Welcome to the Fall 2008 BCLT eNewsletter. This current issue contains information on:

1. Berkeley Law and BCLT News
2. BCLT Current Faculty Research
3. BCLT Research Fellows
4. Recent and Upcoming Events
5. Spotlight On: Entrepreneurship

For administrative questions about UC Berkeley's Law & Technology Program or its activities please contact me via email or phone (510) 642-3702.

Thank you,

David Grady
Assistant Director
Berkeley Center for Law & Technology

Robert Barr's far-reaching impact on Berkeley Law and the intellectual property field will be honored in perpetuity through a newly created scholarship in his name. Each year, the scholarship will be awarded to a student who has demonstrated financial need and a strong interest in technology law. The recipient will receive $10,000 per academic year and engage in specialized studies with Barr and other prominent IP scholars at the school. The scholarship was initiated by Mallun Yen '95 and her husband, Jason Lemkin '96. Yen worked with Barr at Weil, Gotshal & Manges and later joined him at Cisco, where Barr was its first vice president of intellectual property—and Yen was his first attorney hire. When Barr left Cisco in 2005 to run BCLT, Yen succeeded him as head of the company's worldwide IP. Yen enlisted the help of Bart Showalter, firm-wide chair of IP at Baker Botts, and G. Hopkins Guy III, a patent litigation partner at Orrick Herrington Sutcliffe. They had all worked closely with Barr, and together approached some of his current and former colleagues. "Each of us started making calls and I don't think I got a 'no' from anybody," says Showalter. "That reflects how much people think of Robert. This scholarship is perfect recognition for what he has meant to so many of us in the IP field." For more information about the scholarship please click here.

Robert P. Merges Locke for the Masses: Property Rights and the Products of Collective Creativity, Hofstra Law Review, Ideas Section (forthcoming 2009). An Estoppel Doctrine for Patented Standards (with J. Kuhn), California Law Review (forthcoming 2008). Software and Patent Scope: A Report from the Middle Innings, Texas Law Review Vol. 85:1627 (2007).

Deirdre K. Mulligan Privacy Decision Making in Administrative Agencies (forthcoming, University of Chicago Law Review) (with K. Bamberger) Taking the "long view" on the Fourth Amendment: Stored Records and the Sanctity of the Home (forthcoming, Stanford Technology Law Journal) (with J. Lerner) The Magnificence of the Disaster: Reconstructing the Sony BMG Rootkit Incident Vol. 22, p. 1157 Berkeley Technology Law Journal (with A. Perzanowski) (2007)

Howard Shelanski Network Neutrality: Regulating with More Questions than Answers, J. Telecomm. & High Tech Law, Vol. 6 (2007). Merger Analysis and the Treatment of Uncertainty: Should we Expect Better?(with M. Katz), Antitrust L.J. (2007). Adjusting Regulation to Competition: Toward a New Model for U.S. Telecommunications Policy,Yale J. Reg. (2007).

Stuart Graham, PhD. (UC Berkeley, Haas School of Business); J.D. (SUNY, Buffalo); MBA (SUNY, Buffalo) is a Ewing Marion Kauffman Foundation Research Fellow. Graham's research focuses on intellectual property strategies for business and patent policy, particularly as it affects entrepreneurs. He has published several research articles on the post-grant patent opposition system and company patent strategies in the software and biotechnology industries.

Chris Jay Hoofnagle, J.D. (University of Georgia) is the Director of Information Privacy Programs and Senior Fellow for BCLT. He is an expert in information privacy law. Hoofnagle's research focuses on identity theft, security breaches, and consumer perceptions and attitudes towards privacy laws. 

Jennifer King is a social technologist who draws upon her training in the social sciences and human-computer interaction to investigate the issues that arise when technology and society collide. King received her master’s degree in Information Science from UC Berkeley’s School of Information and graduated with honors in Political Science and Sociology from UC Irvine.

Aaron Perzanowski, J.D. (UC Berkeley School of Law) is the Microsoft Research Fellow at BCLT. His current research focuses on copyright, digital rights management, and interoperability. Perzanowski has taught courses in cyberlaw and intellectual property at the UC Berkeley School of Law and School of Information.

Ted M. Sichelman is a Ewing Marion Kauffman Foundation Research Fellow at BCLT. He received his J.D. from Harvard Law School, magna cum laude, in 1999. Sichelman clerked for Judge A. Wallace Tashima on the United States Court of Appeals for the Ninth Circuit. He founded and ran Unified Dispatch, Inc. (UDI), which provides communications software to the ground transportation industry.  Sichelman was a patent litigator at Irell & Manella and at Heller Ehrman. His research  focuses on the effects of the patent system on start-up and early-stage companies.

Tara Wheatland is the Copyright Research Fellow for the Copyright Principles Project led by Professor Pamela Samuelson. Wheatland graduated from the UC Berkeley School of Law in 2006.  Wheatland's current research focuses on statutory damages for copyright infringement.

Highlights of Events in the 2007-2008 Academic Year:

• BCLT hosted Margaret Peterlin, Deputy Director of the United States Patent and Trademark Office, at a special round table event regarding The Global Marketplace and the American IP System.
• Our China IPR training program concluded with a discussion involving Chinese officials on "IP cooperation efforts between China and the US" and "Defending against IP actions in the US."
• An elite group of patent law scholars gathered under the auspices of BCLT for a roundtable session discussing proposals for reform of the Court of Appeals for the Federal Circuit.
• The Conference on the Economics of Competition and Innovation – co-sponsored by BCLT and the Center for Competition Policy at Haas School of Business – explored topics such as competition law issues related to standards development organizations; analysis of the relationship between competition and IP; and analysis of the law and economics of policies related to IP and research and development.
• A panel discussion, co-sponsored with Santa Clara Law School and the Silicon Valley Intellectual Property Law Association, debated the question "Do Recent Changes to U.S. Patent Law and Practice Weaken or Strengthen the Patent System?"
• The Fifth Annual Telecommunications and IP Conference was held in Maui, Hawaii and co-sponsored with Seoul National University.
• BCLT and the Berkeley Journal of Law and Technology hosted over 300 people for our two day Symposium on IP & Entrepreneurship.
• Our First Annual Privacy Lecture featured an address by David Cole, Professor of Law at Georgetown University Law Center. The lecture was titled: “Would You Rather be on Closed Circuit TV or in Jail?: Trade-Offs Between Liberty and Privacy in the US and the UK”.  Responses to the address were delivered by UC Berkeley Law Professor John Yoo and Georgetown Adjunct Professor David S. Kris.
• A conference on the  Law and Business of Online Advertising held in Berkeley and co-hosted by the Santa Clara University School of Law brought together academics, practitioners, business leaders, and technology experts to discuss legal, policy, and technical developments in online marketing.
• A conference on  Legal Outsourcing,  co-sponsored with the Institute for Global Challenges and the Law, analyzed the risks and benefits of outsourcing patent drafting and legal work to other countries.
• BCLT and IPotential co-sponsored the 2nd Annual IP Corporate Counsel Summit in San Jose.
• BCLT initiated the first gathering of intellectual property and high technology law researchers, bringing IP faculty in the Bay Area together to discuss current technology developments and research. This group plans to meet twice a year at various Bay Area law schools.
• BCLT and the High Tech Law Institute at Santa Clara University School of Law co-hosted a meeting of Bay Area “Blawgers” (legal bloggers).
• BCLT and the Federal Judicial Center continued their collaboration with the 11th Annual Intellectual Property in the New Digital Age Program for District Court Judges. A networking dinner with the Judges included  practitioners, academics, alumni, corporate counsel and other community leaders.
• BCLT and the Seoul National University Center for Law and Technology co-sponsored the Korean Summer Institute, bringing Korean professionals to Berkeley for training by BCLT IP faculty.
• Israeli lawyers from Tel Aviv University’s International Executive LL.M. program, who attended advanced legal courses at Boalt this summer were guests at a dinner in July. Attorneys with an Israeli practice, such as Ziv Yoash of Perkins Coie, attended the dinner and observed that it was a unique networking opportunity.
• Nine BCLT faculty and fellows presented at the IP Scholars Conference held at Stanford Law School. This program – co-sponsored by BCLT, DePaul, Cardozo, and Stanford Law School – brings together approximately 120 intellectual property scholars from over 70 institutions to present their works-in-progress in order to benefit from the critiques of colleagues.

Upcoming Events:

• BCLT will co-sponsor the "Federal Circuit Visits the Valley" program on November 5. This event will feature panels of Corporate General Counsels, Federal Judges, and academics.
• The Annual Advanced Patent Law Institute, co-sponsored by BCLT, Stanford Law School, and the University of Texas will be held on December 10-12 in Santa Clara.
• BCLT will host a "Patent Valuation Conference" in Berkeley on February 6, 2009.
• The Annual Telecommunications and IP Conference will be held February 13-15, 2009, in Hawaii. This event features speakers from the BCLT faculty, other leading US and Korean academics, and representatives from several major US and Korean companies.
• This year’s BCLT/BTLJ Annual Symposium will be held on March 6, 2009 and will examine the impact of security breach notification laws on businesses and consumers in terms of identity theft, privacy, and credit monitoring.
• BCLT will continue its Annual Privacy Speaker Series on March 16, 2009. Richard Epstein’s presentation will be "Confronting the Third-Party Doctrine: A New Look at an Old Problem."
• On April 30, 2009 BCLT and Santa Clara Law School will continue their collaboration with a Symposium on Copyright Law, “Reflections on the 100th Anniversary of the 1909 Copyright Act.”
• The next Corporate IP Counsel Summit, sponsored by BCLT and IPotential will be held in April 2009.
• The April BTLJ Banquet celebrates the incoming board of the Berkeley Journal of Law and Technology — a great chance for attorneys to meet members of BTLJ and reconnect with alumni.
• A Technology Law Update in May 2009 will bring in-house Counsel and attorneys from sponsoring firms to Berkeley for an update on recent cases and changes in the law.
• BCLT will host the 2nd Annual Privacy Law Scholars Conference on June 4 & 5, 2009. This event assembles a wide array of privacy law scholars and practitioners from around the world to discuss current issues and foster greater connections between academia and practice.
• The Society Economic Research on Copyright Issues will hold their 2009 Congress meeting in Berkeley on July 9 & 10, 2009.

The Ewing Marion Kauffman Foundation has funded a project for the Berkeley Center for Law & Technology (BCLT) to engage in a comprehensive program of research, policy analysis, and widespread dissemination of the results exploring the relationship between patent policy and entrepreneurship.

Principal investigators Pamela Samuelson and Robert Merges have been working with Research Fellows Stuart Graham, Ted Sichelman, and Sean O'Connor to identify the aspects of our patent system that encourage and accelerate entrepreneurial activity and those aspects that act as actual or potential impediments to entrepreneurs, particularly in high growth technology sectors such as the computer software, Internet, and biotechnology industries.

A symposium on IP and Entrepreneurship, was held at Berkeley Law on March 7-8, 2008.  Leading academic scholars, legal practitioners, venture capitalists, and executives at start-up companies came together for two days of discussion about the roles that patents play in technology entrepreneurship. 

Topics for discussion included:

• What we know (and don’t know) about patenting and entrepreneurship.
• Are patents important for software, biotechnology, and 'cleantech' entrepreneurs, and if so, why?
• Are the realities of licensing and enforcing patents different for technology start-ups than for more established companies?
• What roles do collaborative innovation and open-source business models play in entrepreneurship, and how does the patent system support or retard these roles?
• How would the current menu of patent-reform proposals affect technology entrepreneurs and their start-up companies?

Discussions on these topics were both informative and spirited. Associated PowerPoint presentations are available at the conference website.

While the Symposium covered significant ground, the discussion is just beginning.  As part of BCLT’s efforts to move this discussion forward, it is undertaking a comprehensive survey of start-up and early-stage companies' patent prosecution, licensing, and litigation strategies, as well as entrepreneurs' attitudes about the patent system. Results of the survey will be discussed in publications and presentations in the Spring and Summer of 2009.

As the Kauffman Project at BCLT continues it will strive to uncover answers to the following questions, among others:

• How do investors and entrepreneurs assess the scope and value of their own and other firms' patent rights in the course of deciding which business opportunities to pursue or to fund or how to structure rounds of financing? 
• Do start-ups apply for patents to protect their innovations and is this strategy a successful one?  Do they apply for patents for other reasons?  Any why don’t they apply for patents? 
• How easily can entrepreneurs enter markets in industries where cross-licensing of patent rights is common?
• What effect has the proliferation of software and information patents had on opportunities for entrepreneurship in the software and digital information industries?
• How do start-ups respond to a competitive environment that includes patents?  How do they avoid infringing others’ patents?  Are licenses available to them?  How often, and at what stages of growth, do they receive allegations of infringement, and what do they do in response? 
• Are entrepreneurs affected by “patent trolls” (that is, owners of patents who pursue patent litigation as a business model)?   

The Principal Investigators and Research Fellows are actively publishing in the area of IP and entrepreneurship.  Below is a list of relevant published, forthcoming, or commissioned articles and working papers directly influenced by this project.

Robert Merges

1. Software and Patent Scope: A Report from the Middle Innings. Texas Law Review Vol. 85:1627 (2007)
2. Now and Then, Here and There: A Review Essay on Khan, The Democratization of Invention, and Blind, et al., Software Patents, Journal of Economic Literature (2007)

Pamela Samuelson

1. Are Patents on Interfaces Impeding Interoperability? 94 Minn. L. Rev. (forthcoming 2009)
2. Patent Reform Through the Courts, 50 Comm. ACM (March 2007)
3. Effects of Patent Reforms on Entrepreneurs. Kauffman Foundation (2006)
   

Why Do Start-Ups Patent?  Theories and Data, with T. Sichelman. Forthcoming in Berkeley Technology Law Journal, (Fall 2008) Competing on Standards? Entrepreneurship, Intellectual Property, and the Platform Paradox, with Tim Simcoe and Maryann Feldman. NBER working paper 13632.  Under Review, Journal of Economics and Managerial Strategy. (November 2007) Beyond Patents:  The Role of Copyrights, Trademarks, and Trade Secrets in Technology Commercialization.  Forthcoming in Advances in the Study of Entrepreneurship, Elsevier. (December 2007) Co-evolution of intellectual property protections and innovation: The case of ‘continuation’ patents in the United States. Forthcoming in Innovation Policy: Theory and Practice. An International Handbook, Elgar. (November 2007)  Pioneering Inventors or Thicket-builders: Which U.S. Firms use continuations in patenting? (with D. Mowery and D. Hegde) Under journal review. (November 2007) Comanor and Scherer Revisited:  Do Patents Proxy for New Product Introductions? (with M. Higgins) Under journal review. (September 2007)

Why Do Start-Ups Patent?  Theories and Data, with S. Graham. Forthcoming in Berkeley Technology Law Journal, (Fall 2008) The Commercialization Interest in Intellectual Property. Preparing for submission. Patent Bullies: How Large Companies Often Abuse the Patent System. Preparing for submission.

Using Stock and Stock Options to Minimize Patent Royalty Payment Risks after MedImmune v. Genentech, 3 N.Y.U. J. Law & Bus. 381 (2007) HOW TO BUILD IPR-FOCUSED ENTREPRENEURIAL LAW AND BUSINESS CLINICS TO ASSIST REGIONAL ECONOMIC DEVELOPMENT AROUND THE GLOBE (International Intellectual Property Institute 2008) Teaching IP From an Entrepreneurial Counseling and Transactional Perspective, 52 SAINT LOUIS UNIVERSITY LAW JOURNAL 877 (Spring 2008) "Enabling Research or Unfair Competition? De jure and de facto research use exceptions in major technology countries" in TOSHIKO TAKENAKA ed., PATENT LAW AND THEORY: A HANDBOOK OF CONTEMPORARY RESEARCH (Edward Elgar Publishing, Ltd., forthcoming 2009)