Markets for Patent Scope

By Ted M. Sichelman, University of San Diego School of Law

from Volume 1, Issue 2 (Spring, 2011)

Download this Article in PDF format from The Jerome Hall Law Library’s Digital Repository.

Abstract: A recurring issue in intellectual property theory is how the scope of patent rights affects invention and commercialization. Traditionally, there has been a dichotomous debate: one view stemming from Ed Kitch, promoting broad “prospect”-style patents in the hands of a single inventor, and another view from Robert Merges and Richard Nelson, advocating relatively narrow scope to encourage competition in innovation. More recently, a variety of scholars have set forth more nuanced positions. My thesis here is that the variance in these views can be traced to differing empirical attitudes about how well the market functions relative to a patent system in promoting invention, commercialization, and coordination among market actors in the R&D process. By investigating these empirical differences, scholars can more rigorously address a number of important issues not fully examined by the literature, such as the cumulative nature of technology commercialization (not just invention), the tailoring of patent scope by industry, collaborative innovation, and the decoupling of patent rights to separately address invention and commercialization incentives.

A Cause of Action for “Passing Off/Associational Marketing”

By Margreth Barrett, University of California Hastings College of Law

from Volume 1, Issue 1 (Fall, 2010)

Download this Article in PDF format from The Jerome Hall Law Library’s Digital Repository.

Abstract: The Trademark Scholars Roundtable participants discussed a wide range of approaches to understanding and limiting the ever-increasing sprawl of trademark rights. It was a productive and stimulating discussion. In this essay, I would like to combine some of my own ideas with points and suggestions made by the other participants, to sketch out a possible judicial approach to regulating the sprawl. Before discussing a potential solution, however, it is important to understand the nature of the problem, and some of its primary causes.

Section I will discuss the problem and set the stage for my proposal. Section II will then suggest that courts relegate certain particularly problematic new forms of trademark infringement claims to a “passing off/associational marketing” evaluation. It will anchor this proposal in the historic development of the common law and courts’ construction of the Lanham Act, and then explore some of the rules, presumptions and defenses that might cabin this more limited cause of action.