National Aglaw Center Research Article, J.E.M. Ag Supply, Inc. V. Pioneer Hi-bred International, Inc.: its Meaning and Significance for the Agricultural Community

Biotechnology development in agriculture has raised challenging intellectual property issues. These issues are framed in the context of a three-prong plant patent statutory scheme, involving the Utility Patent Act, the Plant Variety Protection Act, and the Plant Patent Act. The agricultural community, which includes agricultural biotechnology companies, seed companies, and agricultural producers, has debated whether utility patents are excluded from the scope of the Utility Patent Act. Producers contended that Congress superceded the Utility Patent Act when it created the Plant Variety Protection Act and the Plant Patent Act and that sexually reproducing plants (seeds and seed grown plants) are protected exclusively by federal law under the provisions of the Plant Variety Protection Act. Seed companies, on the other hand, retorted that sexually reproducing plants are within the scope of the Utility Patent Act and that neither the Plant Protection Act nor the Plant Variety Protection Act superceded the Utility Patent Act. The dispute was resolved in December 2001, by the United States Supreme Court in J.E.M. Ag Supply, Inc. v. Pioneer Hi-Bred International, holding that utility patents may be issued for plants under the Utility Patent Act, despite distinct protections available under the Plant Variety Protection Act and the Plant Protection Act. This article outlines the factual, procedural, and legal background of the dispute in J.E.M. and explains the rationale and scope of the Supreme Court’s decision. This article also addresses the meaning and significance of the decision to the agricultural community. Articles Editors, Matt Morris & Joe Rupcich

Intelligent Design

When designers obtain exclusive intellectual property (IP) rights in the functional aspects of their creations, they can wield these rights to increase both the costs to their competitors and the prices that consumers must pay for their goods. IP rights and the costs they entail are justified when they create incentives for designers to invest in new, socially valuable designs. But the law must be wary of allowing rights to be misused. Accordingly, IP law has employed a series of doctrinal and costly screens to channel designs into the appropriate regime—copyright law, design patent law, or utility patent law—depending upon the type of design. Unfortunately, those screens are no longer working. Designers are able to obtain powerful IP protection over the utilitarian aspects of their creations without demonstrating that they have made socially valuable contributions. They are also able to do so without paying substantial fees that might weed out weaker, socially costly designs. This is bad for competition and bad for consumers. In this Article, we integrate theories of doctrinal and costly screens and explore their roles in channeling IP rights. We explain the inefficiencies that have arisen through the misapplication of these screens in copyright and design patent laws. Finally, we propose a variety of solutions that would move design protection toward a successful channeling regime, balancing the law’s needs for incentives and competition. These proposals include improving doctrinal screens to weed out functionality, making design protection more costly, and preventing designers from obtaining multiple forms of protection for the same design

Don\u27t Just Cover the Engineering Design Process, Patent It!

The article discusses the importance of understanding intellectual property (IP) concept for students of engineering design process. It highlights that IP classification are of four types which includes patent, trademarks and copyright. The article further offers brief information on process of obtaining a utility patent for technological inventions

From Amazon\u27s Domination of E-Commerce to Its Foray into Patent Litigation: Will Amazon Succeed as The District of Amazon Federal Court ?

Modern-day consumers often expect instant gratification. Instead of shopping via printed catalogues and retail stores, consumers flock to the convenience of online shopping platforms, like Amazon. On these platforms, consumers have instant access to items they need, anytime, and anywhere. The popularity of these platforms to both consumers and sellers of items has also ushered in a wave of counterfeit products to these platforms. Technology giant Amazon has a pervasive counterfeit problem that has been harming the legitimacy of its retail operation for some time. Amazon had previously employed a hands-off approach to counterfeits and left sellers to resolve disputes amongst themselves. Only recently has Amazon employed various programs aimed at removing infringing and counterfeit listings. In April 2019, Amazon launched a new anti-counterfeit enforcement protocol called the Utility Patent Neutral Evaluation Procedure. Amazon’s program aims to combat utility patent infringement on the Amazon Marketplace. This Recent Development will evaluate the new protocol as an alternative to traditional patent litigation pathways, examine Amazon’s previous attempts at curbing infringement, and will offer solutions to improve the efficacy of this program

Toward a More Coherent Doctrine of Trademark Genericism and Functionality: Focusing on Fair Competition

The doctrines of trademark genericism and functionality serve similar functions under the Lanham Act and the common law of unfair competition. Genericism, in the context of word marks, and functionality, for trade dress, bar trademark registration under the Lanham Act and, both under the Act and at common law, render a trademark unprotectable and invalid. In the word mark context, genericism stands for the proposition that certain parts of vocabulary cannot be cordoned off as trademarks; all competitors must be able to use words that consumers understand to identify the goods or services that they are selling. Functionality likewise demands that certain aspects of product design cannot be legally protected as trade dress, as to do so would potentially limit competitors’ ability to make products that work as well at the same price. The core concern, for both doctrines, is or should be the preservation of free and fair market competition. Part I of this Article explains the theoretical parallels between the doctrines of genericism and functionality, and examines the history and purpose of these doctrines. A finding that a word is or has become generic, or that a form of trade dress is functional, negates a mark’s registration and protection under the Lanham Act, as well as under state and common law. Even incontestable marks can be declared invalid, regardless of the passage of time, under either doctrine. The types of trademarks typically at issue when making genericism and functionality determinations—word marks that are, at best, descriptive, or product design functioning as trade dress—are correctly described as weak. The genericism and functionality doctrines therefore play a critical role in marking the boundaries of trademark law. To properly draw those lines, decision makers need to correctly define and understand the theory underlying both doctrines. In Part II, this Article argues that both genericism and functionality, in their practical interpretation and purpose, should more clearly reflect the core principle of protecting fair competition. In particular, the concept of viable, competitive alternatives—either in the form of words or alternative designs—should play an enhanced role in determining whether an erstwhile trademark is generic or functional. The various tests for genericism and functionality currently employed by the courts often attempt to draw formalistic distinctions among categories of words or product features that may confound business owners (and their lawyers) and divert the focus of the courts’ inquiry in such cases away from the core value at the heart of both doctrines: preserving fair competition

The Evolving Landscape of IP Rights for Plant Varieties in the United States, 1930-2008

The United States was the first country in the world to explicitly offer intellectual property protection for plant varieties. Beginning in 1930, asexually reproduced plants were afforded plant patent protection, in 1970 sexually propagated plants could be awarded plant variety protection certificates, and beginning in 1985, courts confirmed that varieties of all types of plants were eligible for utility patents. From 1930 to 2008, a total of 34,340 varietal rights applications were lodged. The number of rights being sought continues to grow, with 42 percent of all the varietal rights claimed since 2000. Contrary to popular perception, most of these rights are for horticultural crops (69 percent), with ornamentals accounting for the lion’s share of the horticulture-related rights (73 percent, or 50 percent of all plant rights). Food and feed crops constitute only 24 percent of the rights sought, although just two crops (corn and soybean) made up 84 percent of the 3,719 varietal rights claimed via utility patents. The structure of these rights has changed dramatically over the years. During the 1930s when the only rights on offer were plant patents, 72 percent of the rights sought were for ornamental crops and individual innovators played a substantial role (50 percent of the rights). By 2004-2008, the annual applications for plant patents had increased in number but fallen to a 60 percent share of the total rights claimed. During this recent period, utility patents were as popular as plant variety protection certificates, and ornamentals made up a large but much reduced share of the total (52 percent). Individual innovators accounted for only 12 percent of the rights, whereas the corporate sector sought the dominant share of varietal rights (82 percent in 2004-2008). These intellectual property markets are complex, with corporations, universities and other agencies seeking different types of rights for different crops.plant patents, plant variety protection, utility patents, Agricultural and Food Policy, Crop Production/Industries, Environmental Economics and Policy, Resource /Energy Economics and Policy, Q16, Q18, O32, O34,

Disclosing Designs

The disclosure function figures prominently in many accounts of the utility patent system. But what of its role in the design patent system? Should it be dismissed as trivial? And if so, what are the practical consequences for design patent doctrine in view of the fact that the doctrines that implement the disclosure function in utility patent law also apply to design patents by statutory mandate? The disclosure theory posits that patent documents disclose technical information that serves as a quid pro quo for the patent grant. Even aside from controversies about whether the disclosure function is robust for utility patents, the lack of fit with design patents may seem self-evident: the design patent disclosure is not intended to convey technical information. Its chief purpose is to provide notice to the public as to the subject matter that the design patent protects, as the claims do in utility patents. Perhaps Judge Rich had this in mind when he wrote the opinion for the en banc court in Racing Strollers, Inc. v. TRI Industries, Inc., observing that the best mode requirement is not applicable to design patents and that complying with the remaining requirements of simply entails that the document contain illustrations ... depicting the ornamental design