency cannot be established by mere probabilities or possibilities.” As recent as 2016, the Federal Circuit citing Robertson offered the further definition that, “Inevitability is at the heart of inherency; ’that a certain thing may result from a given set of circumstances is not sufficient.’” 


Everyone at the Journal would like to introduce the new Editor-in-Chief Johnathan Lindsey!

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