Book Review

Review of: WESLEY A. MAGAT & W. KIP VISCUSI, INFORMATIONAL APPROACHES TO REGULATION. (MIT Press 1992) [274 pp.] Appendices, endnotes, illustrations, index, list of titles in the Regulation of Economic Activity series, list of tables and figures, preface, series foreword. LC 91-29483; ISBN 0-262-13277-X. [$32.50 cloth. 55 Hayward Street; Cambridge MA 02142.

[Introduction] The Science Court Is Dead - Long Live the Science Court

[Excerpt] It is a pleasure to introduce this symposium issue with its range of current thoughts about what Arthur Kantrowitz invented a little over twenty-five years ago and has since come to be known as the Science Court. The pleasure is enhanced by being able to include papers by Dr. Kantrowitz, Allan Mazur (who worked closely with him), Carl Cranor, Itzhak Jacoby and Sheila Jasanoff - as well as an extensive list of citations to other discussions. In approaching these papers, readers may find it helpful to consider what Kantrowitz invented, he and others have attempted to improve, and the marketplace for social innovation has so far largely rejected. Notwithstanding a Congressional desire to include anything under the sun.., made by man within patentable subject matter, social technologies appear not to fit. Still, the Science Court can be usefully subjected to the kind of scrutiny it would have to survive before a patent could be granted

Crimes Involving Intangible Property

[Excerpt] “A well-known cliché came to life when “[t]he pope’s butler was convicted . . . of stealing the pontiff’s private documents and leaking them to a journalist . . . .” His lawyer’s unsuccessful argument—that taking “only photocopies, not original documents” should not be criminal—prompted this paper. When tangible property is taken, owners retain nothing. When documents or equivalents are duplicated, however, even if owners retain originals, they suffer loss of control and may lose substantial present and potential advantages, not necessarily economic. Civil redress for such losses has therefore long been available through copyright and trade secret laws. Indeed, it has often been available when injuries occasioned by unauthorized reproduction seem unrelated to goals traditionally advanced by either body of law. Thus, the way information is expressed may be protected by copyright and, until published, if it otherwise qualifies, information as such may also enjoy trade secret protection. When civil remedies are inadequate to deter theft and vindicate interests of owners and the public, civil remedies can be augmented with criminal penalties. Differences between tangibles and intangibles, however, are often seen to warrant different prosecutorial requirements and penalties. The second part of this paper explains how federal courts, recognizing those differences, have come to find the National Stolen Property Act (“NSPA”) inapplicable to theft of at least some intangibles. Ones addressed there fall within the scope of the Federal Copyright Act (“FCA”) and the Economic Espionage Act of 1996 (“EEA”). … The paper concludes, first, by echoing a suggestion that lack of uniformity in state law justifies federal penalties and expanded jurisdiction. It also advocates more uniformity and better articulation of the subject matter contemplated by the term “intangibles” in, for example, the Model Penal Code. Finally, the paper argues that even when tangibles such as media are taken, courts should, for example, not base their value on the value of its intangible contents.

Billy-Bob Teeth Saves Porn Star: Coping with Defective Work-for-Hire Registrations

[Excerpt] “This paper begins by briefly reviewing statutory provisions that determine initial copyright ownership, govern title transfers, establish requisites to infringement litigation, and bar untimely suits. It then examines Billy-Bob Teeth and Jules Jordan Video and explains how, in the latter case, the Ninth Circuit applied rationales adopted by the Seventh Circuit in the former case to overturn a JMOL unfavorable to an adult film star. The third part of the paper reviews use of the copyright statute of limitations to resolve competing ownership claims. The last part of the paper, flagging important differences between § 201(b) and § 204(a), explains why one approach used by the Seventh Circuit to clear title was inappropriately applied by the Ninth Circuit. It concludes that, had the copyright statute of limitations been pled in the later case, the opportunity to misapply § 204(a) should not have arisen. Summary judgment would have been warranted on § 507(b), and that would have made it unnecessary for the Ninth Circuit to offer three alternative ways to extricate a copyright owner from the horns of a dilemma.

Converting Intellectual Assets into Property

The mouse and graphic interface were first commercialized on Macintosh computers. Yet, Steve Jobs is said to have derived both from the Alto computer developed by Xerox\u27s Palo Alto Research Center. While Jobs became a billionaire, Xerox completely failed to get into the personal computer business, missing one of the biggest business opportunities in history. Preferring to be more akin to Apple than to Xerox, firms are increasingly mindful that their most valuable assets are apt to be ideas and information instead of land, buildings and inventory. Not capable of being fenced in or locked up, intangible assets can be protected when they are converted into patents, copyrights, trademarks and trade secrets -- collectively intellectual property (IP)

Scientific Facts vs. Political Values

Professor Field takes exception to a recent Science editorial

IP Basics: Advice on IP Careers for Those with Technical Backgrounds

[Excerpt] Full-time law school takes three years and culminates in the Juris Doctor. A J.D. from a school accredited by the American Bar Association qualifies a person to take the bar exam in any state. As mentioned above, college graduates need not pursue any particular line of study to be accepted into law school. At the University of New Hampshire School of Law, for example, over a third of our students have degrees in engineering or science, and many have had extensive experience or advanced degrees, including M.D.s and Ph.Ds. -- the last being particularly helpful for biotechnology patent careers

Intellectual Property: The Practical and Legal Fundamentals

Patents, copyrights, trademarks and related interests are known as intellectual property (IP). It has not been long since patents especially were regarded in U.S. courts, and the Supreme Court in particular, as tools of monopolists, and their owners often fared poorly. However, people have come increasingly to view privately funded innovation as critical to national economic well-being and to agree that such innovation cannot occur unless companies that succeed in the marketplace can recoup their research, development and marketing costs. That is a major function of IP, and, particularly within the past dozen years, IP has been seen, both here and abroad, as playing a key role in developing technologies for the next century

Controlling Patent Prosecution History

[Excerpt] “One of the most salient effects of patent prosecution history arises in the context of the doctrine of equivalents. Under that doctrine, although patent claims may be found to be broader than their literal scope, territory surrendered during prosecution cannot be encompassed as equivalent. Nor can territory forfeited by initial failure to claim be captured under the doctrine of equivalents. Most attorneys who prosecute applications are apt to be aware of such problems and to take measures to avoid them.

Pursuing Transparency through Science Courts

[Excerpt] The frequency and magnitude of risks and benefits are facts. The acceptability of risks associated with particular benefits is not. In the best of all worlds, normative choices based on facts would be made directly by persons at risk. We do not have the best of all worlds. As we move from consumer to occupational and environmental risks, political transparency increasingly must substitute for individual autonomy. When we cannot each have our way, we should be able to decide which facts are important, to have access to such facts and to be able to influence decisions based on them