IP assignments (Spring 2014)

Preparation and the Harkness method

Unless noted otherwise, assignments are to the Loren & Miller casebook. In preparation for class, consider how you might teach the materials. Come prepared to lead discussion using the Harkness method, in which each member of the class is a scholar who comes prepared to present the materials and to lead discussion. Along those lines, I’d recommend that you prepare several discussion questions to share with the class on each reading.


Week 1 (Jan. 7 & 9):

Tuesday, Jan. 7 — Introduction, pp. 1-26

Thursday, Jan. 9 — Trade Secrets: Defining a Trade Secret, pp. 27-50

Week 2 (Jan. 14 & 16):

Tuesday, Jan. 14

      • See guidance up top regarding preparation and the Harkness method.
      • We’ll pick up with a brief discussion of the Rockwell case from last Thursday.
      • New matter — Trade Secrets: Misappropriation and Remedies, pp. 50-73.
      • In addition to the cases, pay close attention to the UTSA’s definition of misappropriation (page 50). Come up with examples of what might or might not constitute misappropriation.

Thursday, Jan. 16

      • Trade Secrets: Special Remedies Challenges, pp. 73-82
Week 3 (Jan. 21 & 23):

Tuesday, Jan. 21

      • Trade Secrets: The Inevitable Disclosure Doctrine, pp. 82-84
      • Trade Secrets: Alternatives & Compliments, pp. 96-116

Thursday, Jan. 23

      • Patents: The Patent System, pp. 117-29
      • Patents: Claim Construction & Definiteness, pp. 129-39

Links of interest to class discussion:

Week 4 (Jan. 28 & 30)

Tuesday, Jan. 28

Links of interest to class discussion:

Thursday, Jan. 30

      • Discuss anything remaining from Tuesday (we will pick up with the cases on patent subject matter, i.e., Diamond and Bilski)
      • Patents: Subject Matter and Utility, pp. 170-86

Links of interest to class discussion:

Week 5 (Feb. 4 & 6)

Tuesday, Feb. 4

      • Be prepared to discuss the Myriad decision (from last Thursday) on subject-matter.
      • Utility, pp. 186-96
      • Read the pre-AIA and post-AIA versions of 35 U.S.C. § 102 at Bitlaw.com. I would highly recommend that you print out both version and scrutinize them.
      • Patents: Novelty & Statutory Bars, pp. 196-200

Links of interest to class discussion:

Thursday, Feb. 6

      • Patents: Novelty & Statutory Bars, pp. 200-231

Links of interest to class discussion:

Week 6 (Feb. 11 & 13)

Tuesday, Feb. 11

      • Continue last week’s materials starting with the Gore case.

Thursday, Feb. 13

Week 7 (Feb. 18 & 20)

Tuesday, Feb. 18

      • Go to Monday classes today.
      • No IP class today. 

Thursday, Feb. 20

SPRING BREAK (Feb. 25 & 27)

Spring Break: no classes

Week 8 (Mar. 4  & 6)

Tuesday, Mar. 4

      • Reminder: Project 1 is due today at 12 midnight EST, details below. Any last-minute questions can be addressed in class.
      • New matter: Copyright: Theory and Copyrightable Subject Matter pp. 343-360

Thursday, Mar. 6

      • Copyright: Boundaries of Copyrightable Subject Matter pp. 360-382
Week 9 (Mar. 11  & 13)

Tuesday, Mar. 11

      • Attorney Danny Simon will guest lecture.
      • Assignment to be transmitted via email.

Thursday, Mar. 13

      • Copyright: Obtaining, Owning, and Maintaining a Copyright – CB pp. 382-408
Week 10 (Mar. 18 & 20)

Tuesday, Mar. 18

      • At some time this week (if not today then later in the week), I will return your Project 1s to you.
      • We will finish up our discussion of the materials from last Thursday. We will pick up with the materials on page 398.
      • New materials – Copyright: The Rights of a Copyright Owner, CB 409-37

Thursday, Mar. 20

      • You’ll receive details regarding Project 2 (copyright)
      • New material – Copyright: Fair Use, CB 437-59
Week 11 (Mar. 25 & 27)

Tuesday, Mar. 25

      • Copyright:Fair Use  & New Technologies, CB 459-87

Thursday, Mar. 27

      • Copyright: Secondary Liability and Para-Copyright, 487-516
      • Copyright: Remedies, 17 U.S.C. 502, 503, 504, 505
Week 12 (Apr. 1  & 3)

Tuesday, Apr. 1

      • Trademark: Basics on trademark protection, CB 545-66

Thursday, Apr. 3

      • Trademark: “Device” marks and trade dress protection, CB 566-91
Week 13 (Apr. 8  & 10)

Tuesday, Apr. 8

      • Trademark: Rights of a trademark owner, CB 591-620
      • Come to class having selected a proposed mark, along with relevant goods or services. I’ll let you know if the mark is approved. If for any reason you are absent, email me your proposed mark and goods/services prior to the beginning of class.
      • We’ll discuss assigned materials. In addition, I’ll show you some of the basics of using the USPTO site for basic knock-out searching.

Thursday, Apr. 10

      • Read very carefully Tamar Niv Bessinger, Ethics Issues in Searching Trademarks and Offering Opinions, available at http://www.frosszelnick.com/sites/default/files/20090506100518_86_PUBLISHED_PDF.pdf. The Bessinger article raises many of the important quandaries of trademark searching and we will discuss some of those concerns today.
      • Come to class prepared to discuss the results of your preliminary searching. Be prepared to share with us your search strategy and preliminary conclusions.
Week 14 (Apr. 15  & 17)

Tuesday, Apr. 15

      • Trademark: Trademark dilution, CB 620-46

Thursday, Apr. 17

      • Easter break, no class today.
Week 15 (Apr. 22  & 24)

Tuesday, Apr. 22

      • Trademark: Comparative advertising, fair use, and other defenses, CB 646-77

Thursday, Apr. 24

      • Trademark: Trademark and unique internet issues, CB 677-705
      • Trademark: Remedies basics, CB 705-07

Information on Projects:

Project 1 – Patents.

Draft an opinion letter to your client regarding a patent. Objectively advise client on issues of validity, infringement, and remedies.

  • Deadline: Work product should be sent electronically to inathenson@stu.edu no later than Tuesday, March 4, at midnight EST (end-of-day).
  • Patent at issue: U.S. patent 7,789,902
  • Other information:
    • “Client” is a law school graduate who owns PDD, knows little-to-nothing about patent law.
    • You may discuss the project and get comments on drafts, but only with other members of this class.
    • You may look to pre-existing materials such as forms and samples of opinion letters, but you must disclose such materials to me when you submit your work product. Cf. 37 C.F.R. 1.56 (duty of candor with Patent Office).
    • NPR story on the technology
    • Information on the actual product

Project 2 – Copyright.

Research and document online infringement. Draft a cease-and-desist letter and transmit to the infringer. Advise client on the matter in objective memo.

  • Deadline: April 14, 5PM EST
  • Details on project: click here

Project 3 – Trademark.

Do “knock-out” search on trademark or service mark. Engage in online research regarding whether trademark is pre-empted by existing registration, application, or use. Draft letter discussing mark’s registrability, enforceability, risk of liability, and your overall recommendation.

  • Deadline: April 28, 5PM EST
  • Details on project: click here

Scheduling notes:

    • Feb. 18 (Tuesday): no IP class, go to Monday classes
    • Feb. 25 & 27: no IP class (spring break)
    • Mar. 11 (Tues.): class visit by Attorney Danny Simon
    • Apr. 17 (Thurs.): no IP class (Easter break)
    • Apr. 24 (Thurs.): last day of IP class