Homing in on Crucial Intellectual Property Issues Around the World Susan Marsnik June 5, 2013 1 Comment I began writing this piece in Brussels as i waited for St. Thomas M.B.A. students to arrive for an international contract negotiation project with students from a German university. I arrived in Belgium directly from a research symposium in Ann Arbor, Mich., with some of the top patent scholars in the Academy of Legal Studies in Business. I am writing a comparative patent law article for a book on the impact the new U.S. patent law will have on American business. It struck me that this is a good place to begin discussion of my research on comparative and international business law, not only because I write from a perspective that I hope will be of use to businesses, but also because my research informs my teaching. My work at the Opus College of Business is not my first career, but I have been fascinated with intellectual property law since I wrote my first research paper on fair use in copyright as an undergrad. I’d planned to proceed directly to law school, but because I had developed an interest in the publishing industry, I spent my first ten years after college working in college textbook and scholarly publishing. It was this work, including negotiating international subsidiary rights and distribution agreements, which made me realize the importance of understanding foreign law in international business practices. I pursued my J.D. in the early 1990s, focusing on private and public international law and intellectual property, and practiced with a boutique business law firm in Minneapolis after graduating. It was during that time that I began teaching as an adjunct professor at the University of St. Thomas. I love both teaching and research. My research always follows along two tracks: pedagogy and the scholarship of teaching and comparative law. The first stream helped me to develop my teaching philosophy and what I believe are appropriate projects to prepare undergraduates and graduate students for business careers. I’ve presented this work at conferences in the United States and Europe and am delighted my jury simulation has been used in colleges and universities across the United States, including Wharton’s M.B.A. program. My substantive research has focused on comparative law in the digital age. As people and businesses interact on the internet, knowing foreign laws and the philosophical and historical underpinnings for those laws becomes increasingly important. My first big scholarly piece delineated what U.S.-based multinational employers with operations in the EU needed to know about the European Union Data Privacy Directive. European views on privacy differ substantially from those in the United States. European Law gives people a fundamental human right in data about themselves that protects them from unauthorized processing. This means that businesses and employers must follow very specific rules if they are going to use someone’s personal information, including obtaining permission to do so. Because of my law school training, my co-writers gave me the tasks of researching the historical basis for the Data Privacy Directive and explaining the requirements of the EU law, including how the law varies from country-to- country. The work was important to me professionally, not only because it was published in a top journal, but also because I learned a great deal about European Union law. Data privacy also became a key topic in the undergraduate international business law class when we studied comparative privacy law and how differing perceptions on privacy impact how businesses operate. My research then shifted to international and comparative intellectual property law. For companies based in the United States their intellectual property (patents, copyrights, trademarks and trade secrets) are often their most valuable asset. Intellectual property law, long considered esoteric and outside public scrutiny, has become more and more controversial as millions worldwide download their favorite music and movies without paying the copyright owners and as patented technologies expand to include genetics and inventions implemented on computers or software. Increasingly, the international community has mandated a certain level of harmonization in national laws. I began my comparative intellectual property work in the early 2000s, focusing on copyright in the digital era. Two World Intellectual Property Association treaties designed to address the issue of copyright infringement via the Internet recently had been transposed into national law. I completed one of the first comparative studies of the United States Digital Millennium Copyright Act and the European Union Directive on Digital Copyright. That paper focused on some of the more draconian aspects of the laws, which circumscribe many of the uses we have come to expect, such as use for research, teaching, private use and news casting in instances where the digital content is protected by code. For the last several years, my research has focused on patent law. I began this work with a marketing colleague in preparation for an international conference in Brazil. We compared the development of the pharmaceutical industries in Brazil and India based on how and when each country implemented World Trade Organization requirements for drug patents into their law. One of the most hotly debated issues in patent law has been the proliferation of patents for software and business methods. A colleague from the University of Florida and I recently have published the most comprehensive article on this side of the Atlantic comparing the U.S. approach to patenting software and business methods to how the issues are handled under European law in the European Patent Office, the United Kingdom and Germany. Last year, the United States passed the American Invents Act, our first comprehensive patent reform in almost 60 years. Shortly after the law was enacted, a group of scholars in the Academy of Legal Studies in Business invited me to provide a comparative law perspective in a book project designed to consider the impact the AIA will have on American businesses. Part of the impetus for the book is that much patent scholarship does not provide this kind of business orientation. My work considers changes in U.S. law that allow business competitors to challenge the validity of issued patents at the U.S. Patent and Trademark Office without having to resort to costly litigation. The work compares the new U.S. system with that in operation in the European Patent Office, where post grant oppositions have been useful in weeding out bad patents. It also considers the U.S. system in light of national patent offices in the United Kingdom, Germany, Japan and China, which have abandoned their post grant review procedures in recent years. My research in comparative and international law has opened a world of opportunities to me. Based on this research, I have been invited to teach in Russia, Hungary, France and Germany, and as a Fulbright Senior Specialist at Bene Suef University in Egypt. It also has led to other foreign travel, including Jordan, where I participated on a panel that considered the impact of culture on the development of intellectual property laws at the World Arbitration Forum on Intellectual Property. The forum was attended by academics, intellectual property lawyers and judges from around the Middle East, North Africa and the Gulf. Most recently, I traveled to Beijing, China, this year on a faculty development grant to speak with intellectual property scholars and practitioners. The opportunity to meet colleagues and practitioners from these countries, which are in the throes of developing patent laws appropriate to their cultures and economies in light of international norms, has been both fascinating and instructive and has helped me develop a sensitivity to how those issues play out in their laws. According to my colleagues at the recent book colloquium, I am one of the leading experts in the academy on comparative intellectual property law writing in the United States. Because of its size and relative power in shaping global intellectual property law debates, some believe the United States has set the accepted, international standard for intellectual property protection. I don’t agree. There is much we can learn from how intellectual property laws function in other countries. In the creation of the America Invents Act, many looked to Europe when formulating post grant review procedures. In addition, as countries – such as China, India and Brazil – continue to develop as global economic engines, their laws also will develop in ways that best meet the needs of their economies. Because it is likely some of these countries, particularly China, will have a growing impact on the global intellectual property agenda, it is important to understand the economic and cultural norms driving changes in those countries. I’ve been fortunate to have a number of very talented undergraduate, JD/MBA and law students involved in my work over the years. They have helped me with the discrete pieces of my comparative law research; moreover my comparative work has influenced my collaboration with students on their own research through a number of the Young Scholars and Collaborative Inquiry Grants and/or in their independent study courses. Last year I worked with one of our legal studies in business students, directing her research on EU laws impacting social media. Her paper was selected as a finalist in the Academy of Legal Studies in Business’ student paper contest. She presented the paper at the academy’s national conference in New Orleans. This student has been accepted to the St. Thomas School of Law and it is my hope that this kind of research preparation will serve her well in graduate school. I hope to work with another law major during the coming academic year on a project that considers recent changes in China’s intellectual property laws. Teaching is my family’s “business.” Both of my parents were teachers and the first generation in their families to attend college. They were my role models and played a pivotal role in my decision to become a professor. My dad was one of 13 children and the son of an immigrant from Slovenia. He was one of nine in his family to attend college and become educators. Education was the way he and his siblings moved toward the American dream. My mother also was the first in her immediate family to earn a college degree. She served as an inspiration as well. In addition to teaching, she became a researcher, writing one of the seminal works in listening communications. Both of my parents completed their undergraduate educations at private Catholic schools. I am really proud to be following in their footsteps and that I’m able to teach and research at St. Thomas in the tradition I passed down to me by my parents. In the mid-1980s, while working in the publishing industry in Chicago, I wanted to teach at a college of business and had considered a Ph.D. in marketing at the time. My career, however, took me in a different direction. I’m absolutely delighted it has brought me to teaching in the Opus College of Business, where I have the opportunity to research the law in my areas of interest – areas that I believe will have an impact on the business community. Susan Marsnik is associate professor of Ethics and Business Law at the Opus College of Business. From Exemplars, a publication of the Grants and Research Office. One Response Michael O'Donnell June 10, 2013 Usage note for your headline writers: The correct term is homing in, not honing in. “Hone” means to sharpen. To home in, as a homing pigeon does, means to move toward a goal or to be guided to a target. Example: The heat-seeking missile homed in on the after-burner of the jet fighter.