Improving Intellectual Property: A Global Project

Undertaking the global project of improving intellectual property demands a critical and dynamic evaluation of its parameters and impacts. This innovative book considers what it means to improve intellectual property globally, exploring various aspects and perspectives of the international intellectual property debate and contemplating the possibilities for reform. Building upon the seminal contributions of Rochelle Dreyfuss, an international team of eminent intellectual property scholars address some of the most pressing questions surrounding the improvement of intellectual property law’s role in promoting innovation. The book explores intellectual property’s shifting boundaries and balance; its increasing relation to other global public goods such as public health; its re-configuration of traditional categories and concepts; its contradictory and incomplete implementation in international law; and its changing institutions. While diverse in subject matter, the individual contributions share the common premise that intellectual property must continually re-assess its foundational assumptions, doctrines, policies, and rationales against evolving political economies, social demands, and technologies. Thought-provoking and accessible, Improving Intellectual Property will prove an invaluable resource for academics, researchers, and students of international intellectual property law. Its exploration of how intellectual property law might promote innovation in conjunction with national, regional, and global policy goals will also be of interest to practitioners and policymakers.

Table of Contents:
Contents: Preface xiv Rochelle Dreyfuss: Teacher, Builder, Scholar, Friend xv Harry First Acknowledgements xix List of common citations xx List of common abbreviations xxi 1 Introduction 1 Graeme Dinwoodie and Susy Frankel PART I ADDRESSING BOUNDARIES AND IMBALANCE 2 Prioritizing intellectual property’s freedom to operate 7 Margaret Chon 3 Are negative spaces likely to be fragile? 18 Christopher Jon Sprigman 4 The Marrakesh Treaty: Using the tools of intellectual property law to advance human rights 28 Laurence R. Helfer PART II PUBLIC HEALTH, PANDEMICS AND CRISES 5 Winning and losing pairings in access to medicines: A practical guide 39 Peter F. Drahos 6 COVID crisis underscores IP imbalance 50 Cynthia M. Ho 7 Using compulsory licences as a governance tool: The need for greater effectiveness and policy coherence 61 Duncan Matthews, Esther van Zimmeren and Timo Minssen 8 Food security, food crisis and boundaries to intellectual property 75 Geertrui Van Overwalle PART III PATENT CHALLENGES 9 The case for a liability rule to stimulate investment in sub-patentable innovation 88 Jerome H. Reichman and Ana Santos Rutschman 10 How do we protect biomedical research in the evolving intellectual property environment? 95 Dianne Nicol and Jane Nielsen 11 The validity of patent royalties after patent expiration: Brulotte/Kimble from the viewpoint of Japanese private international law 106 Toshiyuki Kono 12 ‘Tool Time’: The continuing relevance of compulsory licensing as a patent policy tool 116 Margo A. Bagley 13 US patent reform 2.0: Simplifying first-inventor-to-file novelty 126 Toshiko Takenaka PART IV DISPUTE SETTLEMENT AND COURT SPECIALIZATION 14 The Federal Circuit’s reach as a specialized court beyond patent law 138 Jeanne C. Fromer 15 Specialization everywhere: Increasing adjudicator specialization in the patent litigation ecosystem 149 Sarah R. Wasserman Rajec and Melissa F. Wasserman 16 The Unified Patent Court: A new patent troll haven 159 Thomas Riis 17 Transnational judicial competition in intellectual property law 170 Marketa Trimble 18 Navigating public, private, national, and global: International commercial arbitration of patent disputes 180 Barbara Lauriat PART V AUTHORS AND INVENTORS 19 Authors’ copyright (?) 191 Jane C. Ginsburg 20 Authors’ moral rights in the Berne Convention 204 Gustavo Ghidini and Laura Moscati 21 AI machines as inventors: The role of human agency in patent law 214 Brad Sherman 22 Artificial inventors 224 Daniel Gervais PART VI EXPRESSIVE GENERICITY AND FREEDOMS 23 Patent exhaustion as a canon of expressive freedom 235 Dan L. Burk 24 Expressive genericity revisited: What EU policymakers can learn from Rochelle Dreyfuss 246 Martin Senftleben 25 The sensibility of ‘expressive genericity’ and the rise (and potential fall) of Rogers v. Grimaldi in American trademark law 258 Barton Beebe 26 Trademarks as language in the 21st century 266 David Tan 27 Do trademarks assist global fabless manufacturing? 277 Stephen Petrie, Trevor Kollmann, Russell Thomson, Alexandru Codoreanu and Elizabeth Webster PART VII INFORMATION/DATA AND CONFIDENTIALITY/PUBLICITY 28 Information law pioneer 290 Sharon K. Sandeen 29 The right of publicity as civic communication 301 Megan Richardson 30 Governing valuable confidential data in the EU: Transparency as fairness 310 Nari Lee 31 FAIR, FRAND and open – the institutionalization of research data sharing under the EU data strategy 320 Mireille van Eechoud 32 A shifting paradigm of regulatory data transparency in Europe: How to reconcile the irreconcilable 331 Żaneta Zemła-Pacud PART VIII NON-DISCRIMINATION ISSUES 33 Remuneration rights and national treatment 342 Bernt Hugenholtz 34 The limits of national treatment 354 Annette Kur 35 Discriminatory non-discrimination 364 Susy Frankel 36 Non-discrimination as to the field of commerce as a norm of international trade mark law 374 Lionel Bently PART IX MAKING INTERNATIONAL IP AND INVESTMENT LAW 37 Proceduralism is not fetishism: International intellectual property lawmaking and global administrative law 386 Orit Fischman Afori 38 Early findings on the economic impacts of intellectual property-related trade agreements 397 Keith E. Maskus and William Ridley 39 The changing chemistry between intellectual property and investment law 406 Peter K. Yu 40 Investment treaties and public health: Time to rethink the strategy? 417 Dhanay Cadillo Chandler 41 Excluding intellectual property from bilateral trade and investment agreements: A lesson from the global health crisis 427 Christophe Geiger PART X INSTITUTIONS AND POLITICAL DRIVERS 42 Justifying the public law of patents 439 Kali Murray 43 WIPO alert – a reason to be alerted? 450 Alexander Peukert 44 A scholarly look at international IP – idealistic and pragmatic 462 Justin Hughes and Ruth L. Okediji 45 IP in an era of new mercantilism 475 Daniel Benoliel 46 Toward pluralism in U.S. intellectual property 486 Michael J. Burstein 47 Does IP improve the world? 494 Henning Grosse Ruse-Khan Index

About the Author :
Edited by Susy Frankel, FRSNZ, Professor of Law and Chair in Intellectual Property and International Trade, Te Herenga Waka, Victoria University of Wellington, New Zealand, Margaret Chon, Donald and Lynda Horowitz Endowed Chair for the Pursuit of Justice, Seattle University School of Law, Graeme B. Dinwoodie, Global Professor of Intellectual Property Law and Distinguished University Professor, IIT Chicago-Kent College of Law, Barbara Lauriat, School of Law, Texas Tech University, US and Jens Schovsbo, Professor of Law, University of Copenhagen, Denmark

Review :
‘My advice to beginners in patent and innovation law scholarship, whether students or junior faculty, has always been the same: start by reading Rochelle Dreyfuss’s work on the subject. Improving Intellectual Property is a wide-ranging collection of insightful writing inspired by Rochelle’s work that vindicates the soundness of that advice. It also inspires a second piece of advice: Next, read this volume!’ ‘There is much insight, much to provoke, some to annoy, some to disagree with, and lots to make you think in this book. But not much to bore you. It is an exceptional tribute by some heavyweight names in the IP World to the great scholar and lawyer, Rochelle Dreyfuss.’