The Yale Law Journal

Intellectual Property


The Antibody Patent Paradox

Mark A. Lemley & Jacob S. Sherkow

Shifts in patent law’s enablement and written description requirements make it impractical for patentees of antibody technologies to disclose and claim their inventions. We describe this as a doctrinal paradox and offer a solution that gives patentees the power to claim antibodies without giving the…


Rulemaking § 101

Brendan Costello

This Note chronicles the Patent Office’s use of guidance to reduce the judicially created uncertainty that surrounds patentable subject matter. It argues that these guidance documents closely resemble legislative rulemaking and thus push the boundaries of the Office’s current authority.


The Law of Informational Capitalism

Amy Kapczynski

Informational capitalism brings new dangers of surveillance and manipulation—but also of accelerating monopoly, inequality, and democratic disempowerment. Examining two important new books on the topic, this Review maps the law and political economy of informational capitalism, a domain of rising pr…


Innovation Policy Pluralism

Daniel J. Hemel & Lisa Larrimore Ouellette

Intellectual property is not a monolith. It rewards innovators with temporary exclusive rights to their creations, and it conditions consumers’ access to such goods through proprietary pricing. Using this insight, this Article develops a more accurate framework for analyzing the innovation policy la…


When Patents are Sovereigns: The Competitive Harms of Leasing Tribal Immunity

Cecilia (Yixi) Cheng & Theodore T. Lee

The Hatch-Waxman Act and the AIA balance exclusive rights of pharmaceutical patent holders with entry of generic competitors. Allergan’s recent patent transfer to the Saint Regis Mohawk Tribe threatens this balance. This Essay proposes antitrust suits to sidestep sovereign immunity and prevent compa…


Vaccine Licensure in the Public Interest: Lessons from the Development of the U.S. Army Zika Vaccine

Ana Santos Rutschman

This Essay analyzes the recent attempted exclusive licensing deal for a Zika vaccine, which would have hampered the drug’s affordability and availability. Revising the Patent Act to increase transparency and accountability in the licensing process would ultimately result in more affordable vaccines …


What’s Wrong with Intentionalism? Transformative Use, Copyright Law, and Authorship

Ben Picozzi

Copyright law’s experiment with transformative use is failing. So argue a growing number of scholars who contend that the standard conflicts with the goals of art. In their view, transformative use goes astray by conflating the accused work’s meaning with the defendan…


A Trademark Defense of the Disparagement Bar

Michael Grynberg

The Supreme Court will soon hear argument over whetherCongress may forbid registering trademarks that consist of “matter which may disparage or falsely suggest aconnection with persons, living or dead, institutions, beliefs, or nationalsymbols, or bring them into contempt, or disrepute.” The dispara…


Reimagining Finality in Parallel Patent Proceedings

Ben Picozzi

Parties may challenge the validity of issued patents in federal courts and before the Patent and Trademark Office (PTO) and its administrative tribunal, the Patent Trial and Appeal Board (PTAB). Recently, the Court of Appeals for the Federal Circuit, which has exclusive appellate jurisdict…


Toward an Efficient Licensing and Rate-Setting Regime: Reconstructing § 114(i) of the Copyright Act

Joseph Pomianowski

Why is Sony/ATV Music Publishing, the world’s largest music publisher,1 unhappy about its massive hit single “Happy”?2 According to CEO and Chairman Martin Bandier, the answer comes down to the math behind digital streaming revenues. In the first three months of 2014, the Internet ra…


The First Patent Litigation Explosion

Christopher Beauchamp

The twenty-first century “patent litigation explosion” is not unprecedented. In fact, the nineteenth century saw an even bigger surge of patent cases. During that era, the most prolific patent enforcers brought hundreds or even thousands of suits, dwarfing the efforts of toda…


Claim Construction or Statutory Construction?: A Response to Chiang & Solum

Camilla A. Hrdy & Ben V. Picozzi

Introduction “Claim construction” is the process by which a court determines the meaning of a patent’s claims—a process that in turn determines the scope of the covered invention. This process is extremely important because a court must determine what the patent covers before it ca…


Garcia v. Google and a "Related Rights" Alternative to Copyright in Acting Performances

Jacob M. Victor

A recent Ninth Circuit case, Garcia v. Google, held that an actor can maintain a copyright interest in her acting performance in a film—independent of the copyright held by the filmmaker—and that this copyright can sometimes be sufficiently powerful to allow the actor to prevent public di…


The Unconvincing Case for Resale Royalties

Guy A. Rub

Introduction Here we go again. In late February 2014 a group of congresspersons introduced a bill—The American Royalties Too Act of 2014 (known for its catchy abbreviation: the ART Act),1 which, if passed, will grant visual artists2 a right to collect royalties when their artworks are r…


The Continuum of Excludability and the Limits of Patents

Amy Kapczynski & Talha Syed

122 Yale L.J. 1900 (2013).

In IP scholarship, patents are commonly understood as more efficient than other approaches to innovation policy. Their primary ostensible advantage is allocative: as a form of property rights, patents act as a conduit between market signals and potential innovators, ostensi…


The Artist as Brand: Toward a Trademark Conception of Moral Rights

Xiyin Tang

122 Yale L.J. 218 (2012).

The Visual Artists Rights Act of 1990 (VARA) controversially recognized artists’ “moral rights” by protecting their work from alteration or destruction and by preventing the use of an artist’s name on a work he did not create. While moral rights are frequently criticized as …


Inflation Indicators

Jonathan Masur

**This is the sur-reply to a series of responses to Jonathan Masur's recent article, Patent Inflation, which appeared in the December issue of YLJ. For Professor Arti Rai's response, see here. For Lisa Ouellette's response, see here.**

In Patent Inflation, I argued that the asymmetry in Federal Cir…


What Are the Sources of Patent Inflation? An Analysis of Federal Circuit Patentability Rulings

Lisa Larrimore Ouellette

**This is the second in a series of responses to Jonathan Masur's recent article, Patent Inflation, which appeared in the December issue of YLJ. For Professor Arti Rai's response, see here. For Professor Masur's sur-reply, see here.**

Professor Jonathan Masur’s recent article,
Patent Inflation, argue…


Who’s Afraid of the Federal Circuit?

Arti K. Rai

**This is the first in a series of responses to Jonathan Masur's recent article, Patent Inflation, which appeared in the December issue of YLJ. For Lisa Ouellette's response, see here. For Professor Masur's sur-reply, see here.**

Jonathan Masur’s argument regarding “Patent Inflation” rests on the a…


Patent Inflation

Jonathan Masur

121 Yale L.J. 470 (2011).

For more than two decades, the Patent and Trademark Office (PTO) and the Federal Circuit have exercised nearly complete institutional control over the patent system. Yet in recent years their stewardship has been widely criticized, largely on the basis of two particular fail…


The Inducement Standard of Patentability

Michael Abramowicz & John F. Duffy

120 Yale L.J. 1590 (2011). 

In Graham v. John Deere Co., the Supreme Court explained that patent law’s nonobviousness doctrine is meant to restrict the award of patents to only “those inventions which would not be disclosed or devised but for the inducement of a patent.” This Article argues that th…


Patent Law and the Two Cultures

Peter Lee

120 Yale L.J. 2 (2010). 

A half-century ago, author and physicist C.P. Snow warned of a “gulf of mutual incomprehension” between the liberal arts and sciences. Snow’s “Two Cultures” thesis is particularly relevant to patent law, a realm where law and science intersect. Drawing on Snow’s framework, …


Addressing the Green Patent Global Deadlock Through Bayh-Dole Reform

Lisa Larrimore Ouellette

119 Yale L.J. 1727 (2010). 


A Brief Defense of the Written Description Requirement

Michael Risch

The Federal Circuit’s December 7, 2009 hearing of oral argument in Ariad v. Lilly has generated significant interest among those who follow patent policy. An en banc decision is expected within the next few months. The dispute arises from the interpretation of 35 U.S.C. § 112, which states in …


Property as Process: How Innovation Markets Select Innovation Regimes

Jonathan M. Barnett

119 Yale L.J. 384 (2009). 

It is commonly asserted that innovation markets suffer from excessive intellectual property protections, which in turn stifle output. But empirical inquiries can neither confirm nor deny this assertion. Under the agnostic assumption that we cannot assess directly whether …


Debunking Blackstonian Copyright

Shyamkrishna Balganesh

118 Yale L.J. 1126 (2009).


Copyright’s Paradox

NEW YORK, NY: OXFORD UNIVERSITY PRESS, 2008, PP.ix, 274. $34.95.



The Ideology of Authorship Revisited: Authors, Markets, and Liberal Values in Early American Copyright

Oren Bracha

118 Yale L.J. 186 (2008).

The concept of the author is deemed to be central to copyright law. An important strand of copyright scholarship explores how the development of modern copyright law was intertwined with the rise of a new ideology of authorship as an individualist act of creation ex nihilo…


Linking Ideas to Outcomes: A Response

Amy Kapczynski

It is a distinct pleasure to have the chance to respond to the insightful commentaries of Peter Drahos, Ruth Okediji, and Tomiko Brown-Nagin. I find much to agree with in each, but I will focus on a few areas of divergence in the hope of clarifying our differences. Drahos’s work on the role of id…


The Access to Knowledge Mobilization and the New Politics of Intellectual Property

Amy Kapczynski

117 Yale L.J. 804 (2008).

Intellectual property law was once an arcane subject. Today it is at the center of some of the most highly charged political contests of our time. In recent years, college students, subsistence farmers, AIDS activists, genomic scientists, and free-software programmers have…


Profits as Commercial Success

Andrew Blair-Stanek

117 Yale L.J. 642 (2008).

Courts often use the extent of a patented invention’s commercial success as crucial nontechnical proof of the patent’s validity. Relying on misguided economic reasoning, most courts use revenue as the primary yardstick for commercial success. This Note argues that courts i…


Intellectual Property as Property: Delineating Entitlements in Information

Henry E. Smith

This Article proposes that intellectual property’s close relationship to property stems from the role that information costs play in the delineation and enforcement of exclusion rights. As theorists have emphasized, the nonrivalness of information causes exclusive rights to be more costly in terms o…


Wealth Without Markets?

Lior Jacob Strahilevitz

116 Yale L.J. 1472 (2007) 

The Wealth of Networks: How Social Production Transforms Markets and Freedom




Risk Aversion and Rights Accretion in Intellectual Property Law

James Gibson

116 Yale L.J. 882 (2007)

Intellectual property’s road to hell is paved with good intentions. Because liability is difficult to predict and the consequences of infringement are dire, risk-averse intellectual property users often seek a license when none is needed. Yet because the existence (vel non)…


Copy This Essay: How Fair Use Doctrine Harms Free Speech and How Copying Serves It

Rebecca Tushnet

114 Yale L.J. 535 (2004)

Recent cases and scholarship have debated whether copyright law is consistent with the First Amendment. Much of the discussion has centered on copyright law's ability to suppress transformative, creative reuses of copyrighted works and on copyright's fair use doctrine as a m…


Patents, Paradigm Shifts, and Progress in Biomedical Science

Peter Lee

114 Yale L.J. 661 (2004)

This Note applies the concept of paradigm shifts from the history and philosophy of science to describe how patents on biomedical research tools--inputs to basic research--can help advance scientific theory. Patents on research tools frustrate scientific norms of sharing and …


Sharing Nicely: On Shareable Goods and the Emergence of Sharing as a Modality of Economic Production

Yochai Benkler

114 Yale L.J. 273 (2004)

This Essay offers a framework to explain large-scale effective practices of sharing private, excludable goods. It starts with case studies of carpooling and distributed computing as motivating problems. It then suggests a definition for shareable goods as goods that are "lump…


Renting Space on the Shoulders of Giants: Madey and the Future of the Experimental Use Doctrine

Tom Saunders

113 Yale L.J. 261 (2003)

The experimental use doctrine in patent law protects alleged infringers who use patented inventions solely for experimental purposes, such as testing whether a device functions as claimed or re-creating a process to observe its effects from a scientific perspective. The judi…


Eldred and Lochner: Copyright Term Extensionand Intellectual Property as Constitutional Property

Paul M. Schwartz & William Michael Treanor

112 Yale L.J. 2331 (2003)

As intellectual property has become increasingly important to the national economy, a consensus has emerged among academics that courts should scrutinize congressional legislation closely under the Constitution's Copyright Clause. This Essay has challenged the academic conse…


Limiting Locke: A Natural Law Justification for the Fair Use Doctrine

Benjamin G. Damstedt

112 Yale L.J. 1179 (2003)

Focusing a discussion of intellectual property on a 300-year-old text may seem unusual, but John Locke's Two Treatises of Government has an uncommon place in American intellectual property theory. Historically, Lockean natural rights informed the Framers' understanding of i…


The Freedom of Imagination: Copyright's Constitutionality

Jed Rubenfeld

112 Yale L.J. 1 (2002)

In some parts of the world, you can go to jail for reciting a poem in public without permission from state-licensed authorities. Where is this true? One place is the United States of America.

Copyright law is a kind of giant First Amendment duty-free zone. It flouts basic fr…


Inventing a Nonexclusive Patent System

John S. Leibovitz

111 Yale L.J. 2251 (2002)


The Law and Economics of Reverse Engineering

Pamela Samuelson & Suzanne Scotchmer

111 Yale L.J. 1575 (2002)

Reverse engineering has a long history as an accepted practice. What it means, broadly speaking, is the process of extracting know-how or knowledge from a human-made artifact. Lawyers and economists have endorsed reverse engineering as an appropriate way to obtain such info…


The Copyright Law

Robert Kry

111 Yale L.J. 761 (2001)