Wizards & Prophets Blog


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

Michelle Rafenomanjato, Fulbright scholar from Madagascar, is currently pursuing a LLM program at Syracuse University College of Law with a focus on business law. Previously, she had worked as a legal counsel for Madagascar Conseil International, a prominent Malagasy law firm specializing in Business Law. She holds a master in public international law from Versailles University (France) and a PhD in international law from Zhongnan University of Economics and Law ( China).

As a Fulbright Scholar, Michelle was invited to participate in a Fulbright Enrichment Seminar on the topic of Technology, Start-ups, and Entrepreneurship, held in Salt Lake City in February.

Michelle and the other participants, representing in total 160 countries, heard the entrepreneurship journey of Dr. Dinesh Patel, co-founder of several biotechnology companies. Theyalso learned about the entrepreurial ecosystem for invention and innovation in Salt Lake City through Ari Bruening, President of Envision Utah, Cydni Tetro, co-founder and President of Women Tech Council and Clint Betts, Executive Director of Silicon Slopes. In addition to that, they had the chance to visit Lassonde Entrepreneur Institute, a multidisciplinary center for student entrepreneurs from any major.

As Michelle describes her experience: “In a few words, it was a unique opportunity to see the challenges faced by entrepreneurs, the non-legal keys to success for any entrepreneur and the importance of interdisciplinary teamwork (engineer, business, law).”

Welcome, Michelle, and thanks for sharing your rich experiences as an attorney and Fulbright Scholars with Syracuse University College of Law!

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Alum Spotlight: Angélique McCall, Class of 2016

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

Pleased to announce that Angélique McCall, Class of 2016, and graduate of the Technology Commercialization Curricular Program has been working for Brackett & Ellis of Fort Worth, Texas. Angélique was in my inaugural Technology Commercialization Law course (now offered in an expanded form as Advising the Start-up I & II). Before joining the College of Law, Angélique earned a BSc from Virginia Tech and an MBA from Marymount University. She is now a member of the Patent and Texas bars and practicing in the area of commercial litigation and intellectual property. Congratulations, Angélique.

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Alum spotlight: Hyung Gyu (Leo) Sun, Class of 2017

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

I just learned a few weeks ago that Hyung Gyu (Leo) Sun a 2017 graduate of the College of Law and the Technology Commercialization Curricular Program has been working for the past year as an associate with the law firm of Dunlap, Bennett, & Ludwig, in Virginia. Leo was in a number of my classes and served as my RA for two semesters. Before coming to Syracuse, Leo earned a BA from William & Mary, an MA in Intellectual Property Management from Korea Advanced Institute of Science and Technology, and an MSL from Northwestern. He is now working on trademark and intellectual property infringement matters. Congratulations, Leo!

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Technology, Investment, and IP Disputes Showcased in New Article

by Shubha Ghosh, Director, Technology Commercialization Law Curricular Program and SIPLI, Syracuse University College of Law

In the most recent issue of the Vanderbilt Journal of Entertainment and Technology Law, I take a deep dive into the question of when an investor can challenge a change in a country’s intellectual property law as an expropriation in violation of an investor-state agreement. The article is co-authored with Professor Jason Yackee of the University of Wisconsin Law School and focuses on the Eli Lilly dispute in Canada, resolved in 2017. Our conclusion is that states have great latitude in shaping their intellectual property laws in order to best promote technology development and innovation.

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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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Webcast on Helsinn v. Teva

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

Some brief thoughts on the “Patent Case of the Century,” or maybe “Patent Case of the Decade,” or would you believe “Patent Case of the Month”?

Link to YouTube Channel

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World Trade Organization Talk on Exhaustion of IPR’s-Videotape of December 7 event

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

I was fortunate to be invited to speak at the World Trade Organization in Geneva, Switzerland, on December 7, 2018. The topic was my new book from Cambridge, “Exhausting Intellectual Property Rights.” Here is a link to the video recording of the panel discussion.

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US Supreme Court rules: AIA did not alter precedent on prior art

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

On Tuesday, January 22, 2019, the Supreme Court announced its anticipated decision in Helsinn v. Teva. At issue in the case was whether the American Invents Act of 2011 altered long standing precedent on the on sale bar (and implicitly other types of prior art). The Court ruled, unanimously in a short ten-page opinion, that Congress did non overrule Supreme Court precedent regarding the on sale bar when it enacted the AIA. Abrogation of established rules requires a clear and unambiguous statement from Congress. In my opinion, the ruling is not surprising and to be expected although it does highlight age-old questions about secret prior art. These questions have been addressed by lower courts, but not by the Supreme Court. Does the Helsinn ruling mean that the Supreme Court might address these open questions? Probably not. Watch for a SIPLI Webcast to further explore the ruling and these issues…

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Technology Commercialization Studies Curricular Program–In Whole and In Part

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

The Technology Commercialization Studies Curricular Program continues strong with 17 students enrolled in the Advising the Start-up Sequence (Law 824/825), half of whom are also enrolled in the Innovation Law Practicum (Law 815). The Program continues in offering training in writing, research, client counselling, and drafting for those students seeking to hone their legal skills and gain a greater practical knowledge of intellectual property, business law, commercial law, and technology.

I am proud to serve as Director of the Program, a twelve-month position I started in 2016, continuing to develop as the field itself grows. The Program houses a few new acronyms: (1) Innovation Law Center (ILC) which carries forth the work of the New York State Science and Technology Law Center under the grant from Albany and (2) the Syracuse Intellectual Property Law Institute (SIPLI), which brings together the teaching, research, and service work I do on a twelve month basis. Under the SIPLI banner, I produce scholarship, some of which is described in this blog, generate conference activity at Syracuse and globally, and provide students with research supervision in their law review notes and research projects. As Director of the Curricular Program and SIPLI, I supervise and provide a spotlight on the various activities relating to intellectual property and technology law at the College of Law. Please follow the blog to learn about the fabulous work of faculty, students, staff, and recent graduates.

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