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A Patent DMCA

Gerard Magliocca

Gerard N. Magliocca is the Samuel R. Rosen Professor at the Indiana University Robert H. McKinney School of Law. Professor Magliocca is the author of three books and over twenty articles on constitutional law and intellectual property. He received his undergraduate degree from Stanford, his law degree from Yale, and joined the faculty after two years as an attorney at Covington and Burling and one year as a law clerk for Judge Guido Calabresi on the United States Court of Appeals for the Second Circuit. Professor Magliocca has received the Best New Professor Award and the Black Cane (Most Outstanding Professor) from the student body, and in 2008 held the Fulbright-Dow Distinguished Research Chair of the Roosevelt Study Center in Middelburg, The Netherlands. He was elected to the American Law Institute (ALI) in 2013.

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5 Responses

  1. Interesting post and proposal, but I’m not sold on the premise. Yes, software is not a component under 271(f), but 271(c) is broader than that, and software companies are routinely held liable for selling software. Indeed, even in the case that outlawed components for imports, Microsoft was held liable for domestic sales.

    But let’s say that wasn’t true. I don’t think that component in the 271(f) sense (as in combining components to create an invention) is the same as providing instructions for manufacture – which is more of a material aid then a component. The real question is whether we would hold people liable for posting instructions about how to make something that weren’t carried out by the computer. The answer may be no – and your argument would apply.

    But I’m not sure the way to look at it is under the component rules. It’s more like a loosening of the inducement standard. In that sense, there is the DMCA for patents – once you get notice that your instructions (electronic or not) are used to infringe a patent, then inducement kicks in.

  2. Gerard Magliocca says:

    Michael,

    This is an interesting point that we will have to consider. One thought is that a DMPA (to coin an acronym) would remove any uncertainty surrounding the issue and avoid years of litigation.

  3. PrometheeFeu says:

    That seems weird. As I understand it, in order to get a patent, you must give to the patent office (which then makes it available to the public) enough information so that the thing you are patenting could be reproduced. Under those circumstances, it would be, (correct me if I am wrong) perfectly acceptable for me to take a patent and put together a set of documents (blueprints, bills of materials, etc) which would instruct a factory to produce the patented objects. (perhaps in anticipation of the patent’s expiration or perhaps as an exercise) If that is the case, why would a set of instructions aimed at a 3d-printer be any different?

    Another way to look at it is this: Patentees must disclose enough information such that somebody skilled in the art can apply the patent. Surely, it would be allowed for somebody to take this disclosure and “convert” it such that even somebody unskilled in the art could apply the patent. (basically, annotate and explain it or even re-write the whole thing) How is that any different from “converting” the patent into a format that can be consumed by 3d printers.

  4. PromeetheFeu – In general, you are not allowed to “prepare” to infringe until there is expiration. That’s why we have special laws that allow generic drug manufacturers to get a head start.

    That said, you are right to point out the oddity, and it is one that was pointed out in the software export case, and one I use with my students. If I send the parts with a copy of the patent, am I inducing infringement?

    Here, though, the answer is easier, because we assume that not only are we preparing the instructions, we are distributing them with the intent that they be carried out. That clears any “internal preparation” exception we could think of.

  5. PrometheeFeu says:

    Michael Risch,

    Thanks. I was not aware of 273(c).