USA IP Law at Stanford University

Stanford Law School has a long-standing tradition of sharing its expertise in Intellectual Property, Science and Technology law with legal professionals from around the world. In August 2019, AIRecht managing partner and strategic IP specialist Mauritz Kop had the pleasure to be part of a pre-selected international group of highly talented IP lawyers, counsels and scholars who had the opportunity to bring their professional skills to the next level and study complex IP issues related to Silicon Valley’s hi-tech industry, during an intensive international certificate summer program on U.S. IP law. The international professional American Intellectual Property Law Program at Stanford University is co-directed by Prof. Siegfried Fina, Prof. Mark Lemley and Dr. Roland Vogl.

Intellectual Property Law at Stanford Law School

SLS: A World’s Leading Law School at an Ivy Plus League University

Stanford University is an Ivy Plus League university. Ivy League schools such as Harvard, Yale, Princeton, MIT and Columbia University are viewed as the most prestigious, ranked among the best universities worldwide and have connotations of academic excellence. SLS is one of the world’s leading law schools. The Faculty draws international top talent to its magnificent campus. Stanford Law School’s Program in Law, Science & Technology (LST) has been ranked regularly among the top three intellectual property law programs in the United States, together with the IP Programs (LL.M. and J.D.) of the University of California-Berkeley and the University of New York.

IP Certificate Law Program: fundamental concepts of U.S. Intellectual Property Law

The SLS USA Intellectual Property Certificate Law Program focuses on the fundamental concepts of U.S. IP law against the broader background of the world’s IP law regimes (common and civil law traditions). It offers participants a chance to discuss hot topics like online copyright licensing and technology transfer with top IP experts from Stanford and Silicon Valley and learn from the experience and expertise of leading technology law practitioners. The course is taught by nationally and internationally renowned Stanford professors, attorneys from major Silicon Valley law firms such as Wilson Sonsini Goodrich & Rosati and Fenwick & West, and senior in-house counsel from frontrunning Silicon Valley corporations such as Intel Corporation, Apple, Facebook and Google.

SLS A World’s Leading Law School at Ivy Plus League University

Stanford CodeX Exponential Innovations, AI, and Law Bootcamp

The Stanford CodeX Exponential Innovations, AI, and Law Bootcamp initiative offers students an accelerated course on artificial intelligence, law and ethics related to innovation areas such as Autonomous Vehicles, Blockchain and Smart Contracts, Internet of Things, Big Data and Predictive Analytics, Machine Learning and Automated Professional Services. Main goals of the course are to stimulate entrepreneurship, prepare students for the Fourth Industrial Revolution and to actually build a tech startup that focusses on machine learning, natural language processing or blockchain.

The William H Neukom Building - Information Technology - at Stanford Law School

SLS also has a Stanford Artificial Intelligence & Law Society (SAILS). SAILS aims to raise student awareness of the legal issues associated with artificial intelligence and machine learning and foster cross-disciplinary collaboration.

The course, teachers and overview of topics

The course consisted of the following topics: US Intellectual Property Law, Patent Law, Copyright, Trade Secrets, Trademark Law, Trade Dress, Design Patents, Brand Protection in the United States, IP Litigation, Artificial Intelligence, Privacy Law, Employment Law, Contract Law, Public Domain, IP Strategy, IP Licensing and Technology Transfer, Copyright and the internet, Venture Capital in Silicon Valley.

Stanford CodeX Exponential Innovations, AI, and Law Bootcamp

The Executive Directors

We were welcomed by Dr. Roland Vogl and Professor Siegfried Fina. Dr. Vogl is Executive Director of CodeX – the Stanford Center for Legal Informatics; Executive Director of the Stanford Program in Law, Science and Technology; Lecturer in Law, Stanford University. Professor Fina is Co-Director of the Transatlantic Technology Law Forum at Stanford Law School and a Visiting Professor of Law from University of Vienna School of Law. Professor Mark Lemley is the William H. Neukom Professor of Law at Stanford Law School and the Director of the Stanford Program in Law, Science and Technology.

International group of highly talented IP lawyers, counsels and scholars

Introduction to U. S. IP Law and the International Interface

Lisa Larrimore Ouellette is Associate Professor of Law and Justin M. Roach, Jr. Faculty Scholar at Stanford Law School. Her scholarship addresses empirical and theoretical problems in intellectual property and innovation law. She takes advantage of her training in physics to explore policy issues such as how scientists use the technical information in patents, how scientific expertise might improve patent examination, the patenting of publicly funded research under the Bayh–Dole Act, and the integration of IP with other levers of innovation policy. Prior to her appointment at Stanford Law School, Professor Ouellette was a Postdoctoral Fellow at the Information Society Project at Yale Law School.

Lisa taught us about the principal modes of legal protection for intellectual work. We learned about the similarities, differences and potential overlap between trade secrets, patents, copyrights and trademark/dress. We were presented with a structured, functional survey of the overall landscape of IP rights per rights layer: its underlying theory, the source of law, subject matter, standard for and scope of protection, period of protection or duration (public domain), disclosure, third party rights and cost of protection/ registration fees.

U.S. Patent Law

Besides that, Lisa - who received the law school's John Bingham Hurlbut Award for Excellence in Teaching in 2018 - gave us an overview of U.S. Patent Law. We discussed the competence of the 9th Circuit and the (discretionary) Supreme Court, utility, novelty and non-obviousness, design patents, venture capitalists and patent pending, patent trolls, claim construction, procedural timing, patent invalidation, Texas & Delaware, local rules for patent filing (Silicon Valley: Northern District of California), the discovery phase and how state law sometimes fills gaps in federal law. We also exchanged ideas about innovation incentives, economic effects of policy (grants, prizes, tax), the legal concept of Res Publicae ex Machina and government funding of clinical trials for new (AI brewed) medicines. Hugely educational!

Lisa expertly answered the following technical questions that I asked her during the course:

1. Do you think that a flu-vaccine brewed by an AI, by a machine without any human intervention, should be patented? The machine doesn’t need an incentive to create and invent. Should it be immediately in the public domain, to be used for the public good? It should -both intuitively and doctrinally- not be monolopized, not even for a short period of 5 years. Instead, such autonomously made inventions and creations should be Res Publicae ex Machina (Public property from the Machine).

Lisa explained that IP and public domain are not always the best options (i.e. clinical trials) and encouraged me to look beyond IP.

2. Do you think SEP licensing of essential patents on a FRAND basis should be compulsory, in every industry in Silicon Valley?

When at Stanford, consider renting an electric bike at the Campus Bike Store

Stanford University’s open IP licensing policy

Finally, we discussed Stanford University’s open IP licensing policy and the metrics and resilience of the patent system. Should a patented technology be exclusive to Stanford startups (spinoffs), or should it be broadly available to everybody. How to reach a sustainable innovation optimum and avoid risks of underprotection and overprotection? Which policy -beyond justification- would benefit society most?

U. S. Copyright Law

Paul Goldstein. A globally recognized expert on intellectual property law, Professor Paul Goldstein is the author of an influential four-volume treatise on U.S. copyright law and a one-volume treatise on international property. Besides being a law professor and a novelist, he is of counsel at Morrison Foerster where he practices IP Due Diligence, Technology Transactions, Copyright and Patent Litigation.

We learned from Paul -who is an outstanding teacher- about direct infringement, secondary liability, contributory liability and vicarious liability. His 52 year experience teaching and practicing copyright law showed off. Paul interlaced his lessons with clear and infotaining examples from practice, compelling anecdotes and court success stories. Paul taught us about legal uncertainty about fair use, the famous Betamax (VHS, VCR, Sony, Universal)) and Napster cases (peer to peer filesharing), infringing characteristics (reproduction rights) of new inventions, risks and venture capitalists.

Copyright and the Internet

We also discussed legal doctrine, safe harbours, anti-circumvention, paywalls and encryption and copyrights generally not working so well on the internet. We exchanged ideas about fair use, compulsory licenses and the Republicans using a (non-pirated) Led Zeppelin song in the next Presidential Campaign, without explicit (written) permission from both the owner of the master recording (usually the record label), the owner(s) of the copyrights on the lyrics and chords of the underlying musical composition (author or publisher), or the artist. And sound recordings being not in the Berne Convention (these have different protection regimes in Europe and The united States).

Terminating copyright transfer or publishing contract after 35 years

Paul told us about the fact that a copyright transfer or publishing contract can be terminated by the author 35 years after signing the legal document (not so popular among filmmakers and publishers). Finally, we talked about fair use (as a 4-factor test and a limitation to copyright) being different in copyright than in trademark law, fair dealing, works for hire in the USA, joint works (Beatles), Marrakesh exceptions and forumshopping and suing in the USA because of ’guaranteed’ remedies (statutory damages).

Trade Secrets in the U.S.

Charles Tait Graves. Tait is a partner at leading law firm Wilson Sonsini Goodrich & Rosati in San Francisco, where he has practiced trade secret law since 2000. He has taught a course on trade secret law at the University of California, Hastings College of the Law since 2009.

Tait -who is a natural teacher- explained us the various approaches to non-competition covenants in California, Massachusetts and Maryland, the types of remedies in the Defend Trade Secrets Act (monetary relief, reasonable royalties) and the definitions of Trade Secret and Misappropriation. It was a top notch, highly educational lecture. We discussed the scope of US Trade Secret Law, the basic rules for secrecy, misappropriation and common defences, the absence of a monopoly, NCC’s and Invention Assignment Agreements, the costs of trade secret litigation and roadmaps and practical checklist on how to avoid being sued.

Strategies to maximize the quality and value of a client’s IP portfolio

We exchanged ideas about the various strategies to maximize the quality and value of a client’s IP portfolio, and how strategy can differ for patents and trade secrets (also from an AI perspective), and how it can differ per sector and industry (software, life sciences, energy, art, finance, real estate, defence). We discussed the shift from patents to trade secrets to protect artificial intelligent systems, not being able to stand on the shoulders of giants, caused by legal uncertainty of founders of AI startups, who (including their lawyers) are not completely sure how to protect AI system components such as the inference system. And the risk of (bona fide) independent invention by someone else who opts for the patent route instead of the trade secret strategy, and thus gets the monopoly for 20 years!

AIRecht managing partner and strategic IP specialist Mauritz Kop @ Stanford Law School

International private law-esque phenomena

Moreover, we debated international private law-esque phenomena such as the fact that one State respects the decision or contract signed in another State. Finally, we talked about monopolies, overlap with contract disputes (and angry bosses), New York’s common law, competitive intelligence (and why American VC’s never sign NDA’s), labour and employee mobility in innovations clusters (California and Massachusetts), cultural anthropology and the lack of available empirical data in society’s ongoing quest to reach an innovation optimum.

U.S. Trademark Law – Brand Protection in the U.S.

Leslie Skinner is Managing Counsel in the Intel Legal Trademarks & Brands group. She is responsible for complex licensing and clearance projects, protecting several of Intel’s key global brands, and managing Intel’s anti-counterfeiting efforts.

Leslie gave us a course about trademark law and brand protection (in this case Intel). We discussed the difference between brandnames, trademarks and trade names, durations, expirations of rights and public domain, wizzy names for Intel, hate speech, law & culture, First Amendment rights, the being proactive instead of fixing things afterwards. We also exchanged viewpoints on federal and state marks, and tolerating co-existing marks (which narrows your territory) and the journey that is clearance. Besides that, we talked about the main differences between the scope of a design patent, copyright on expression and trade dress, and if overlap exists.

Copyrights, U.S. Trademark Law – Brand Protection on the Internet

U.S. Trademark Law – Trademarks on the Internet

Kelly Smith. Kelly W. Smith is Managing Counsel at Intel Corporation in the Trademarks & Brands legal team.

Kelly provided us with hands on knowledge about trademarks on the internet. She taught our group about domain name extensions such as .intel, .apple, .tv, .amsterdam and .ai, about licensing TM’s and genericide: the process of the name of a product name becoming genericized i.e. becoming a household name (generic descriptor; the brand becomes a word such as Asperin, Luxaflex, Walkman and Google). Trademark owners must avoid genericide to retain their exclusive IP rights.

Fair use versus parody on social media platforms

Furthermore, we discussed fair use versus parody on social media platforms, Cease & Desist Letters (versus sending an email or talk on the phone about the infringement), criminal offenses in case of counterfeiting (fake trademarks, not fake products), the Lanham Act and explored the question whether there are examples in the Intel intellectual property practice where one would use a combination of IP rights to protect the looks of a product.

Cybersquatting, counterfeiting and consumer confusion

Kelly taught us about cybersquatting (the use of a trademark in a domain name), UDPR cases, consumer confusion, the criteria for a good litigation result and the Anti Cybersquatting Consumer Protection Act, anti-spam measures, WHOIS, the EU GDPR (AVG, Privacy), notice and takedown procedures on Ebay in case of counterfeiting, phishing and other forms of fraud. We explored the question what the most challenging and impactful aspects of trademark and brands are for Intel: clearance, enforcement or licensing.

Did you have your Smog Check? El Camino Real, Palo Alto, Silicon Valley

Design Protection in the U.S.

Lixian Hantover. As Senior Counsel and a Legal Designer at IDEO LP, a global design and innovation firm, Lixian Hantover serves as a bridge between IDEO’s designers and business teams and the diverse group of international IDEO clients.

Lixian gave a lecture (that included a practicum) on design protection in the US. We discussed protection of a bike rack (functional design, so a design patent instead of copyrights), legal design and legal innovation. We exchanged viewpoints about the short lifecycle of todays products, and explored the question if the design patent protection term of 15 years ought be shorter or linger before the design will be public domain, or if this rights’ duration is OK now.

IP Litigation

James Yoon is Partner IP Litigation and Counseling at Wilson Sonsini Goodrich & Rosati. James is a practice development leader of WSGR’s patent trial and litigation practice.

James taught us about IP litigation and patent trails. We discussed searching the proper databases such as Google Patents for prior art, using data (such as Mark Lemley’s Lex Machina), analysis and risk assessment, model the process, perform pre suit diligence, reasonable royalties, the Alice test, starting from the standpoint of winning, gaming the system, using math, tech and big data, what works for a particular judge and preparing the witness (!).

IP Toolkit

From a global perspective, we talked about using the IP toolkit together with rules of international private law (think Apple vs Samsung) about choice (or conflicts) of jurisdiction and choice of forum: in which country i.e. legislation would it be most strategical to sue?

Should AI Inventions be monopolized or public domain?

I asked James (who is a colleague of Tait at WSGR) the following question: In your opinion, should the United States Patent Office -from a policy perspective- accept Machine Made Inventions that do not have any upstream or downstream human intervention? Should these AI Inventions be monopolized or public domain? And if this should be the case, could you imagine any litigation over AI Inventions?

Professorville Historic District contains houses built by Stanford University Professors

IP Licensing and Technology Transfer

Joseph Yang and Nader Moussaby. Joseph Yang is Partner at PatentEsque Law Group, LLP. Joe specializes in structuring & negotiating tech/IP-centric deals (technology transactions, strategic alliances, patent licensing/sales, etc.) and in corporate IP strategy.

Joseph showed us how to navigate US IP licensing law using contracts. He warned us not to confuse the wording in license contracts and to always use the exact statutory words, to avoid invalid patent or copyright license or transfer. We discussed non-competes being impossible in California, the termination of irrevocable perpetual exclusive licenses versus a definitive purchase, as well as avoiding joint ownership of software in an ever changing legal landscape.

Besides that, Joseph (who kindly stood in for his neighbour Nader that day) taught us about provisions that survive after termination of the contract, sharing revenue in joint ventures (instead of rights), asset sales in Mergers and Acquisitions, stock purchase, RTM and spin outs and dual use of IP.

Utilitarian patent theory

I asked mr. Yoon the following question: From a policy perspective, do you think AI Inventions should be public goods and in the public domain the moment the machine invents them, such as a new medicine or technology, because a machine doesn’t need a market driven incentive, and utilitarian patent theory would not apply, nor would natural rights theory? The result would be that third parties wouldn’t need a license to use the invention?

Venture Capital in Silicon Valley

Joe Ross. Joe Ross is Chief Operating Officer and General Counsel at Heroic Ventures, the early stage venture capital firm based in Palo Alto, Silicon Valley.

Joe gave us a course about venture capital in Silicon Valley. He shared his experience as a VC and business owner and delivered expertise & serial entrepeneur insights on providing risk-based capital, the timeline for return on investment, expected profit, signing NDA’s, the role of Angel investors, companies offering a basket of stock/shares to VC’s, software Unicorns and tech startups. We also exchanged thoughts on third party licensing of his company Heroic’s logo versus giving permission to use trademarked symbols and signs.

Company visits to leading Silicon Valley Law Firms, Tech Startups and Multinationals

Silicon Valley Company visits

On top of the US Intellectual Property Law courses, our international group of IP lawyers, counsels and scholars had the opportunity to visit leading Silicon Valley companies the likes of Apple, Facebook and tech start-ups and scale-ups such as Globality. Besides that, we participated in a company visit to Fenwick & West, a frontrunning law firm specializing in Antitrust & Trade Regulation, Intellectual Property, Trademarks and Tradenames, Trade Secret Litigation, Technology Transactions, Private Equity, Patent Post-Grant Proceedings and Privacy & Cybersecurity. The firms professionals provide legal services in industries such as Software, Hardware and Semiconductors, Digital Health, Blockchain, Autonomous Vehicles, Games, Life Sciences and Fintech. Fenwick & West has offices in Silicon Valley, San Francisco, Seattle, New York City en Shanghai.

Human authorship remains the prescriptive, regularizing organ point of intellectual property law (Organ at Hoover Tower)

Palo Alto town, Professorville

One can make lovely walks in Palo Alto and discover the surrounding urbanisations such as the Professorville Historic District. Professorville contains houses built by Stanford University Professors. Homes are made mostly out of wood. Historically, Professorville was the closest area to the campus that was not owned by Leland Stanford. Professors teaching at University who favoured owning land instead of leasing it from the Stanfords constructed their villas here.

Feedback on my research article about AI & Intellectual Property

While at the Stanford’s beautiful campus (rented an electric bike at the Campus Bike Store), I received helpful feedback on my peer reviewed research article ‘AI & Intellectual Property: Towards an Articulated Public Domain’. This article -in the works from February 2019 and published in June 2019- introduces a new public domain model for AI Creations and Inventions that crossed the autonomy threshold (i.e. no sufficient amount of human intervention that can be linked to the system’s (that is equipped with artificial intelligence) output: Res Publicae ex Machina (Public Property from the Machine). This new public domain model builds upon an ancient, sophisticated Roman polygonal property paradigm.

Res Publicae ex Machina

Additionally, the article describes the current legal framework regarding authorship and ownership of AI Creations, legal agenthood, patents and trade secrets on AI Inventions, types of IP rights on the various components of the (autonomous) AI system itself, clearance of input training data and data ownership, from the perspective of a global acquis of intellectual property, as being a set of universal principles that form the normative backbone of the IP system. Besides the introduction of the legal concept of Res Publicae ex Machina (as a generAI Impact Assessmental rule that can have exceptions) of the article concludes that human authorship remains the prescriptive, regularizing organ point of intellectual property law.

The group contained a rich diversity of cultures and nationalities. Giovanna Rotondaro, Camille Marie Louhichi, Caoimhe Stafford & Alisa Alia

AI Impact Assessment

I also had the honour to introduce the ECP AI Impact Assessment to frontrunning companies in Silicon Valley, such as Apple and Facebook, and to present it at the law faculty at Stanford University. The AIIA contains a practical checklist from a legal, technical and ethical point of view (in line with the EU Trustworthy AI paradigm) and a concrete Code of Conduct for data scientists, that can be used when developing and implementing artificial intelligence.

Friendships for Life

In addition to receiving a world-class, super focussed and intensive education in US IP law, we build lifetime friendships and professional connections with our fellow participants. The group contained a rich diversity of cultures and nationalities and included legal professionals from China, Japan, Saudi Arabia, Africa (Ghana), Brazil, Chile, Austria, Switzerland, Ireland, United kingdom, France, Spain, Portugal, Italy, The Netherlands, Canada and The United States (where were the Germans?!). A series of expert meetings annex reunions (in Perugia and Amsterdam) has already been scheduled in 2020!

Intellectual Property at Stanford Law School

USA IP Law at Stanford University

SLS: A World’s Leading Law School at an Ivy Plus League University

IP Certificate Law Program: fundamental concepts of U.S. Intellectual Property Law

Stanford CodeX Exponential Innovations, AI, and Law Bootcamp