Why Removing 101 Won\u27t Be Enough and What to Do Instead

Congress recently released a reform proposal for Section 101 of the U.S. Patent Act. The draft included the following language: “No implicit or other judicially created exceptions to subject matter eligibility including ‘abstract ideas,’ ‘laws of nature, or ‘natural phenomena,’ shall be used to determine patent eligibility under Section 101, and all cases establishing or interpreting those exceptions to eligibility are hereby abrogated.” This is a blatant attempt to overturn Alice Corp v. CLS Bank International, Mayo Collaborative Services v. Prometheus Laboratories, Inc., and related cases which created the judicial exceptions that prevent the patenting of “abstract ideas,” “laws of nature,” and “natural phenomena.” However, simply abrogating the cases with language like the above will not be enough to survive the Supreme Court. Without significant alterations to the proposed text, the effort to abrogate the judicial exceptions is doomed to failure. Section I of this article briefly explores the reasons Mayo and Alice need to be abrogated. Section II investigates the legal and philosophical underpinnings of Mayo and Alice. Section III discusses how Mayo and Alice’s legal underpinnings doom the current legislative proposal. Contrary to the opinions of some, these cases do have a constitutional basis and interested parties ignore that basis at their peril. Section IV provides alternative ways forward

The Pacific Historian, Volume 08, Number 3 (1964)

The purpose of The Pacific Historian was to promote, through research and study, an interpretation of life in the Western United States, especially California. The articles dealt with social, cultural, political, and economic aspects of Western regional history.https://scholarlycommons.pacific.edu/pac-historian/1061/thumbnail.jp

The Case Against Federalizing Trade Secrecy

Trade secrecy is unique among the major intellectual property (IP) doctrines because it is governed primarily by state law. Recently, however, a number of influential actors — including legislators, academics, and organizations representing IP attorneys and owners — have proposed creating a private civil cause of action for trade secret misappropriation under federal law. Proponents assert that federalizing trade secrecy would provide numerous benefits, including substantive uniformity, the availability of a federal forum for misappropriation litigation, and the creation of a unified national regime governing IP rights. This Article engages in the first systematic critique of the claim that federalizing trade secrecy is normatively desirable. Ultimately, it concludes that there are multiple reasons for trade secrecy to remain primarily the province of state law, including preservation of states’ ability to engage in limited experimentation regarding the scope of trade secret protection and federalization’s potential negative impact on the disclosure of patent-eligible inventions. Finally, it proposes an alternative approach — a modest expansion of federal courts’ jurisdiction over state law trade secret claims — that can help address the issue of trade secret theft without requiring outright federalization

Tax Simplification: So Necessary and So Elusive

[Excerpt] Cries for tax simplification have long been heard from presidents, legislators, current and former government officials and the public. The judiciary has often expressed its frustrations in comprehending the tax statutes. The Internal Revenue Service (“IRS”) itself has had occasion to hesitate and waver in its interpretation and application of the tax statutes, and indeed, several IRS officials have admitted to retaining professional assistance to prepare their personal income tax returns. Though nearly everyone seems to advocate tax simplification, the goal remains elusive. Tax litigation continues to abound, and sometimes, where words alone do not suffice, judges augment textual opinions with graphic illustration in order to effectively elucidate their decisions. The tax statutes and regulation books continue to grow ever more voluminous, and the Internal Revenue Code (“IRC”)10 is replete with sections containing exceptions to the stated rule and to the listed exceptions. Not included in the Code proper, however, are several uncodified revenue statutes of significant importance. A single transaction often gives rise to liability for diverse types of taxes. Several factors conjunctively operate to make and keep our tax system complex. By way of specific examples, this article will discuss some of the dynamics that impede and counteract the tax simplification efforts of the executive and the legislative branches. In doing so, the author does not purport that the cases, statutes, regulations or reports chosen for discussion are the only such examples. Nor does the author intend to woodenly impose any classification system, for the forces at work against tax simplification often appear in many guises and are susceptible to diverse analyses and classifications; moreover, they often interact synergistically with one another. The author seeks here to advance the scholarly and practical understanding as to why taxation continues to resist simplification, by way of identifying and describing the actions of forces that complicate the taxation process

The Trade Dress Emperor\u27s New Clothes: Why Trade Dress Does Not Belong on the Principal Register

We take it largely for granted today that the Trademark Act of 1946 permits the registration of trade dress on the principal register, but it has not always been the rule. Until 1958, the Patent and Trademark Office, following Congress\u27s intent expressed in the Act\u27s plain language and legislative history, excluded trade dress from the principal register as a matter of law. In 1958, Assistant Commissioner Daphne Robert Leeds changed the rule and allowed the registration of a product package as a trademark on the principal register. Unable to find any legitimate basis for reading the Trademark Act to permit trade dress on the principal register, Leeds simply asserted her desired result as conclusion, willfully replacing Congress\u27s decision on the issue with her own. In this Article, Professor Lunney argues that time has largely erased our memories of trade dress\u27s dubious claim to the principal register. And courts, over the last twenty years, have crafted an extensive regime of federal trade dress protection out of Leeds\u27s erroneous interpretation. Yet, even today, a fair-minded review of the Trademark Act of 1946 and its legislative history reveals that there is no lawful basis for allowing trade dress on the principal register. As with the Emperor and his new clothes, the only real question is whether, following its revelation, courts and the Patent and Trademark Office are willing to recognize this naked truth

The Trade Dress Emperor\u27s New Clothes: Why Trade Dress Does Not Belong on the Principal Register

We take it largely for granted today that the Trademark Act of 1946 permits the registration of trade dress on the principal register, but that has not always been the rule. Until 1958, the Patent and Trademark Office, following Congress\u27s intent expressed in the Act\u27s plain language and legislative history, excluded trade dress from the principal register as a matter of law. In 1958, Assistant Commissioner Daphne Robert Leeds changed the rule and allowed the registration of a product package as a trademark on the principal register. Unable to find any legitimate basis for reading the Trademark Act to permit trade dress on the principal register, Leeds simply asserted her desired result as conclusion, willfully replacing Congress\u27s decision on the issue with her own. Time has largely erased our memories of trade dress\u27s dubious claim to the principal register. And courts, over the last twenty years, have crafted an extensive regime of federal trade dress protection out of Leeds\u27s erroneous interpretation. Yet, even today, a fair-minded review of the Trademark Act of 1946 and its legislative history reveals that there is no lawful basis for allowing trade dress on the principal register. As with the Emperor and his new clothes, the only real question is whether, following its revelation, courts and the Patent and Trademark Office are willing to recognize this naked truth

When Trade Secrets Become Shackles: Fairness and the Inevitable Disclosure Doctrine

Critics of the inevitable disclosure doctrine decry the inconsistency with which courts rule on these cases, and the difficulty in predicting case outcomes. They contend that courts are left to grapple with a decidedly ... nebulous standard of \u27inevitability. \u27 Further, they claim the doctrine undermines the employee\u27s fundamental right to move freely and pursue his or her livelihood. Ultimately, both the problem and solution here are about fairness: fairness in the employer-employee relationship, fairness in the application of the law, and fairness in providing protection from unfair competition between competing employers. The crux of the opposition to the doctrine, in whatever form articulated, is that it is not fair to enjoin an individual from earning a living, especially when there is no noncompetition agreement in place, and when the cases and outcomes are inconsistent and unpredictable. Further, there is a judicial motivation to safeguard vigorous competition and prevent companies gaining competitive advantages through breaches of confidence, bad faith, or other wrongful conduct on the part of the departing employee. To this author, inevitable disclosure cases represent the epitome of the delicate balancing act that judges struggle with each day. This Article uses these cases as a case study to suggest a framework within which decision makers may accomplish what others think impossible: fairness, through consistency and predictability, in cases that by their nature are fact intensive and can only be decided on a case-by-case basis. This Article proposes a model that balances four factors: (1) the presence of a restrictive agreement (such as nondisclosure or noncompetition agreements); (2) the degree of competition between the former employer and the new employer, as well as the similarity of roles between the employee\u27s former position and new position; (3) the extent of the employee\u27s knowledge of, and familiarity with, the trade secrets in question; and (4) evidence of dishonesty or bad faith on the part of the employee

When Trade Secrets Become Shackles: Fairness and the Inevitable Disclosure Doctrine

Critics of the inevitable disclosure doctrine decry the inconsistency with which courts rule on these cases, and the difficulty in predicting case outcomes. They contend that courts are left to grapple with a decidedly ... nebulous standard of \u27inevitability. \u27 Further, they claim the doctrine undermines the employee\u27s fundamental right to move freely and pursue his or her livelihood. Ultimately, both the problem and solution here are about fairness: fairness in the employer-employee relationship, fairness in the application of the law, and fairness in providing protection from unfair competition between competing employers. The crux of the opposition to the doctrine, in whatever form articulated, is that it is not fair to enjoin an individual from earning a living, especially when there is no noncompetition agreement in place, and when the cases and outcomes are inconsistent and unpredictable. Further, there is a judicial motivation to safeguard vigorous competition and prevent companies gaining competitive advantages through breaches of confidence, bad faith, or other wrongful conduct on the part of the departing employee. To this author, inevitable disclosure cases represent the epitome of the delicate balancing act that judges struggle with each day. This Article uses these cases as a case study to suggest a framework within which decision makers may accomplish what others think impossible: fairness, through consistency and predictability, in cases that by their nature are fact intensive and can only be decided on a case-by-case basis. This Article proposes a model that balances four factors: (1) the presence of a restrictive agreement (such as nondisclosure or noncompetition agreements); (2) the degree of competition between the former employer and the new employer, as well as the similarity of roles between the employee\u27s former position and new position; (3) the extent of the employee\u27s knowledge of, and familiarity with, the trade secrets in question; and (4) evidence of dishonesty or bad faith on the part of the employee