By David L. McCombsPhillip B. Philbin, and Hamilton C. Simpson

Abstract
This article surveys significant developments in intellectual property (IP) law during the past year. While we focus on precedential case law in the Fifth Circuit, we also review IP law developments that are likely to be influential in the evolution of Texas IP jurisprudence. Thus, the cases cited focus on the decisions of the U.S. Supreme Court and the U.S. Courts of Appeals for the Fifth and Federal Circuits. “For developments in trademark and copyright law, the Fifth Circuit’s authority is binding,” but other circuits, such as the Second and the Ninth, are considered highly persuasive. “Because all cases concerning a substantive patent law-issue are appealed to the U.S. Court of Appeals for the Federal Circuit,” decisions from that court during the Survey period are included in this article.

The U.S. Supreme Court was quite active in the intellectual property field since the last Survey period ended, deciding seven cases involving IP issues and granting certiorari on four others. In patents, the Court showed particular interest in what qualifies as patentable subject matter. The Court considered whether certain medical diagnostic methods are patentable, and it is prepared to decide whether isolated human genes may receive patent protection. Other issues considered by the Court include the level of knowledge required for induced infringement, the standard applicable to a district court’s review of proceedings at the U.S. Patent and Trademark Office (PTO), and the standard of proof required to support an invalidity defense. The Federal Circuit also made important developments in its patent law jurisprudence, but perhaps more significant than any of these court decisions is the enactment of the Leahy-Smith America Invents Act, which makes substantial changes to the way patents are prosecuted, granted, and subsequently reviewed.

In copyright, the U.S. Supreme Court decided whether Congress may grant copyright protection to works previously in the public domain, and it is set to decide whether copyright’s first sale doctrine applies to imported, foreign-made goods. In trademark, the Court decided whether a trademark registrant can foreclose an invalidity challenge by promising not to sue the challenger. Finally, the Second Circuit issued important copyright and trademark decisions relating to the safe harbor provisions under the Digital Millennium Copyright Act (DMCA) and whether a single color may receive trademark protection in the fashion industry.

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Recommended Citation
David L. McCombs, et al., Intellectual Property Law, 66 SMU L. Rev. 975 (2013)