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Northwestern Journal of Technology and Intellectual Property


back on the scope of patent subject matter in Prometheus, while according Congress great latitude in extending copyright protection in Golan. Prometheus was one of a number of cases in which the concept of functionality cut across the various areas of intellectual property. Prometheus cut back on patents on innovations that were not sufficiently functional, because they effectively claimed a law of nature. The Federal Circuit, in Myriad Genetics, by contrast, held isolated genes patentable (and the Supreme Court has decided to hear that case). The strongest rationale may be that isolated genes play different functions than their counterpart in nature. CLS Bank International held a computer-implemented invention patentable because its abstractness was not “manifestly evident”: a presumption of functionality that the court soon decided to revisit en banc. Design patents have become more prominent, giving protection to ornamental aspects of functional products. By contrast, in copyright, the copyright in the code that implements the programming language Java was held not to extend to the code’s functional interfaces with other software, such as the Android operating system. Courts also recognize that software can vary in its mix of functionality and creative expression. Video games were compared to dramatic works and received a higher level of protection than more utilitarian software. In trademark, the distinction between functional aspects and symbolic ones arose in litigation involving such diverse stuff as traction hoists, keyword searching, red-soled shoes and orange feeding tubes. Courts also looked at the related issues of what constituted use of a trademark, and what uses are constitutionally protected. Several cases explored the boundaries of trade secret protection. Courts read two federal statutes, the Computer Fraud and Abuse Act and the National Stolen Property Act, to provide less protection for trade secrets than earlier cases have, possibly setting the issue for Supreme Court review. Nondisclosure agreements were likewise held to provide less protection for claimed trade secrets than some precedent would suggest. The potential information covered by trade secrets, by contrast, was held broad enough to cover information not used by a business and public information that had been compiled and widely distributed. Courts also explored the requirement of use for liability, requiring a substantial showing of use, beyond access.

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Creative Commons Attribution-NonCommercial 4.0 International License
This work is licensed under a Creative Commons Attribution-NonCommercial 4.0 International License



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