Redefining Ownership

Intellectual Property Law at IIT

By Christopher Darnielle

While the term “artificial intelligence” (AI) may conjure up visions of campy ’50s science fiction movies or epic man-versus-machine chess duels, for Chicago-Kent College of Law Professor Mickie Piatt, it has a much more practical application: as an anecdotal case study for the intellectual property (IP) law classes she teaches.

Redefining Ownership
Professor Mickie Piatt says Chicago-Kent College of Law has restructured its nationally ranked Intellectual Property Law program to better teach the practical application of IP law.
Photos: Bonnie Robinson

The case study centers on a piece of real-world software, an automated book-authoring program that can be customized to mimic the writing styles of various famous authors via an artificial intelligence engine. The twist? She analyzes the implications of this software, and the mimicked writing it produces, from the perspective of an IP lawyer.

“One of the interesting questions is, who owns the copyright?” asks Piatt, also the executive director of Chicago-Kent’s IP law program. “Is it the computer? Is it the person who programmed the AI? Is it the people whose heads were mined to create the knowledge base? Or is it [the author] whose style they’re stealing? Those are just the obvious questions, but there are a lot more you could explore.” Piatt’s case study is a perfect illustration of the often confusing and contradictory applications of IP law.

In part, these are the kinds of issues that IP law is intended to define—ownership rights inherent in (or exclusive to) creative and innovative works. Broadly defined as copyrights (artistic material and multimedia), trademarks (brand identities), industrial designs (styles of industrial objects), patents (inventions), and trade secrets (proprietary information of a business or process), IP is exactly what the term implies—property. As with any other asset, it can be bought, sold, transferred, and licensed; often it is an extremely lucrative asset for a corporation.

“Global concerns are more and more predominating, so you need to think not just of United States patent law, but also that of Japan and England.” —Harold Krent, dean, Chicago-Kent College of Law

Piatt goes on to explain how her department has restructured the entire IP law curriculum in recent years so it will better represent what students will experience as actual practitioners: “What we’re doing is trying to encourage students to take classes that are not perceived as IP classes, but [those] that we think will make them better practitioners if they can apply what they know in a broader context.”

The formula she outlines is unique: adding courses to the core curriculum that are not typically considered IP-related (Evidence, Administrative Law, Remedies, and Anti-Trust), and creating the “capstone experience”—a requirement of all third-year certificate students—designed to make students think more broadly about IP issues.

In Chicago-Kent’s capstone experience, students must participate in one of three programs: a paid externship with a qualified law firm or corporation; a clinical experience known as the IP Law Clinic, in which students work with corporate or faculty entrepreneurs to resolve patent issues related to their inventions; or the Strategies in Intellectual Property course, in which students act as practicing attorneys, tackling issues that integrate the various branches of IP law. “It’s not all just pure litigation,” according to Chicago-Kent’s IP law program Associate Director Tim Holbrook, “it can also have licensing and negotiation aspects to it.”

“Patenting an isolated gene allows you to control anyone who wants to do research on that gene…That is an act of infringement.” —Tim Holbrook, Associate Director, Chicago-Kent IP Law Program

The approach seems to be working. Although Chicago-Kent’s IP law program has been around for two full decades (an eternity in the IP field) and was one of the first of its kind in the country, it recently received one of its biggest honors to date: U.S. News and World Report tabbed it as one of the Top 10 programs of its kind in the country. Holbrook shrugs off the honor. “It’s one of those things we don’t want to put too much weight into, because we’re always afraid of overemphasizing the rankings.”

Harold Krent, dean of Chicago-Kent, singles out another unique focus of the school’s curriculum: International IP Law, the first master’s program of its kind in the country. “Global concerns are more and more predominating, so you need to think not just of United States patent law, but also that of Japan and England. We try to introduce more international considerations than other schools throughout our curriculum.”

Academia is taking notice of this worldly approach. “In the last 15 years, the internationalization of Chicago-Kent’s curriculum has proceeded at a breathtaking pace,” says Brian Havel, director of DePaul’s International and Comparative Law Program. “IP, in particular, has become an internationally oriented subject thanks to the globalization of commerce and technology. The Chicago-Kent IP program has adapted itself very well, in both its curriculum and its scholarly publications, to the implications of globalization.”

It’s important to note that the globalization of IP is more than just a problem for academics to grapple with; it has also created a new set of obstacles for domestic corporations of all shapes and sizes. For instance, the decision of whether to file for patents in foreign countries has become absolutely critical to the healthy development of many businesses.

“The half-life of technology in electronics is about a year. So by the time a patent issues, there would have been six cycles that have basically doubled the capability of electronics. It’s pretty crazy.” —Office of Technology Transfer and Intellectual Property Director Robert Anderson

IP attorney and alumna Adrienne Naumann (LAW ’84) explains that filing patent applications in multiple countries can be financially prohibitive, even for large corporations. Additionally, “If you file a patent in this country, it can still be kept confidential if you forfeit your rights to file overseas,” she says—but this confidentially goes out the window once you file outside of the United States. “Then the client has to make a decision whether they want to invest in filing overseas and having their confidential information published, whether or not they ultimately obtain the patent, or whether they just want to restrict their territory to the United States and have it remain confidential.” In other words a mistake or oversight in the patent application process has the potential not only to shut the doors on foreign markets, but also to expose the vitals of your patents to competitors all over the world.

Of course, globalization isn’t the only force driving the explosive growth of intellectual property in today’s marketplace. Innovation and advances in technology often dictate how intellectual property is defined—and redefined. “The pace of technological change has increased so much, one needs to continually refresh one’s assumptions about how copyright or patents should work,” Krent explains. “There was no real way to anticipate the pressures on the copyright system with the advent of file sharing on the Internet.”

While peer-to-peer file sharing may be the most visible IP issue these days, it is by no means the most controversial; many issues integral to the pharmaceutical and biotechnology industries are bitterly divided. Perhaps no topic better illustrates the complexities and ethical ambiguities of these issues than those surrounding the patentability of human genes.

“Many recent articles have been highly critical of gene patents,” says Chicago-Kent alumnus Mike Harlin (LAW. ’96), a practicing IP lawyer for McAndrews, Held, and Malloy, “saying they were holding back diagnoses and cures for disease. Others believe that granting patents on isolated genes stimulates investment in research on those genes and in drugs to treat genetic disorders.”

Holbrook explains the legal restrictions behind the controversy: “Generally speaking you can’t get a patent on something that already exists—if it’s already a product of nature, there’s no patent eligibility.” Although highly controversial, he says that the key to the legal patentability of the human gene “is that you can get a patent on something that has been purified and isolated, even if it exists in nature.

“What they’re doing is patenting the sequence of the good DNA, the functional aspect of the gene. So they isolate that genetic sequence, and the idea is that what you’re claiming is a very complex chemical compound.”

Patenting an isolated gene isn’t necessarily profitable—not in itself, anyway. However, “what it allows you to do is to control anyone who wants to do research on that gene, because in the process, you will almost necessarily have to isolate it at some point,” Holbrook says. “That is an act of infringement.”

The implications of infringement are widespread, particularly in areas crucial to medical research. “This is the controversial aspect of it,” he says. “Many think that patenting genes is too far upstream, that you’re blocking the potential for people to do real discoveries on the things that count.”

To date the Supreme Court has skirted the subject, but according to Holbrook, “there is hope—and obviously I’m revealing my normative bias here—that the court will address this type of issue.” However the current shape of the marketplace may prevent any such litigation from ever reaching the higher courts. Essentially if a small—and likely risk-averse—company is researching a disease that it discovers involves a patented gene sequence, it will likely elect to stop research rather than face costly infringement litigation. Conversely, a large, deep-pocketed corporation may refuse to challenge another company’s gene patent in the courts, on the premise that any ruling reversing the overall legality of gene patentability would render its own patents worthless.

The bottom line is that as long as companies refuse to litigate over the validity of gene patenting, it will remain legal—which according to Holbrook, is the unequivocal position of the United States Patent Office.

In response to controversial issues such as gene patenting, among others, IIT formed two organizations—the Institute for Science, Law, and Technology and the Institute on Biotechnology and the Human Future—to promote discussion and disseminate knowledge on these topics. Both organizations recruit leading scientists, philosophers, and scholars across a broad range of disciplines to analyze the legal and ethical ramifications of the rapidly changing landscape of science and technology.

Gene patenting is just one example of intellectual property’s central role in the development of new technologies. IP also plays a crucial role in entrepreneurship, which is a cornerstone of IIT’s educational philosophy. Much of IIT’s curriculum—engineering, life sciences, business, and law—has been integrated under this multidisciplinary umbrella.

Nowhere is this lesson more evident than with IIT’s ongoing University Technology Park At IIT (UTP)—a project designed to bridge the gap between inventors and entrepreneurs (both private and academic) and the resources needed to turn their inventions into self-sufficient businesses.

UTP’s most basic function is to provide customized real estate for researchers and start-up companies, particularly those in the technology and life science industries. But Daniel Marselle, associate director of Technology/Business Services, stresses that the park’s purpose is far broader than just “a real estate play.” “We’re trying to build a real environment, an ‘ecosystem’ here,” he says, “for hi-tech companies, wherever they are in their life cycle.”

The Jules F. Knapp Entrepreneurship Center, although further upstream in the business cycle, works hand-in-hand with UTP. The Knapp Center was established in a community service vein to help connect budding entrepreneurs (both on- and off-campus) with essential services to get their businesses off the ground. “Our job is not to run a business for an entrepreneur,” says Jacob Elster, Knapp’s director of programs and services, “but to provide entrepreneurs with information they need to make informed choices about how to run their businesses.” These services include research, legal advice, business plan guidance, strategy and development, and financial modeling and projections, among others.

The Office of Technology Transfer and Intellectual Property (TT/IP) also plays a crucial role in IIT’s ever-expanding entrepreneurial efforts. TT/IP was developed with a much more narrow focus in mind: to license and commercialize the inventions and processes of IIT faculty inventors, or “technology commercialization.” “We want to be known as an entrepreneurial campus, that some of our faculty are entrepreneurs, that we are friendly to entrepreneurs,” says Director Robert Anderson. “I represent the university in making technology available to outside entrepreneurs, or licensing it back to the professor himself.”

Anderson cites a $500,000 royalty payment last year as the biggest his office has ever garnered; but that sum, and the term “technology commercialization,” can be misleading—this is a program developed to foster synergy between academic research and entrepreneurship, not a profit center.

Anderson says that his office, on average, applies for “about a dozen” patents per year, and expects “more than half” to issue. On its surface that may not sound like a lot, but when you consider the glacial pace of the patent application process, that’s actually quite remarkable. “It can take five or more years for a patent to issue,” he says.

“Think about it. The half-life of technology in electronics is about a year. So by the time a patent issues, there would have been six cycles that have basically doubled the capability of electronics. It’s pretty crazy.”

Although that serves in part as a cautionary tale about the lumbering cogs of government—and highlights the contrast in efficiency between the public and private sectors—it’s also a stark reminder of the breakneck pace at which science and technology are still evolving, and the importance of IP law in managing this evolution. Clearly, IIT’s multi-disciplinary, hands-on approach to teaching IP law and fostering entrepreneurship ensures the university will play an important role in shaping this evolution in the years to come.

“Patent Pending”
Patent Delays at the USPTO

Redefining Ownership

One of the most formidable obstacles confronting entrepreneurs is obtaining a patent for their inventions. As TT/IP Director Robert Anderson notes, the process is arduous: “Current delays can take more than five years in some technology areas.”

The Patent Office’s problems are by no means a new phenomenon. Take this excerpt from the November, 1884 issue ofScientific American: “We are in receipt of complaints from inventors and manufacturers of machinery because of the delay to which they are subjected in obtaining patent papers from the Patent Office… The number of such articles [of temporary utility] for which patents are desired is by no means small, and the failure of the Government to grant patents promptly simply has the effect to rob the inventions of the whole of their value.”

At least partially, the United States Patent and Trademark Office’s (USPTO) troubles can be attributed to a rise in the number of patent applications filed. According to USPTO figures, applications jumped 8.3 percent in 2006.

To address this increase, the office hired 1,218 additional patent examiners in 2006, and plans to add another 1,200 this fiscal year. In the USPTO’s official 2006 year-end report, Director Jon Dudas outlines the steps his department has taken to help train—and retain—this huge influx of new employees: new, university-style training for inspectors (previously this had been done on a one-on-one basis); the addition of recruitment bonuses to help lure top-notch scientists and engineers; and the implementation of a “hoteling” program, whereby inspectors are provided equipment and Internet access, and allowed to work remotely.

Additionally, the USPTO has implemented the Electronic Filing System-Web, an online patent application process that Dudas says has “dramatically increased the electronic filing of patent applications from 1.5 percent per month to 33 percent per month.”