Newsletter–January 31, 2019

by Shubha Ghosh, Crandall Melvin Professor of Law and Director, Technology Commercialization Curricular Program and SIPLI

It has been a busy three months, and I finally have a chance to catch up on what was promised to be monthly newsletters. The last newsletter, sent in October, covered activities for the months of September and October, including conference travel to Beijing and Tokyo, as well as research and teaching activities in the US. November brought the National Association of College and University Attorneys (NACUA) meeting in Washington, D.C., with a deep dive into intellectual property issues facing universities and colleges, including changes to the Bayh-Dole Act, regulatory issues surrounding research on marijuana, and the ongoing debate over university intellectual property litigation. At NACUA, I spoke on a panel focusing on Patent Litigation Financing Entities and their benefits and risks for universities. I concluded that there were more risks than benefits, given the negative publicity often associated with patent litigation and the merits of patent litigation brought by universities. Patent Litigation Financing Entities take a large share of the proceeds from litigation, and often universities are in a better position to manage patent disputes without entering into protracted court battles. Although there may be some financial benefits in Financing Entities supporting universities when their patents are being challenged in IPR proceedings, universities are still better off in managing administrative proceedings on their own. For those interested in the topic, a recording of the panel is available on the NACUA website for those who are members.

In December, I was invited to participate on a panel at the World Trade Organization dedicated to my recent book on exhaustion of IIP rights. Further information about the book can be found here and a link to a recording of the panel can be viewed here. The two hour panel engaged professionals from the WTO and WIPO and covered a range of topics: intellectual property rights and international trade, contractual restrictions on use and sale of intellectual property, price discrimination business strategies, the pricing of pharmaceuticals, geoblocking of digital contact, and the relationship among intellectual property, contract, and property more broadly. The range of topics reflect the breadth and depth of the book, which includes an explanation of the exhaustion doctrine, its relationship to international trade, a detailed discussion of how different countries have implemented the exhaustion doctrine, and how intellectual property owners manages the exhaustion doctrine through contract.

The discussion of the book continued at the annual meeting of the Association of American Law Schools (AALS), held in January in New Orleans. The two hour panel at the annual meeting centered on contractual restraints on use and sale placed on products containing intellectual property (digital books, software, pharmaceuticals). While the Supreme Court takes a strong position against such contractual restraints in two recent decisions (Lexmark and Kirstaeng), in practice restraints are used quite frequently to protect the quality of the product and to limit reuse. Courts need to confront when such restraints are reasonable and how contractual remedies need to be designed to balance the interests of the intellectual property owner and purchasers. Legislatures also need to be proactive.

Research and teaching activities also filled the last few months and abound in the next few. An invited presentation at the University of Tasmania in February will provide an opportunity to engage with practitioners and scholars in Australia on issues involving creativity and intellectual property policy. In April, an invited presentation at NYU Law School will address question of custom fit in the fashion industry and the controversial practice of patenting body types and methods for personalizing tailoring. This research shows that “personalized fashion” offers as many potential traps as “personalized medicine,” another topic I have written on. The presentation will address broader questions of standards and standardization in the clothing industry. Other professional travel includes a trip to Poland in May to visit Syracuse’s partner university and travel to Hamburg to work with colleagues at Bucerius University.

Writing projects over the next few months include a book chapter on patenting technologies to aid the visually impaired (for Oxford), updates to the treatise Understanding Intellectual Property (for Lexis/Nexis), and a two hundred or so page treatise on Law and Entrepreneurship (for Elgar). Updates will follow as well as interesting developments in teaching and student writing projects. Please look out for the next newsletter, which will be more timely!

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