Journal of Intellectual Property RightsVol 7 January 2002 pp 62-70

LITERATURE REVIEW

IPR -General

Does intellectual property become un-important in cyberspace? Weber Rolf H,International Journal of Law and Informa-tion Technology, 9(2) 2001,171-185.

Since an increasing number of personsmake their living in the 'information econ-omy', intangible assets are becoming moreand more important. Legally speaking,wealth acquired by working with infonna-tion necessitates in principle the existenceof a legal framework protecting non-materialproperty rights and similar economical posi-tions; the respective 'titles' find their legalsource and basis in intellectual property law.

Intellectual property rights and thethird world, Mashelkar RA (www.patent-matics.com) .

Issues of generation, protection and exploi-tation of intellectual property (IP) are assum-ing increasing importance. The new IPregimes will have wide ranging socio-eco-nomic, technological and political impact.As per the obligations under the Trade- Re-lated Intellectual Property Systems (TRIPS),all the members of World Trade Organiza-tion (WfO) are supposed to implement na-tional systems of intellectual property rightsfollowing an agreed set of minimum stand-ards. However, there is an increasing feeling

that harmonization is demanded from thosethat are not equal, either economically orinstitutionally. The major concerns of thethird world about such harmonization andthe new challenge it faces in diverse areas ofintellectual property protection are dis-cussed and some suggestions about the wayahead are made.The discussion includes the need for a fairplay in technology transfer, creation of 'fa-vourable economics' of essential medicinesfrom the point of view of the third world,protection of traditional knowledge, etc. Thecreation of Traditional Knowledge DigitalLibrary (an essentially Indian initiative) andlinking it to the International Patent Classifi-cation System (IPC) through a TraditionalKnowledge Resource Classification Systemis an important conceptual step forward.The possible models for material transferand benefit sharing when products are cre-ated based on community knowledge arealso discussed.Other discussion includes the challenge ofbridging the divide between the third worldand other developed nations, with specialemphasis on intellectual property infonna-tion sharing, capacity building with creationof appropriate physical and intellectual infra-structure and awareness building. It is ar-gued that the third world should negotiate anew 'TRIPS plus' which means 'TRIPS plusequity and ethics'.

UTERATURE REVIEW 63Intellectual property rights and foreigndirect investment, Gloss Amy Jocelyn andSaggi Kamal, Journal of International Eco-nomics, January 200l.This paper develops a product cycle modelwith endogenous innovation, imitation, andforeign direct investment (FDI). Theauthors use this model to determine howstronger intellectual property rights aPR)protection in the South affects innovation,imitation and FDI. They found that strongerIPR protection keeps multinationals saferfrom imitation, but no more so than North-ern firms. Instead, the increased difficulty ofimitation generates resources wasting andimitation disincentive effects that reduceboth FDI and innovation. Reduced FDI thentransmits resource scarcity in the Southback to the North and consequently con-tracts innovation.Future of composites in IPR regime,Subramanian P N (www.patentmatics.com)A general search of US patents during 1996-2000 indicates the great R&D interest in thefield of composites. The patents cover al-most all fields of composites, viz. ther-moplastics and thermosetting materials,processing methods of products and rawmaterials; variety of products for automo-bile, transport, building, constructions,sports industries and so on. However, thepatents taken with respect to aerospaceproducts by filament winding, pultrusion,RTM, etc. are found to be limited. This maybe due to less commercial possibilities andlimited applications. But the patents per-taining to RTM technology indicate greatinterest in advanced technologies. Simi-larly, pultrusion has attracted many R&Dorganizations. A typical patent on process-ing of rocket nozzle using modified tapewinding technology was taken up for indepth analysis to know its impacts in the

nozzle technology in the country. It is no-ticed that this process has not found suffi-cient practical application and may not havemuch impact.

Intellectual property rights and agricul-tural technology - interplay and implica-tions for India, Ravishankar A and ArchakS, Economic & Political Weekly,35(27)2000,2446-2452 t.With the Plant Varieties Protection andFarmers Rights' Bill being referred to a se-lect parliamentary committee, the advent ofan IPR regime in the agricultural sector isimminent. This paper attempts to sketchheuristically, the research domain and itsportfolio in the agricultural sector. It is ar-gued that inter alia, the legal and policyframework will determine the shape ofthings to come. Based on the nature of pro-tection for different technologies, the role ofprobable stakeholders and their plausibleimpacts are examined.

Discovering new value in intellectualproperty, Rivette KG and Kline D,HarvardBusiness Review, 78(1) 2000, 54-t.

Intellectual property? Five years ago, thatphrase wasn't even in the vocabularies ofmany CEOs, let alone a part of their businessstrategies. Indeed, many chief executivesstill regard patents, trademarks, copyrights,and other forms of intellectual property aslegal matters best left to the corporate attor-neys.

But the burgeoning knowledge economyhas given rise to a new type of CEO and anew type of business competition-one inwhich intellectual assets, not physical ones,have become the principal sources of share-holder wealth

and competitive advantage. And therein liesone of the next great corporate challenges:

biology is characterized by a strong merit-based (nonalphabetical) assignment of intel-lectual property rights. These patterns donot result from differences in the relativeimportance of funding/physical capital.

Which countries protect intellectualproperty? The case of software piracy,Marron D B and Steel D G, Economic In-quiry, 38(2) 2000, 159-174 [.

Using data on software piracy, the authorsexamined how protection of intellectualproperty varies across countries. Consistentwith other studies, they found that intellec-tual property receives greater protection indeveloped economies; high-income coun-tries have lower piracy rates. They alsofound that protection depends on culturalfactors.

Countries with an individualist culturehave lower piracy rates than do countrieswith a collectivist culture. Piracy rates arealso lower in countries that have stronginstitutions that enforce contracts and pro-tect property from expropriation. These re-sults suggest that national policies towardintellectual property reflect not only eco-nomic concerns but also national cultureand institutions.

Against cyberlaw, Sommer Joseph H,Berkeley Technology LawJournal, 15(3) Fall2000.

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figuring out how to unlock the hidden powerof patents.In this article, authors, Kevin Rivette andDavid Kline, describe how the strategicmanagement and use of patents can en-hance a company's commercial success inthree broad ways: by establishing a proprie-tary market advantage, by improving finan-cial performance, and by enhancing overallcompetitiveness.

They present real-world examples of effec-tive and ineffective patent managementstrategies-for example, comparing Dell's ag-gressive patenting of its direct-sales busi-ness mode! with War-Mart's looserprotection of its unique business systems.They describe common but effective patent-ing techniques such as clustering and brack-eting, both designed to block out or hampercompetitors in the market.

For both traditional and new-economy busi-nesses, such as Amazon.com andPriceline.com, leveraging patents properlycan produce benefits such as reduced cor-porate risk, the ability to anticipate and reactto market shifts, and, ultimately, increasedshareholder value and profits.

Intellectual collaboration, Laband D Nand Tollison R D, Journal of Political Econ-omy, 108(3) 2000, 632-662t.

Intellectual collaboration in science in-cludes formal coauthorship as well as pres-entation of papers at workshops, seminars,and professional meetings and informalcommentary from colleagues, journal refe-rees, and editors. While the incidence andextent of formal coauthorship are greater inbiology than in economics, the extent ofintellectual collaboration is greater in eco-nomics than in biology. Intellectual propertyrights to coauthored papers in economicstend to be assigned alphabetically, whereas

There has been tremendous attention givento the Internet over the last five years. Manygroups and commentators now speak aboutcyberlaw as a revolution that will sweep thelegal landscape. These groups also arguethat new information technologies pose newand difficult problems that traditional law isunable to solve. The author first argues thatcyberlaw is not a body of law in and of itself,as technologies generally do not define bod-ies of law. Next, the author argues that it is

LITERATURE REVIEW 65

dangerous to consider cyberlaw as its ownbody of law and that to do so will lead to thedevelopment of bad law. Then, the authorexamines whether any legal issues posed bynew informatics technologies are novel. Theauthor concludes that most legal issuesposed by these technologies are not new atall and that existing law is flexible enough todeal with such issues.Electronic rights management and digi-tal identifier systems, Gervais Daniel J(http://www.copyright.com) .The new world of digital information re-

quires a new way of providing access to thatinformation - while keeping the copyrightbackbone. It might be technically easier tocreate a digital infrastructure without copy-right: Just throw works up on the Internet,and let anyone get to them for any purposes.But such systems have been suggested androundly rejected by those who create andown works of value. So we need to build anelectronic infrastructure that works withcopyright and takes advantage of the digitalenvironment. This paper looks at the at-tempts to build part of that infrastructure -the electronic copyright-management sys-tem - and analyzes their progress and sue-cess,

Electronic commerce: an Indian per-spective, Ahmad Farooq, InternationalJournal of Law and Information Technology,9(2) 2001, 133-170.To provide security and legal recognition tothe transactions executed electronically, In-dian Parliament enacted the InformationTechnology Act, 2000 which has come intoforce on October 17,2000. This Act althoughmodelled on UNCITRAL's Model Law, de-parts in many respects from the spirit of theModel Law. Furthermore. the Indian courtshave not yet found any opportunity to ap-praise the impact of the provisions of the ITAct on substantive principles of contract for-mation codified in the Indian Contract Act,

1872. An analytical evaluation is therefore,needed to identify the issues raised by theinformation technology relating to contractformation, impact of the IT Act on the prin-ciples relating to contract formation pro-vided in the Contract Act, impact of noninclusion of the principles governing e-com-merce, provided in the Model Law but notreflected in the IT Act and the jurisdictionalissues which are not confined to nationalboundaries but have global ramificationsand are bound to arise in e-commerce dis-putes.Contracts, intellectual property rights,and multinational investment in devel-oping countries, Markusen J R.Journal ofInternational Economics, 53 (1) 2001,189-204.The policy debate between multinationalfirms favoring strong contract law, andhost-country governments who often op-pose such protection motivates the paper.Local agents (managers) learn the multina-tional's technology and can defect to start arival firm. Contract enforcement. includingbinding the multinational itself, makes themultinational better off. Outcomes for thehost country are more complex. dependingon mode switches induced by enforcement.If enforcement induces the multinational toswitch from exporting to local production,welfare improves. If local production wasoccurring anyway, enforcement may resultin the loss of rents to local agents and lowerwelfare. .

Patents

Business process patents - the road toreform, Ciminello Dominic P,(http://www.tilj.com/content/intellectualproperty.htm)The debate over whether such patentsshould be allowed has intensified in thewake of the patents recently granted to Ama-zon.com and others. Many feel that Internet

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business models are not sufficiently uniqueto be awarded a patent and that such patentsstifle creativity and may even form a barrierto entry for some e-businesses.The ayahuasca patent revocation: rais-ing questions about current US patentpolicy, Leanne M Fecteau(http://www.bc.edu/bc_org/ avp/law /lwsch/journals)

This note explores the discriminatory effectof US patent law and policy on indigenouscommunities in developing countries. Foryears, Western researchers have reliedupon local people to point them to usefulregional plants and animals so that theycould then isolate, develop and patent thechemical compounds found in the organ-isms. Yet, the U S patent system does notrecognize or value the traditional knowledgeof indigenous groups regarding their re-gional biodiversity. Rather, the researcherswho isolate the compounds can obtain a pat-ent with no recognition for the indigenousknowledge upon which they relied. Re-cently, the World Trade Organization hassucceeded at globalizing Western intellec-tual property systems through internationaltreaties. These efforts have met with signifi-cant resistance in several developing coun-tries. The controversy over the ayahuascapatent is one example of developing coun-tries' opposition to Western-style intellectualproperty rights. By implementing the sug-gestions described in this Note, the UnitedStates could ensure that indigenous knowl-edge would be recognized and thus couldavoid future controversies like the one sur-rounding the ayahuasca patent.Patents in the field of biotechnology, ashort guide for inventors and adminis-trators, Arnold Winfried K M, Swiss andEuropean Patent Attorney, Brugglistr 9,CH41040berwil.

This short guide was written at the instanceof the Priority Program Biotechnology (SPP

Biotech) of the Swiss National ScienceFoundation (SNF) , which supports researchin many scientific fields and is interested inencouraging the patenting of inventions ofpotential commercial interest emergingfrom such supported research. The NationalScience Foundation intends to assist in fi-nancing the preparation, filing and may bealso licensing of patent applications.This short guide is the basis for a seminarorganized by the SPP Biotech for scientistsand administrators involved in the SPPBiotech and other SNF programs. Some ofthe audience may have come already in con-tact with patents, either by studying the pat-ent literature or as inventors or co inventors.However, some may have only heard of theexistence of patents and may not even haveseen one. The intention of the seminar wasto alert on the importance and to explain thepurpose and function of a patent. It isdeemed necessary to give definitions of andto explain the most important terms used inthe legal patent literature, in particular thoseused in the Patent Laws and the courts ofvarious countries of the industrialized world.Most important to Swiss inventors are theSwiss, the European and USA Patent Laws.Although they have much in common thereexist also differences in the wording and thespirit. Of great importance is further theJapanese Patent Law. As the principles aremore or less the same only specific differ-ences are highlighted. The patenting ofbiotechnological inventions, in particular ofplants and animals, is subject of controver-sial political discussions.Two-stage patent races and patent pol-icy, Denicolo VRand Journal of Economics,31 (3)2000,488-501t.The author analyses the optimal degree offorward patent protection in a two-stage pat-ent race framework. He compares three pat-ent regimes, as the second innovation maybe unpatentable and infringing (UO, patent-able and infringing (PO, or patentable and

LITERATURE REVIEW

not infringing (PN). Forward protection ishighest in regime UI and lowest in regimePN. He identified a fundamental inefficiencyaffecting regime UI, namely that it alwaysleads to underinvestment in the second in-novation, and noted various determinantsof the welfare ranking of the regimes. Spe-cifically, strong forward protection becomesless attractive as the relative profitability ofthe first innovation increases and the rela-tive difficulty of obtaining it decreases.Patent protection, imitation and themode of technology transfer,Fosfuri A,International Journal of Industrial Organiza-tion, 18(7)2000,1129-1149t.

This paper analyses a model in which a firmendowed with a new technology can choosebetween exports, licensing and direct invest-ment as entry modes in a foreign marketThe author endogenizes the vintage of thetransferred technology and allow for imita-tion by the licensee. Subsidiary productionand exports circumvent imitation but in-volve higher costs for the innovating firm.The firm can strategically use the vintage ofthe technology to deter imitation by the li-censee. As a result, transfers to affiliatesmight be of later vintage than technologiessold to outsiders.Through modification of the imitation costs,the host country's system of patent protec-tion influences the mode of technologytransfers which inturn affects the welfare ofthe recipient economyPatent protection of computer pro-grams,Chandler] amesP(http://www.law.umn.edu/mipr / archive/frames/Chandler2000_01_01.htm)

This article examines whether computerprograms are, or ought to be, patentablesubject matter under section 101 of the Pat-ent Act. Second, it considers whether com-puter programs satisfy the utility and noveltyrequirements of section 102. And finally, it

examines the problem of obviousness, andjudgments thereabout, as required by sec-tion 103. The most nettlesome problem un-der the statute is whether computerprograms, or software, are patentable sub-ject matter. This is troublesome becausethere is no uniform definition of what consti-tutes a computer program. The problem isfurther confounded by the fact that manyhave presumed that a computer program isanalogous to an algorithm, which has beenjudged non-patentable subject matter;hence, computer programs, like algorithms,are non-patentable subject matter. SomeUnited States Supreme Court decisionshave been cited as authority for this propo-sition. The author disagrees with such inter-pretation. Others have suggested that thelower federal courts, in particular the CAFC,have modified the ruling of the United StatesSupreme Court to permit algorithms to bepatented, and hence have approved the pat-enting of computer programs. The articlealso examines the development of the lawgoverning the patentability of computer pro-grams, reviews with particularity patentsthat have been approved by the courts, andidentifies the technical legal justification fordecisions by the Patent and Trademark Of-fice (IIPTOII)and the courts to reject applica-tions for patents on computer programs andto allow others. Finally, the article suggestsa pathway for the PTO and the courts inresolving issues concerning the future pat-entability of computer programs.Patenting expressed sequence tags andsingle nucleotide polymorphisms,Flattmann Gerald] and Kaplan]onathan M.Nature Biotechnology, 19 (8) 2001, 777-779.

Today, molecular biologists possess thetools to clone, sequence, and identify thou-sands of potentially useful expressed se-quence tags (ESTs) and single nucleotidepolymorphisms (SNPs). Patent officesworldwide are dealing with increasing num-

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bers of EST and SNP patent applications, butthe route to patent approval is still unclear.In drafting patent specifications. the need forguidance is perhaps greater than ever. Inthis paper authors examine the direct rela-tionship between the scope of the claimssought by the inventor and the requiredbreadth and detail of the patent specificationto see what protection EST and SNP inven-tions will likely be afforded. They concludethat a sufficient written description for abroad EST or SNP claim will depend on thechoice of the transitional phrase, the degreeto which the claimed sequence represents agenus of nucleotide sequences, the ability tocorrelate the structure of the claimed se-quence with a function, and the manner inwhich the claim terms are defined in thespecification.Going for the big one, Eisenstein RonaldI and Resnick David S, Nature Biotechnology,19 (9) 2001,881-882.

Universities have become an increasinglyimportant part of the biotechnology patentenvironment, beginning in 1980 with Stan-ley Cohen and Herbert Boyer's patents forD A splicing. Other landmark patents in-clude those on transgenic mice, gene trans-fer, and antiangiogenesis for cancertreatments. In this paper, authors look atseveral examples to determine what effectsuch blockbusters could have on universitypolicies regarding patenting, and ultimately,university research. Many of the patents de-scribed are directed to methods. Innovativeresearch is frequently licensed to biotech-nology startups. Universities often attemptto obtain equity in such deals in addition toupfront fees, milestone payments, and royal-ties. Successful university patents are usu-ally judged not by the scope of the claims orthe patent's subject matter, but rather on

how much revenue the university has gen-erated by licensing that patent.

Patents, patent laws and TRIPS Agree-ment, Zaveri Marendra B, ChemicalIndus-try News, 46(10) 2001,33-40.

Paper presents the details of all aspects ofpatent, e.g. considerations for the grant ofpatent, patentable subject matter, patent pro-cedures and remedies, pre-grant examina-tion and opposition, patentee's right,assignment and licensing, abuses and anti-competitive practices, compulsory licens-ing, licences of right, infringement andrevocation. The second part deals with 'trea-ties and conventions'. Provisions of TRIPSAgreement are described in detail. The lastpart describes India's objectives and optionsfor TRIPS compliance.

Patent protection, imitation and themode of technology transfer, Fosfuri A,International Journal of Industrial Organiza-tion, 18(7) 2000, 1129-1149t.This paper analyses a model in which a firmendowed with a new technology can choosebetween exports, licensing and direct invest-ment as entry modes in a foreign market.The author endogenizes the vintage of thetransferred technology and allow for imita-tion by the licensee. Subsidiary productionand exports circumvent imitation but in-volve higher costs for the innovating firm.The firm can strategically use the vintage ofthe technology to deter imitation by the li-censee. As a result, transfers to affiliatesmight be of later vintage than technologiessold to outsiders. Through modification ofthe imitation costs, the host country's sys-tem of patent protection influences the modeof technology transfers which in turn affectsthe welfare of the recipient economy.

LITERATURE REVIEW 69

Copyright and Trademarks

Evolving common law doctrine of copy-right misuse: a unified theory and itsapplication to software, Frischmann Brettand Moylan Dan, Berkeley Technology Lawjournal, 15(3) Fall 2000.

This article explores the common law de-fense of copyright misuse from a variety ofangles in an effort to refine and unify existingviews. The unified model that emerges isthen applied to software copyright, address-ing the tension that software creates withincopyright law as well as between copyright,patent, and antitrust law. Part II develops ajurisprudential model for understanding thesubstantive relationship between the copy-right misuse doctrine and copyright, patent,and antitrust laws, and the procedural ap-proaches taken by courts when formulatingand applying misuse principles-per serules and the rule of reason. Part III exam-ines four Supreme Court cases that provideguidance for the application of misuse prin-ciples in the copyright context. It then turnsto an analysis of the application of copyrightmisuse in the federal courts of appeals.These discussions enable a distillation ofguiding principles from the case law in anattempt to clarify the "current state of thecopyright misuse doctrine." Part IV appliesthe principles derived in Parts II and 1II tosoftware copyrights and proposes a per serule against licensing restrictions upon re-verse engineering that complements anti-trust-based misuse and the fair use doctrine.Rather than attempt to provide a comprehen-sive set of public policy-based misuse rules,this Article instead presents a single rule asan illustration of how fun her doctrinal devel-opment might proceed.

Is it fair use? It depends, Slater Eric S,Chemica/Innovation, 31 (9) 2001,46-48.

"Fair use" is the privilege to use copyrightedmaterial in reasonable manner without hav-ing to secure the copyright owner's consent.

The concept of fair use is found in UnitedStates Copyright Act under Section107 (30.Areas where fair use has been recog-nized by means oflitigation, legislation, andactual practice are permissible include par-ody, educational uses, library uses, and com-puter programs. This paper describes theseareas in detail in respect of fair use.

Trademark strategies online: implica-tions for intellectual property protec-tion, Kopp S Wand Suter T A, Journal ofPublic Policy & Marketing, 19(1) 2000,119-l3It.

The growth and increasingly mainstreamappeal of various aspects of the Internetcould have a lasting effect on a firm's mar-keting mix. The authors address one of theexternal environmental factors that market-ing and brand managers, as well as publicpolicymakers, should continually monitor asthe online community further develops:trademark law. As managers attempt to lev-erage the value of the trademarked brand,the authors examine the impact of the cur-rent state of technology and the law to un-derstand the reach of current legalinterpretations and the implications for pre-sent and future trademark strategy online.

Internet domain disputes underICANN's uniform dispute resolutionpolicy, Tagoe Cynthia-Claire(hrtp.r'Zwww.tilj.corn/content /intellectualproperty.htrn) .

This article discusses how mandatory arbi-tration under ICANN's Uniform DisputeResolution Policy (UDRP) is functioning toresolve Internet domain name disputes, par-ticularly those involving domain name bro-kers. By examining several of the earlydecisions under the UDRP, it appears thatthe UDRP dispute-resolution providers arefollowing the policy closely and with a few

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rare exceptions have made consistent deci-sions to date. The outcome of most casesturns on the two factors listed in UD RP Para.4 (a) (ii) & (iii): (i) the ability of the complain-ant to show that the respondent has norights or legitimate interests in the domainname, and (ii) that the respondent hasshown bad faith in registering and using thedomain name. For domain name disputesinvolving domain name brokers, the princi-pal deciding factors are usually the nature ofthe domain name and the strength of thetrade or service mark held by the complain-ant.

Law combats 'cybersquatting' of do-main names, Polak Vivian L and MillerPeggy A (http://www.tiIj.com/content/in-tellectualproperty.htm)

+Data provided by NISTADS library.

At the end of 1999, President Clinton signedinto law the Anticybersquatting ConsumerProtection Act. This law gives trademarkowners a specific remedy to combat "cy-bersquatting," the bad faith misappropria-tion of a trademark as a domain name on theInternet.

Most businesses obtain federal trademarkregistrations to protect their exclusive rightsin their trademarks and to prevent othersfrom using their marks for commercial pur-poses or in ways that may reflect unfavorablyupon them. With the explosion of Internetactivity, many businesses wish to also regis-ter their trademarks as Internet domainnames for two reasons: (1) to use a recogniz-able trademark as a domain name, and (2)to prevent competitors or ill-wishers fromtrading off their known marks.