Title: What's in, and What's Out: How IP's Boundary Rules Shape Innovation
Abstract: TABLE OF CONTENTS I. INTRODUCTION 491 II. THE DIVIDED NATURE OF OUR IP SYSTEM 497 A. Utility Patent Doctrine and Technological Utility 500 B. Inconsistency in Practice 508 III. UTILITY PATENT'S DOMAIN IN CHANNELING DOCTRINES 516 A. Challenges in Design Patent 516 B. Trade Dress Functionality 523 C. Copyright's Exclusion of Ideas, Systems, and Useful Things 530 1. The Idea-Expression Distinction 531 2. The Useful Articles Doctrine 535 IV. CONSEQUENCES 540 A. Internally Incoherent Doctrine 540 B. Normative Choices About Competition and Innovation 542 I. INTRODUCTION Ours is a divided system of intellectual property. Rather than relying on a single set of rules to protect all forms of intangible creation, intellectual property (IP) law sorts creative things into a variety of different regimes--utility patent, design patent, copyright, and trademark--each with different rules regarding eligibility, infringement, and defenses. Because we have a divided system, every area of intellectual property law must wrestle with a fundamental series of questions regarding what's in and what's out. Out of the entire universe of potentially protectable things, what will utility patent, design patent, copyright, and/or trademark law protect? More specifically, what are the boundaries between each of the legal regimes that together make up the law of intellectual property? Why is a poem copyrightable but not patentable? Why is a mousetrap patentable but not copyrightable? This Article is about a particular aspect of this broad boundary issue, namely the boundaries of utility patent law. What sorts of things are sorted into the utility patent system rather than into the copyright, trademark, or design patent systems? That question matters for patent law, obviously, as some of the current debates about patentable subject matter attest. But the delineation problem of patent law's boundaries spills over into a much bigger set of questions about the structure of the IP system because copyright, trademark, and design patent all contain doctrines that are designed, at least in significant part, to exclude useful or matter on the basis that those things belong to utility patent law. This is a foundational point; every other area of IP understands its own domain to some extent in negative relation to utility patent. Trademark law excludes functional product features even when those features indicate the source of products and services. It does so because functional features are the province of utility patent and therefore do not belong to trademark law even if they do indicate source. (1) Likewise, copyright (inconsistently) excludes systems, processes, and so-called of operation, not because these things lack originality, but because they belong to utility patent. (2) Design patent (nominally) excludes functional designs not because they are not novel or nonobvious or ornamental, but because they perform a function and therefore belong to utility patent instead. (3) To be clear, none of these doctrines are premised on the idea that all excluded subject matter must be protected by utility patent. Trademark law, for example, does not exclude functional features on the expectation that they inevitably will be protected by utility patents; (4) nor does copyright exclude methods of operation in the expectation that those methods will be patentable in all cases. (5) Instead, each area of IP excludes certain subject matter on the basis that it is of the type for which utility patent has the exclusive right to make policy judgments about protection. …
Publication Year: 2017
Publication Date: 2017-03-22
Language: en
Type: article
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Cited By Count: 2
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