INNOVATIONS AND INVENTIONS THROUGH PATENTS & TRADE SECRETS: SYLLABUS

Professor Ira Steven Nathenson

St. Thomas University School of Law

Spring 2018, Law 942, 3 credits (skills)

Email: inathenson@stu.edu
Phone: 305-474-2454
Homepage: http://www.nathenson.org/
Course website: http://nathenson.org/courses/innovations
Assignments http://www.nathenson.org/courses/innovations/assignments
Class time: Tues. & Thurs. 10AM-11:30AM, Room 109-A in the Law Library, 1st fl.
Office hours: Tues. 4:30-6:30PM; Wed. 1-3PM; Thurs. 4:30-6:30PM; and by appointment. Electronic office hours are also available via Google Hangouts or similar services.

ABOUT INNOVATIONS AND INVENTIONS

This course qualifies for skills credits.

Innovation policy is so important to this country that the Founders addressed patents in the Constitution and made patent protection one of the first laws passed by the new Republic. Since then, patent law—along with its cousin, trade secret law—has become even more important to the development of the economy, with many businesses being built on a foundation of patents and trade secrets. Ironically, patents and trade secrets are mirror opposites of one another: patents hinge on disclosure, whereas trade secrets require secrecy. Yet any substantial business plan involving technology may require both. Regardless of their benefits, both patents and trade secrets are being increasingly criticized by those who lament these laws, criticizing “patent trolls,” pharmaceutical price-gouging, and a lack of transparency in proprietary computer code. With both the practical and policy issues in mind, this course addresses innovation law with a heavy emphasis on placing legal doctrine in a real-world context. The course will emphasize practical aspects of these doctrines as well, spending class time learning the basics of reading patents, construing claims, and considering NDA and employment issues. Relevant state and federal laws to be studied include the Patent Act of 1952, the America Invents Act of 2012, the Uniform Trade Secrets Act, and the Defend Trade Secrets Act.

This course counts towards the St. Thomas Law Intellectual Property Law certificate program.

REQUIRED BOOKS

These are the required books for Spring 2018 Innovations and Inventions. Note that all the books and materials are available online for free or at extremely low cost.

  1. Nathenson.org course website: Site at http://nathenson.org/courses/innovations/. This website is your source for assignments, project information, and other materials.
  2. Boyle & Jenkins Casebook: James Boyle & Jennifer Jenkins, Intellectual Property: Law & The Information Society, Third Edition (Center for the Study of the Public Domain 2016). The book is available for free here. The authors have also provided a free 2017 update to the casebook here.
  3. Boyle & Jenkins Statutory supplement: James Boyle & Jennifer Jenkins, Intellectual Property: Law & The Information Society, Selected Statutes & Treaties, 2016 edition (Center for the Study of the Public Domain). It is free and can be found here.
  4. Loren & Miller Casebook: Some readings will also come from Lydia Pallas Loren & Joseph Scott Miller, Intellectual Property Law: Cases & Materials (v.5.0, Semaphore Press 2017). The book is a PDF download. The authors ask for $30 but allow students to name their own price, including freeriding if truly needed. The book can be found here.

COURSE WEBSITE; ASSIGNMENTS

Assignments and course-related materials will be posted to the course website at http://www.nathenson.org/courses/innovations.  In addition, selected course-related announcements and materials may be sent to your official St. Thomas Law email account. You are responsible for regularly checking your STU email.

GRADING

There is no final examination. As a skills course, your grade will be based on experiential projects (70-75% of grade) and class participation (25-30% of grade).

For projects, the weight of each project will vary. Generally, early projects are formative and carry less weight, whereas later projects build on your skill level and carry greater weight.

For class participation, your score will be based on:

  • Attendance (1/4 of participation). This generally means attending the entire class.
  • Timeliness (1/4 of participation). This means being in your seat and ready for discussion once class begins.
  • Discussant (1/4 of participation). This refers to your preparation, participation, and professionalism as a member of the class.
  • Leader (1/4 of participation). This refers to your preparation, performance, and professionalism as a leader, moderator, or panelist.

As a skills course, your regular presence and participation in the classroom are a crucial part of your learning. Therefore, except for excused religious holidays, your attendance and timeliness scores look solely to the number of times you were absent or late, without regard to the reason for any absence or tardiness. The STU attendance policy has no bearing on the scoring of attendance or timeliness, and you should not consider 80% to be your goal: instead, you strongly encouraged to seek perfect attendance and timeliness.

PARTICIPATION & PROFESSIONALISM

Class attendance and timeliness.

Regular and timely attendance means, among other things, that you are in your seat and ready to start work on time. It also means that you are generally in the classroom for the entire class. I cannot emphasize enough how important it is for you to be in your seat and ready to start on time. Because we will be doing practice-oriented projects, class will often begin with important announcements and project guidance. If you are late, you will miss out on that information. Along similar lines, do not exit the classroom without good cause. If you leave class early without permission or good cause, you may be counted absent and in extreme cases, may be denied reentry. All of these considerations may be factored into your class participation score.

Participation as a class discussant (class member).

Every class member should be fully prepared to discuss the materials assigned for each class even if they are not a discussion leader. Class members should work during class with the professor and discussion leaders to discuss and explore the assigned materials. If you want, you can email me prior to class with supplemental materials you find that you think might be useful to share with the group. If we do not complete an assignment on one day, we will usually pick up on that assignment in the next class, so you should still be prepared to discuss those materials. Even when there is overlap, you should always prepare any new assigned materials as well. Your participation as a class member counts as part of your class participation score. See Guidance for Discussants, Discussion Leaders, and Panels.

Participation as a discussion leader.

For every class, there will be a discussion leader. Your participation as a discussion leader counts as part of your class participation score. See Guidance for Discussants and Discussion Panels.

Participation as a moderator or panelist.

Towards the end of the semester, class will be run as scholarly panels, like you would see at an academic conference. One student will serve as moderator, and the others will be panelists. See Guidance for Discussants and Discussion Panels.

Each discussion leader should:

  • Present assigned materials, including statutes cited within the readings.
  • Lead group discussion.
  • Prepare and present discussion questions based on the assigned materials.
  • Call on members of the group to pose questions and to help answer questions.
  • As appropriate, bring in additional materials for the group. (Email me such materials ahead of time so that we can project them on screen.)

Further information about discussion leaders:

  • Discussion leaders will be assigned in advance. Names will be posted to the course website.
  • If a discussion leader is absent, late, or unprepared to present on an assigned day, their class participation score will be negatively impacted and they may be required to assume additional discussion leader duties later in the semester.

For details on moderators and panelists, see Guidance for Discussants and Discussion Panels. This is an important document and will be assigned for your second session. We will discuss what it means at length during the semester.

Disclosure, Candor, and Attribution policy: i.e., non-plagiarism.

We will discuss matters regarding your individual projects in class, and you may discuss ideas and the law with your classmates. However, any work product you hand in must be your own work. In limited circumstances, I will allow you to work from and adapt forms and other pre-existing materials. I will let you know in writing when you may use pre-existing materials. Except in the limited circumstance when I permit you to use pre-existing materials, any work product you hand in must be written and created solely by you. Any violation of this policy will be dealt with harshly and may in addition constitute a violation of the St. Thomas Law Honor Code. All students will be required to complete, sign, and return the Certification of Originality and Attribution form as part of submitting any project. This Certification is an important document that reflects strongly on your professionalism, and we will discuss what it means at length during the semester.

LEARNING METHODOLOGY: SKILLS+

This is a skills course, but the real goal is to treat it as much more than a skills course.  It is intended to be one that integrates your learning—and I mean learning and not teaching—of innovations doctrine, theory, practice skills, and professional values.  I am a strong believer in the integrated approach, one that uses skills to teach law and doctrine, and that uses professional values to tie them all together.  So instead of learning doctrine in one class, ethics in another class, and skills in yet another class, I want to use them all, together, to better learn the law and to become a better lawyer.

LEARNING OUTCOMES, METHODOLOGIES, AND ASSESSMENT

Learning outcomes refers to skills, concepts, and other matters I want you to learn in our course.  Learning methodologies are the techniques we will use to learn these matters.  Assessment refers to the ways you will receive feedback to help you determine your level of success and to course-correct for improvement. As a skills course with multiple projects, assessment is primarily formative, i.e., feedback that occurs while the topic is still being studied.  This contrasts heavily with traditional doctrinal courses where assessment is primarily summative, i.e., feedback that occurs at the end of a course.

 Learning Outcomes (the goal) Learning Methodologies (the means)
Patent and trade secret law and theory: Examples include the Patent Act of 1952, America Invents Act of 2012, Uniform Trade Secret Act (model state law), Defend Trade Secrets Act of 2016 (federal law); policy issues such as optimal term for patents to spur innovation; non-practicing (“patent troll”) entities; business methods, genes, and computer code; trade secrecy over voting technology, search algorithms, and more. Reading, briefing, marking up, and discussing patent and trade secret cases and statutes (Patent Acts of 1952 and 2012, UTSA, DTSA), and group discussion.
Integrating law and theory with practice skills and professional values: Developing basic practitioner proficiency in tasks common to lawyers who prosecute, litigate, protect, defend against, and engage in transactions involving innovations, all the while tying professional values into practice. Examples may include reading patents, basic patent drafting, designing trade secrecy policies, and drafting NDAs. Skills projects designed to integrate the teaching of the four components of lawyering: doctrine, theory, practice skills and professional values.  For information on the MacCrate Report’s recommendation for integrated teaching of these components, see here.

COMPUTERS, TABLETS, PHONES

Computers (including without limitation tablets and other electronic devices) may be brought to class but they cannot be used during normal discussion or for note-taking. The reason is that study after study has proven that electronics are anathema to focus, engaged discussion, note-taking, and critical thinking. Considering that we have a small group, the success of the class will hinge on the engagement of each and every one of us. Accordingly, you may bring your devices to class but they may be used only at points that I designate are appropriate for computer use, such as searching online records or registrations.

With that in mind:

  • Casebook: I will be using two casebooks, along with an electronic statute supplement and other electronic materials. Whatever is assigned, please print it out and bring it to class.
  • Note-taking: You should take notes by hand.

Posted Jan. 2, 2018 [beta]