Recent and Ongoing Activities

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

The year 2019 has been incredibly busy with teaching, scholarship, and service, the three pillars of this job. Blogging has low priority, but I will try to catch up over the next several months. Activities over the past several month include

* collaboration with the Faculty of Law on intellectual property issues pertaining to biotechnology at the University of Tasmania in Hobart, Australia

*presented research on custom fit design, standardization, and measurement at NYU Law School conference on intellectual property law

* finishing an extended book chapter on patented technologies for the visually impaired

* developing projects for students in the IP and Technology Commercialization Law Program on professional ethics, licensing, and FDA approval issues confronting start-ups (a project involving development of a therapeutic app)

* updates to treatise “Understanding Intellectual Property,” to be published in its fifth edition by Carolina Academic Press

* drafting a book manuscript on Law & Entrepreneurship for the Advanced Topics Series published by Edward Elgar

* collaboration with colleague at Hastings Law School and Bucerius Law School on developments in AI in Germany

* presentations on “Exhausting Intellectual Property Rights,” published by Cambridge University Press in 2018.

More news to follow…

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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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Monthly Newsletter for October 2018

by Shubha Ghosh, PhD, JD, Crandall Melvin Professor of Law and Directory Intellectual Property Commercialization and Innovation Law Curricular Program and Syracuse Intellectual Property Law Institute

Last month’s newsletter detailed the many events in the Program and of the Institute and described future activities. October has been another busy month with the promised events coming to fruition.

On October 3, I was glad to host Harven de Shield, JD, PhD (Buffalo 2007), visiting us from Chicago. Dr. de Shield has been actively working as a patent attorney in St Louis and Chicago and is currently counsel for a biotech start-up in Chicago called Vivacelle. Students in Advising the Start-up I benefitted from his visit as I cotaught a class session that went into the details of forming a start-up, including employment agreements, intellectual property protection, and the FDA approval process for medical devices. Dr. de Shield also graciously was interviewed for a webinar discussing his experiences. A recording of the webinar will be posted our YouTube page soon.

The week of October 15 welcomed Professor Rafal Sikorski of Adam Mickiewicz University Faculty of Law and Administration to the College of Law. The University, located in Posnan, Poland, has an exchange program with Syracuse University. Professor Sikorski had a busy week speaking to the Intellectual Inns of Court at Bond, Schoeneck, & King on patent injunctions in Europe and to the Advising the Startup I class on standard setting organizations and FRAND in the cellular industry. Professor Sikorski’s talk about patent injunctions was also the basis for an extensive webinar, which will be posted on our YouTube page soon.

Professor Mark Bartholomew from University at Buffalo Law School visited us on October 17 to participate in a webinar on his research regarding “neuromarks.” At the intersection of neuroscience and trademarks, neuromarks build on recent developments in studies of brain activity in response to external stimuli (such as sensual images of trademarks, both traditional and non-traditional marks, such as smells and touch). Professor Bartholomew sees game-changing implications of neuroscience for trademark prosecution and litigation. His article on neuromarks is forthcoming in the Minnesota Law Review.

October 23 through November 1 brought work travel to China and Japan, where I spoke to intellectual property academics and attorneys at Renmin University in Beijing and Waseda University in Tokyo. Renmin hosted a three day conference on Copyright Law (jointly organized with Victoria University of Wellington, New Zealand, and the Asian Pacific Copyright Association) where I spoke on the intersection of intellectual property law and corporate law in a keynote lecture entitled “Copyright Governance.” As the title suggests, the lecture looked at how copyright affects governance issues over information and knowledge and addressed specifically the ongoing issues confronting copyright licensing organizations (like BMI/ASCAP) and open science. The conference was attended by over fifty intellectual property practitioners and academics from around the world, and the keynote was well received. Although there was no video of the lecture, slides and accompanying materials are available upon request. Waseda University was the forum for a meeting with graduate students and professors presenting and seeking comments on their current works-in-progress in the fields of technology and intellectual property commercialization.

The year ends with several obligations that will be the subject of next month’s newsletter: (1) an invited lecture to the National Association of University and College Attorneys at their annual meeting in Washington, DC, November 13-16; (2) participation in a annual patent law review at Georgetown Law School, November 16; (3) an invited lecture to Queen Mary’s Law School in the first week of December; and (4) a speaking engagement at a panel discussion based on my new book “Exhausting Intellectual Property Rights” (Cambridge, 2018) at the World Trade Organization, Geneva, on December 7. All to be reported on next month.

I welcome your feedback and comments.

Have a good Thanksgiving!

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Sept. 27, 2018

Welcome! This is the first monthly newsletter from Syracuse Intellectual Property Law Institute, a newly launched institute that is part of the Intellectual Property and Innovation Law Curricular Program. Apologies in advance for the length of this message.

As Director of SIPLI and the Curricular Program, I would like to share news about new initiatives in service, research, and teaching from SIPLI and the Program. Thanks to Dean Boise and colleagues for affirming the mission of the Program and SIPLI by approving the revisions to the Academic Handbook at the recent faculty meeting. SIPLI and the Curricular Program continue important traditions at the College of Law and demonstrate the College’s commitments locally, nationally, and internationally.

Welcome to the First Research Assistants for SIPLI and the Curricular Program

Quinn Cartelli, Cody Andrushko, and Christian Batilloro, all members of the Syracuse College of Law Class of 2019, are the inaugural research assistants. Each year SIPLI will hire a number of research assistants through the College of Law to support the various research projects.

Quinn has been working on a project relating to Fourth Estate Public Benefit Corp. v., a case to be heard by the Supreme Court to resolve a circuit split regarding copyright registration. At issue, is whether copyright registration occurs, for the purpose of the procedural requirements to bring a copyright infringement suit, when the registration is filed or when the registration is approved. Quinn is also assisting on a project tracing the impact of the Supreme Court’s 2017 decision Star Athletica v. Varsity Brands, involving copyright protection for fashion and other designs.

Cody and Christian, continuing on work from last year, assist in launching the new Wizards and Prophets blog, more details about which will be provided in next month’s newsletter. They will also help with the updates for the forthcoming Third Edition of “Understanding Intellectual Property,” published by Carolina Press, formerly Lexis-Nexis Publishing. Their support is invaluable in updating legal developments in Trade Secrets and Patents, my two chapters in the volume.

Recent Activities (Spring/Summer 2018 to Present)

SIPLI and the newly named Curricular Program had their informal launch in April, 2018, with the Workshop on Legal and Technological Responses to Climate Change. View the videos of the half-day event at our YouTube channel. This workshop will be an annual tradition, initiated with the “Forgotten Intellectual Property Cases” Law Review Symposium in April, 2017, and continuing with a planned workshop on Data, Algorithms, and Commercialization, scheduled for April, 2019. Attendance at April’s event was good, and I encourage everyone to participate at next April’s symposium. As has been traditionally true at the College of Law, events are designed as welcoming to all participants through engaging programming, as opposed to the use of sticks. Please also look out for SIPLI supported speakers in the Spring in conjunction with the Faculty Workshop Series.

Summer was an active and busy time for SIPLI as its work involved invited conferences and engagement with the University and the university commercialization efforts in Albany. An invited presentation on intellectual property commercialization and traditional knowledge at the annual global AIPPI conference held in Tel Aviv from April 29-May 1 kicked off the Summer. The presentation was attended by leading practitioners in Israel and included a lively discussion of, among other issues, the intellectual property issues relating to the commercialization of legalized marijuana. A visit to start-ups in and around Tel Aviv was a unique pre-conference event as selected attendees learned about new business ventures in three-dimensional printing of labelled containers and the use of cardboard to build low cost bicycles and wheelchairs. More information about these ventures (including photos) are available to interested parties.

Other activities for SIPLI and the Program during the Summer included: (1) an invited presentation on patent and health care at the Annual Health Care Conference held at Georgia State University College of Law; (2) a visit to the University of Technology, Sydney, to share common efforts in developing a commercialization program; (3) an invited talk at the University of West Indies, Barbados on colonial intellectual property law in India; and (4) an invited talk on Fairness, Markets and Intellectual Property at the annual meeting of the Association of Teachers and Researchers in Intellectual Property (ATRIP) at the Hanken School of Economics, Helsinki, Finland. These events were productive opportunities to learn from colleagues throughout the world and to showcase the exciting work happening at the College of Law.

In addition, as Director of SIPLI and the Program, I offered consultation for John Gee, University Relations Manager of ESD-NYSTAR in Albany, on intellectual property licensing practices by universities in upstate New York. I also served as Guest Evaluator for the Invention Accelerator competition held at the College of Engineering in July. Inventions in the contest included portable IV devices, electronic sensing devices for robotic cars, and remote locating devices.

These are just a sample of the activities of SIPLI as the Institute and Program move forward. Updates will be provided on a monthly basis.

Forthcoming Publications

Edits were completed over the Summer for the Fourth Edition of Transactional Intellectual Property, which was released by Carolina Press in September. The first edition of this casebook was published in 2006 by Lexis-Nexis, and it has been steadily adopted by law and business schools that offer courses in intellectual property, technology, and commercialization.

Cambridge University Press will publish Exhausting Intellectual Property Rights: A Comparative Law and Policy Analysis in a few months. Part of the Summer was spent in editing the manuscript that was completed in March. The book is already available on Amazon.

I finished the manuscript of an article for the peer reviewed Science & Policy as part of its symposium issue on developments in technology and law. The manuscript, entitled “Myriad Post-Myriad,” analyzes the Utah based genetics company’s efforts to patent data mining and algorithmic medicine after the Supreme Court invalidated its key patents relating to diagnosing proclivities to breast and uterine cancer. While an ostensible defeat the company, the decision may actually have provided a boost for its new line of research and development, although other legal and policy obstacles continue.

Also completed is “Bayh-Dole beyond patents” for the Research Handbook on Intellectual Property and Technology Transfer, forthcoming from Elgar later next year. Another completed manuscript was on jurisdiction stripping and the Federal Circuit, presented at the “Erie at 80” conference hosted by the Center for Constitutional Law at University of Akron Law School in Sept. 13-14, 2018. The article entitled “Jurisdiction Stripping of the Federal Circuit?” will appear in the Akron Law Review and is part of a larger project on the jurisdiction of the Federal Circuit beyond patent law.

Next year will see the publication of Advanced Introduction to Law and Entrepreneurship and the Research Handbook on Law, Creativity, and Entrepreneurship: Forgotten Intellectual Property Lore, building on the Syracuse Law Review Symposium on Forgotten IP Lore, published last year. Both are under contract with Elgar.

Upcoming Activities

  • October brings a conference invitation to Renmin University, Beijing, to deliver a keynote address on copyright licensing at the Asia Pacific Copyright Association (APCA). The trip will also include visits to Xiamen University and the Institute for Intellectual Property in Tokyo.
  • November brings an invitation to speak at the National Association of College and University Attorneys (NACUA) annual meeting in Washington, D.C., on university patent litigation.
  • December involves invitations to the British Library to pursue research on colonial patent law and to the World Trade Organization in Geneva to present on a panel designed on the forthcoming book from Cambridge.
  • Finally, January brings the AALS conference and participation in a panel for the AALS Intellectual Property Section on resale, restraints on alienability, and intellectual property law.

These are just some of the activities to showcase SIPLI and the Program in the next few months. This week I am an invited participant at the Right to Know workshop at the University of Toronto and at the International Business Council Annual meeting. More news to follow with detailed discussion about legal developments in next month’s newsletter.

I am excited about the engagement that the work for SIPLI and the Program provides and to represent the College of Law in this capacity. The engagement infuses my teaching at the College of Law and my interactions across campus. Much thanks to support from the College of Law and to colleagues who have provided support and encouragement.

Shubha Ghosh JD, PhD
Syracuse, NY
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