Volume 13



Nicole Scelta

Editorial Team

Publishing Editor: Stephanie Kaplan 

Executive Managing Editor: Qizuan (Vanessa) Wang

Executive Content Editor: Shunyo A. Morgan 

Executive Audio Editor: Caroline McCord

Managing Editors: Jacob Boesch & Graham Christian 

Content Editors: Robert Kesling & Ahsan Sohail 

Audio Editors: Taylor Nunley & Amy Qi 

Notes Editors: Karen Kukla & Sydney Schnur

Business Editor: Margaret Melchi

Articles Editors: Srija Dutta, Andy Eddington, Ben Gillard, Yiming Gu, Karlie Hinton, Arathi Kumar, Hunter Schmittou, Tianyuan Shu, Amelia Statham-Taylor, Jenna Sur, Jackson Wahlbom, Tanner Wilburn

Faculty Advisor and Primary Contact: Professor Michael Mattioli
Faculty Advisor: Professor Mark Janis


Volume 13, Issue 1:

Taxation of Intellectual Property Litigation by Chitra A. Ram

Direct to Consumer or Direct to All: Home DNA Tests and Lack of Privacy Regulations in the United States by Karen J. Kukla

A Closer Look at the “Eye” Test: The British Influence on Early American Design Patent Infringement Law by Mark D. Janis

What’s Not Natural Phenomena? Let’s Consider a Three-Step Innovative Concept Test for Composition of Matter by Sydney Hancock

Volume 13, Issue 2:

They Copyright Requirement of Human Authorship for Works Containing Artificial Intelligence-Generated Content by Runhua Wang

Failure to Function: A Potential New Shield Against Trademark Infringement? by Alyssa Yoshino

Fire of Genius, Season Six

Check out our most recent episodes

Volume 12



Lillian Huff

Editorial Team

Publishing Editor: Hannah Vittorio Trimpe

Managing Editors: Scott Nolan & Alex Mischke
Audio Editor: Megan Wheeler
Content Editors: Allissa Aardema & Marcus Hoekstra
Note Editors: David Lebby & Philip Ouweleen
Business Manager: Luke Steffe

Articles Editors: Jacob Boesch, Graham Christian, Stephanie Kaplan, Robert Kesling, Karen Kukla, Caroline McCord, Margaret Melchi, Shunyo Morgan, Taylor Nunley, Amy Qi, Maya Salinas, Nicole Scelta, Sydney Schnur, Ahsan Sohail, Qixuan (Vanessa) Wang

Faculty Advisor and Primary Contact: Professor Michael Mattioli
Faculty Advisor: Professor Mark Janis


Volume 12, Issue 1:

“An Introduction to ‘Marshall Law'” by IP Theory Volume 12 Editorial Board

“Reconciling Copyright “Restoration” for Pre-1972 Foreign Sound Recordings with the Classics Protection and Access Act” by Tyler Trent Ochoa

Life After Google v. Oracle: Three Reflections on a Theme by Daryl Lim

Marshalling Copyright Knowledge to Understand Four Decades of Berne by Peter K. Yu.

Volume 12, Issue 2:

The Constitution Commandeth: Thou Shalt Not Protect the Same Subject Matter Under Design Patent and Trade Dress Laws by Kenneth B. Germain and Louis H. Sitler

A Hot Spit-Take: Why the Supreme Court Will Hold That There Is No Privacy Interest in Commercial DNA Data by Mounir Jamal

Indian Pharmaceutical Patenting Under Section 3(D): A Model for Developing Countries by Nicholas Eitsert

Volume 12, Issue 3:

The Social Value of Intellectual Property by Alina Ng

Protection and Prevention: The Shortcomings of U.S. Copyright Law in Combatting Cultural Appropriation in the Fashion Industry by Luke E. Steffe

Encouraging Public Access to Pharmaceuticals Through Modified Protection of Clinical Trial Data by Scott Michael Nolan II

Fair Use Failing the First Amendment? How the Parody and Satire Dichotomy May be Stunting Political Discourse by Megan Lynn Wheeler

Fire of Genius, Season Five

Check out our most recent episode

Volume 11



Zach Shepard

Editorial Team

Publishing Editor: Parker Zimmerman
Managing Editors: Richa Patel & Allison Strong
Audio Editor: Chris McMillan
Content Editors: Matthew Spegele & Janine Tang
Note Editors: Taylor Lavender & Peyton Gilliatt
Business Manager: Mounir Jamal

Articles Editors: Allissa Aardema, Marcus Hoekstra, Lilly Huff, David Lebby, Alex Mischke, Scott Nolan, Philip Ouweleen, Luke Steffe, Hannah Vittorio, & Megan Wheeler

Faculty Advisor and Primary Contact: Professor Michael Mattioli
Faculty Advisor: Professor Mark Janis


Interview with David Gindler, Partner, Milbank LLP, and Jasper Tran, Associate

Fire of Genius Volume 11

Check out our most recent episode

Volume 10

This volume includes scholarship from Mary T. Hannon who explores the current gender gap in U.S. patent bar.


Catherine Morgan

Editorial Team

Publishing Editor: Payton Hoff DuBose
Managing Editors: Ziyu Ma & Matthew Ritter
Content Editors: Rita Xia & Audrey Knutson
Audio Editor: Emma Ng
Note Editor: Sarah Kelly
Business Manager: Garrett Derian-Toth

Articles Editors:Nick Eitsert, Peyton Gilliat, Mounir Jamal, Taylor Lavender, Chris McMillan, Richa Patel, Zach Shepard, Matthew Spegele, Allison Strong, Janine Tang, Parker Zimmerman

Faculty Advisor and Primary Contact: Professor Michael Mattioli
Faculty Advisor: Professor Mark Janis


The Patent Bar Gender Gap: Expanding the Eligibility Requirements to Foster Inclusion and Innovation in the U.S. Patent System” by Mary T. Hannon

Saving Face; The Unconstitutional Use of Facial Recognition on Undocumented Immigrants and Solutions in IP” by Audrey Knutson

The Future of Female Inventors in the United States: A Comparative Analysis to the Republic of Korea” by Payton Hoff

Cyber Trespass and Property Concepts” by Adam J. MacLeod

Volume 9

This volume includes scholarship from H. Albert Liou and Jasper L. Tran, who explore how Internet research can be used properly and reliably in law; scholarship from Megan Svedman examining issues with the use of copyrights in the world of artificial intelligence; scholarship from Kevin Ashley and Dean Alderucci, discussing the use of artificial intelligence techniques to partially automate patent claim analysis in regards to the definiteness requirement; and scholarship by Ian Schick discussing how the principles of lean production could be adapted to address issues in the patent ecosystem.


Francesca Campione

Editorial Team

Publishing Editor: Carolyn Griffith
Managing Editors: Keltie Haley & Sachin Patel
Content Editors: Weichih Hsu & Joey Leonard
Audio Editor: Phil Koranteng 

Articles Editors: Garrett Derian-Toth, Payton Hoff, Anis Houssein, Sarah Kelly, Audrey Knutson, Ziyu Ma, Catherine Morgan, Emma Ng, Matthew Ritter, & Rita Xia

Faculty Advisor and Primary Contact: Professor Michael Mattioli
Faculty Advisor: Professor Mark Janis


Internet (Re)Search by Judges, Jurors, and Lawyers” by H. Albert Liou and Jasper L. Tran

Using AI to Analyze Patent Claim Indefiniteness” by
Dean Alderucci and Kevin D. Ashley

A Production View on Patent Procurement” by Ian C. Schick

Artificial Creativity: A Case Against Copyright for AI-Created Visual Artwork” by Megan Svedman

When Standards Collide with Intellectual Property: Teaching About Standard Setting Organizations, Technology, and Microsoft v. Motorola” by Cynthia L. Dahl

Sea Change: The Rising Tide of Pro Bono Legal Services for the Creative Community” by Victoria F. Phillips

Volume 8

This volume includes scholarship from Nicole E. Pottinger and Brian L. Frye, who explore the implications of copyright registration and discuss the recent Supreme Court case Fourth Estate v. Wall-Street.com; scholarship from Daniel Kazhdan and Sanjiv P. Laud addressing the Supreme Court’s recent decision in TC Heartland and how the change in venue law has impacted courts; scholarship from Perry J. Saidman covering the recent Supreme Court case Samsung Electronics Co. v. Apple, Inc., including the discussed 4-factor test for determining an article of manufacture for design patent damages; and scholarship by Scott D. Locke discussing The Invention Secrecy Act and the role of the USPTO as a gatekeeper of national security.


Derek Ventling

Editorial Team

Publishing Editor: Sarah Eddy
Managing Editor: Nick Palmieri
Articles Editor: Ty Edwards
Content Editor: Kenneth Guerra
Audio Editor: Nick Wheeler

Articles Editors: Alex Devilliers, Tachina Smith, LaShaila Spivey, Carolyn Griffith, Francesca Campione, Weichih Hsu, Phil Koranteng, Joseph Leonard, Sachin Patel

Faculty Advisor and Primary Contact: Professor Michael Mattioli
Faculty Advisor: Professor Mark Janis


Registration is Fundamental

by Nicole Pottinger, University of Kentucky College of Law & Brian L. Frye, University of Kentucky College of Law

from Volume 8 (2018-2019)

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

Under the Copyright Act, copyright owners can file infringement actions only if registration of their copyright claim with the Copyright Office “has been made” or “has been refused.” The United States Supreme Court recently granted certiorari in Fourth Estate v. Wall-Street.com, in order to decide whether registration is “made” when a claimant files a registration application or when the Copyright Office registers the claim.

This article argues that the Court should hold that registration occurs when the Copyright Office registers the claim, in order to ensure that federal courts can benefit from the expertise of the Copyright Office. The Copyright Office recently began publishing the opinions of Copyright Office Review Board. This article uses those administrative opinions to show how the Copyright Office has developed the concepts of “originality” and “creativity” in ways that are helpful to the federal courts. It concludes with an Appendix listing the Copyright Office Review Board opinions addressing originality and explaining the basis for each decision.

Our 19th Century Patent System

by Greg Reilly, Chicago-Kent College of Law

from Volume 7 (2017-2018)

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


Abstract: The patent system is in flux. Concerns abound about the imperfect fit between traditional patent rights and the Information Age, excessive numbers of patents, overbroad patent rights, poor patent quality, and allegedly exploitative actors, like so-called “patent trolls.” In response, courts, commentators, and Congress have proposed, debated, and sometimes adopted a series of reforms and changes to patent rights, patent doctrines, and patent institutions. The America Invents Act of 2011 (AIA) introduced the most significant changes to the patent system since 1952 and was even described by one commentator (hyperbolically, as we will see) as “the most significant overhaul to our patent system since the founding fathers first conceived of codifying a grand bargain between society and invention.” The Supreme Court’s recent renewed interest in patent law has also resulted in significant changes, including abolishing the long-standing rule that “a patent owner is entitled to permanent injunctive relief once a patent is adjudicated to be both valid and infringed.” And scholars have proposed a variety of other significant changes to American patent law.

With change, comes opposition. The changes and proposed changes to patent law have sparked vigorous policy debates about the effects on the patent system’s goals of promoting innovation and preserving competition. But beyond policy disagreement, opponents also are concerned that recent changes and proposed changes reflect a sharp, dramatic break with long-standing, fundamental aspects of the patent system. To them, departing from the historical features of the patent system is inadvisable, illegitimate, or even unconstitutional.

This Essay provides context necessary to evaluate these concerns. Recent changes and proposed changes seem like a dramatic and sharp break with past practice precisely because the patent system has been remarkably stable since the middle of the 19th century. To many in the patent community, this contention may seem surprising, or even laughable, given widespread recognition of significant adjustments and fluctuations in the patent system over the years. The patent system certainly undergoes doctrinal variations at the operational level of applying patent law’s specific requirements to determine if particular patents are valid and infringed—for example, the specific tests used or defenses available. There also have been changes in how the patent system is used over time, including the volume of patenting and patent enforcement activity.

But at a foundational or systemic level, the nature of the rights granted, the institutional structure of the patent system, and the basic doctrines of patentability, infringement, and remedies have remained largely constant. It is exactly because the foundational and systemic aspects of the patent system have been so constant that the fluctuations in doctrinal implementation seem so significant. For example, the proper test for determining whether an invention is too obvious to warrant a patent, much debated in the patent community, would seem relatively minor compared to a reform requiring the Patent Office to decide whether to issue a patent based on a case-by-case determination of whether the innovation benefits of a particular patent outweigh its social costs. Even the question of when inventions are patent ineligible abstract ideas, laws of nature, or natural phenomena—probably the most contested current patent issue—would become much less significant if Congress started debating abolishing patents for some industries, imposing price controls on patented products, setting mandatory licensing terms, or replacing the private right of action for patent infringement with government enforcement.

But long-standing stability in the foundational and systemic characteristics of the patent system does not mean that these characteristics are inevitable, necessary, or mandatory features. To the contrary, in the first few decades of the American patent system, there was significant change, experimentation, and development in the nature of patent rights, the patent system’s institutional structure, and the basic doctrines of patent law. The foundational and systemic aspects of the patent system that persist today emerged by the middle fifty years of the 19th century (1825–1875). Thus, the characteristics of our modern patent system reflect less the influence of the Framers or of the 18th century than they do the influence of the early to middle of the 19th century.

After establishing our 19th century patent system in Part I, Part II describes the consequences that our 19th century patent system has for present policy debates over patent law. A brief conclusion follows.

Proximate vs. Geographic Limits on Patent Damages

by Stephen Yelderman, Notre Dame Law School

from Volume 7 (2017-2018)

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

Abstract: The exclusive rights of a U.S. patent are limited in two important ways. First, a patent has a technical scope—only the products and methods set out in the patent’s claims may constitute infringement. Second, a patent has a geographic scope—making, using, or selling the products or methods described in the patent’s claims will only constitute infringement if that activity takes place in the United States. These boundaries are foundational features of the patent system: there can be no liability for U.S. patent infringement without an act that falls within both the technical and geographic scope of the patent.

Once liability has been established and a court’s attention turns to remedies, the continued relevance of these boundaries is not so clear. If all the infringing activity and all the resulting harm are within the technical and geographic scope of the patent, there is no problem. But, sometimes, activities within the technical and geographic scope of a patent cause harm to the patentee somewhere outside that scope. For example, a defendant’s infringing sales of a patented product may cause the patent holder to lose some sales of an unpatented product too. Or, as another example, a defendant’s infringing activity in the United States might cause a patent holder to lose sales somewhere else. Are these harms—to sales of a different product, or in a different country—cognizable for purposes of measuring the patent holder’s damages? Or do the basic limits on patent scope apply to questions of remedy just as they do to questions of liability?

The Federal Circuit has resolved this puzzle differently depending on which boundary is at issue. When it comes to technical scope, the Federal Circuit has long held that patent holders may recover for all the harms actually and proximately caused by the infringement. As a result, if the defendant’s infringing actions divert sales from the patent holder, the patent holder can potentially recover all of those lost sales, whether or not they fall inside or outside the technical scope of the patent at issue.

When it comes to harms beyond a patent’s geographic scope, however, the Federal Circuit has taken a different approach. In a series of recent cases, the court has developed a hard-and-fast geographic limit, categorically denying recovery of any foreign losses that were caused by the domestic infringement. As a result, if infringing activity inside the United States causes lost sales outside the United States, those losses are simply left to lie where they fall—even if they were actually and proximately caused by the infringing act.

Under the Federal Circuit’s current approach, then, the technical scope of a patent is applied only once in a patent case—to determine whether the defendant can be held liable as an infringer. In contrast, the geographic scope of a patent does a kind of double duty, applying first to the question of liability, and a second time to the question of damages.

This Essay argues that the same approach adopted at the edge of technical scope should apply at the geographic boundary as well. Specifically, patent holders should recover for the injuries actually and proximately caused by domestic acts of infringement, even if those injuries arise outside the technical or geographic scope of the patent. The Federal Circuit has correctly decided cases in which damages fall across the line of technical scope, but erred when it comes to damages that happen to cross a geographic boundary.

Intellectual Property, Surrogate Licensing, and Precision Medicine

by Jacob S. Sherkow, New York Law School &
Jorge L. Contreras, S.J. Quinney College of Law, University of Utah

from Volume 7 (2017-2018)

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

Abstract: The fruits of the biotechnology revolution are beginning to be harvested. Recent regulatory approvals of a variety of advanced therapies—Keytruda (pembrolizumab), Kymriah (tisagenlecleucel), and patisiran—have ushered in an age of “precision medicine” treatments that target patients’ specific genetic, physiological, and environmental profiles rather than generalized diagnoses of disease. Therapies like these may soon be supplemented by gene editing technologies such as CRISPR, which could enable the targeted eradication of deleterious genetic variants to improve human health. But the intellectual property (IP) surrounding precision therapies and their foundational technology remain controversial. Precision therapies ultimately rely—and are roughly congruent with—basic scientific information developed in the service of academic research. Much of precision medicine’s IP, however, is held by academic research institutions that employ for-profit surrogate companies, companies responsible both for commercially developing university research and sublicensing university IP to others. This creates an uneasy tension between the public missions of universities and the commercial motives of surrogates, particularly universities’ goals of producing and disclosing scientific information, and surrogates’ goals of exploiting that information for commercial gain.

This essay examines the challenges that surrogate licensing poses for the future of precision medicine. It begins by providing a brief summary of precision medicine and its recent developments. Next, it provides an overview of university patenting and the shift toward surrogate licensing. It then explores some of the difficulties concerning surrogate licensing in the context of precision medicine and, later, suggests modified licensing approaches and best practices that may better promote scientific discovery, the development of human therapies, and overall social welfare. Lastly, the essay discusses some larger doctrinal and theoretical implications arising from surrogate licensing in informationally intensive fields, like precision medicine.