© J. Straus

„Munich Intellectual Property Law Center“

by Joseph Straus

ATRIP Annual Conference Tokyo, August 6, 2003

• Why have a Center?

• Why Munich ?

• The Partners

• For Whom?

• What will be offered?

• Requirements/Time Schedule

The New LL.M. Programme in IP Law

at the Max Planck Institute

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Why Have a Research and Educational Center for IP Law?

• The importance of IP rights has grown enormously

• Number of patent applications doubled in ~ 6 years

• Revenues from patent licenses in the US

• 1980 – 3 Billion US $

• 1997 < 100 Billion US $

• Market value of the US industrial company attributed to plant and goods

• 1980 – 62%

• 1998 > 30%

[Japanese High Tech Sector > 20%]

• Patent infringement suits in US 1998 – 2000

• Lawyers per Billion R & D expenditures

• 1997 – 44

• 1998 – 73

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[US] Universities - New Player in the Game

1974 – 177 Patents

1984 – 408 Patents

1994 – 1.486 Patents

1997 – 6.000 Patent Applications (158 Universities)

1994 – 1.000 Licenses granted

1998 – 3.000 Licences granted

1998 < 600 Million US $ royalties collected from

turnover of 28 Billion US $ 300.000 new

jobs

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[US] Universities New Player in the GameUS PTO Patents Issued on DNA-Sequences in 2000

US Government (NIH, CDC, USDA, DOE) 472

UC California System 399

Incyte Pharmaceuticals 353

John‘s Hopkins University 147

Harvard University 140

MIT 127

Salk Institute 118

Stanford University 108

Human Genome Sciences 107

Washington University (St. Louis) 90

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Universities New Player in the GameConsequences in Germany

• Change of employee‘s inventions law

• Deletion of the „professional privilege“

• Universities can claim all service inventions of all employees

• Specific right to publish or not to publish – has to be observed

• 30% participation from revenues for employees‘

• However – no adequate reflection in IP teaching

activities at university level

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Reasons for a New „Ranking“ of IP Rights

• Revolutionary developments in science and technology –

e.g. the new information and communication

technologies, genetic engineering, molecular medicine –

interdisciplinary approach necessary

• International legal and economic developments – e.g.

WTO-TRIPS, WIPO Treaties, NAFTA, CAN, Mercosur, the

EU-Regulations and Directives – comparative law

approach required

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Why Munich?

• Seat of:

• German Patent and Trademark Office

• German Federal Patent Court

• European Patent Office

• Max Planck Institute (largest specialized IP library - ~

150.000 volumes)

• Large IP bar and patent par

• City with rich cultural history, attractive cultural

programs and located in the wonderful surroundings of

Upper-Bavaria

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• Headed by Managing Committee composed of one Max Planck Director and one Professor of the GWU, TUM, UA

• Controlled and advised by Scientific Advisory Board and Board of Trustees

Technical University of Munich – long standing rich tradition, remarkable number of Nobel Laureates – new School of Economic Sciences

The George Washington University

School of Law, Washington D.C.

University of Augsburg – young and dynamic

Max Planck Institute for Intellectual Property, Competition and Tax Law

The Partners

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MIPLC Milestones

December 2002: Final version of MIPLC Agreement

January 2003: MIPLC website goes live (on GW Law server); Regulations for IP LLM Degree approved by Bavarian Government

February 2003: MIPLC Agreement signed by all four partners; website listed on major search engines

March 2003: Founding Ceremony in Munich; move into Marstallstraße premises; LLM program application form available

April 2003: Begin to receive applications

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MIPLC Founding Ceremony

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Managing Board

Max Planck Institute: Prof. Straus (Chairman)

George Washington University: Prof. Brauneis

Technische Universität München: Prof. Reichwald

University of Augsburg: Prof. Möllers

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Study and Examination Board

Max Planck Institute: Prof. Straus

George Washington University: Prof. Brauneis

Technische Universität München: Prof. Kaserer

University of Augsburg: Prof. Kort

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Two Main Aims

• Education: LL.M. Program in IP & related areas

• Research: Cooperative research with foreign partners

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For Whom?

• Highly qualified and motivated candidates

• Possessing university degree in law, science, economics, etc.

• Having one year of professional experience

• Having basic knowledge of law

• In command of English language [TOEFL - min. 250 Pts.]

• Limited to 30 Students

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Faculty

• Professors – Faculty Members of the four partners

• Distinguished visiting professors from US, UK, etc.

• Judges from German and foreign courts

• Members of the Board of Appeal of the EPO

• Members of the bar, the patent bar, and industry

• Group of tutors

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Faculty

• Prof. Ann-Kristin Achleitner (Technische Universität München) • Prof. Martin J. Adelman (George Washington University Law School) • Prof. Christoph Ann (University of Freiburg) • Prof. John J. Barceló (Cornell Law School)• Prof. Stephen R. Barnett (University of California, Berkley)• Dr. Verena von Bomhard (Attorney at Law, Alicante) • Prof. Robert Brauneis (George Washington University Law School) • Prof. William R. Cornish (Cambridge University) • Prof. Kenneth D. Crews (Indiana University, School of Law) • Prof. Graeme Dinwoodie (Chicago-Kent College of Law) • Prof. F. Jay Dougherty (Loyola Law School)• Prof. Thomas Dreier (University of Karlsruhe)

• Prof. Josef Drexl (Max Planck Institute for Intellectual Property, Competition and Tax Law)

• Prof. John F. Duffy (Marshall-Wythe School of Law, College of William & Mary, Williamsburg)

• Dr. Bernhard H. Geissler (Patent Attorney and Attorney at Law, Munich)• Dr. Heinz Goddar (Patent Attorney, Munich) • Prof. Paul Goldstein (Stanford University) • Mr. Francis Gurry, Esq. (WIPO)

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Faculty (continued)

• Prof. Dietmar Harhoff (Ludwig Maxilimian University, Munich) • Dr. Christopher Heath (Max Planck Institute for Intellectual Property,

Competition and Tax Law)• Dr. Bernhard Hertel (Garching Innovation GmbH, Munich) • Prof. Reto M. Hilty (Max Planck Institute for Intellectual Property, Competition

and Tax Law) • Prof. Bernt Hugenholtz (Institute for Information Law, University of Amsterdam)• Prof. Christoph Kaserer (Technische Universität München)• Prof. F. Scott Kieff (Washington University School of Law, St. Louis)• Prof. Rainer Kolisch (Technische Universität München)• Prof. Michael Kort (University of Augsburg)• Dr. Jürgen Kroher (Attorney at Law, Munich)• Prof. Annette Kur (Max Planck Institute for Intellectual Property, Competition

and Tax Law)• Prof. Michael Lehmann (Ludwig Maximilian University, Munich) • Dr. Matthias Leistner (Max Planck Institute for Intellectual Property,

Competition and Tax Law)• Dr. Silke von Lewinski (Max Planck Institute for Intellectual Property,

Competition and Tax Law)• Prof. Ulrich Loewenheim (formerly J. W. Goethe University, Frankfurt)• Prof. Michael Loschelder (Deutsche Vereinigung für Gewerblichen

Rechtsschutz und Urheberrecht e.V., Cologne)

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Faculty (continued)

• Prof. Thomas M.J. Möllers (University of Augsburg)

• Prof. Dawn Nunziato (George Washington University Law School)

• Prof. Ansgar Ohly (University of Bayreuth)

• Dr. Jochen Pagenberg (Attorney at Law, Munich)

• The Honourable Justice Pumfrey (Royal Courts of Justice, London)

• The Honourable Judge Randall R. Rader (US Court of Appeals for the Federal Circuit)

• Prof. R. Anthony Reese (The University of Texas at Austin)

• Prof. Ralf Reichwald (Technische Universität München)

• Prof. Jan Rosén (University of Stockholm)

• Prof. Roger E. Schechter (George Washington University Law School)

• Prof. Wolfgang Schön (Max Planck Institute for Intellectual Property, Competition and Tax Law)

• Prof. Joseph Straus (Max Planck Institute for Intellectual Property, Competition and Tax Law)

• Prof. Günther Strunk (Technische Universität Illmenau)

• Prof. Robert K. Frhr. v. Weizsäcker (Technische Universität München)

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The LL.M. Program

Duration: 2 Semesters (October to July)

The program offers more than 600 hours of introductory, basic, and specialized courses.

Most courses are taught on intensive module basis of 1-2 weeks.

Requirements for the Master:

20 credit points Basic Courses +20 credit points Specialized Courses +20 credit points Master‘s Thesis (1 credit hour equals 1.5 credit points)

A 4-weeks internship in an IP-related institution is obligatory.

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Teaching Methods

• Predominantly case-based

• Socratic - requiring constant, intensive participation

• Many courses taught in intensive blocks – often more than one instructor

• Attendance of hearings before the Board of Appeal of the EPO

• Internship in the EPO, German Federal Patent Court, Germany based law firms and industry

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Working Conditions

• Class rooms located in the Max Planck Institute

• Fully equipped offices

• Four students in one office

• Library with teaching materials

• Access to the library and documentation of the Max Planck Institute

• Best Munich location

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Curriculum

• Introductory & General & Specialized Courses

• Introductory Courses, e.g.:

• European and international (WTO) law

• Legal tradition (civil & common law)

• General courses in all core areas &, e.g.:

• Protection of Databases, Plant Varieties and Semi-Conductor

• Advertising and Marketing Measures

• Jurisdiction and Conflict of Law

• European and US Competition Law

• Accounting and Taxation in IP

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Curriculum

• Specialized Courses

- Technology and the Law, e.g.: Computer and the Law, Practical Training in IP law, esp. Biotech Patent Law, Patent Prosecution and Enforcement

- Media Law, e.g.: Entertainment Law, Privacy and Publicity, Internet Law

- Entrepreneurial Finance: Entrepreneurship, Venture Valuation

- Innovation and Technology Management: IP Management, Innovation Management and Prognosis of Market Development

- IP and Controlling, e.g.: Methods for Valuation of Intangible Assets in Intellectual Capital

continued

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Curriculum

Introductory Courses

Legal Tradition (Civil Law & Common Law)

Introduction to the structure, historical development, and legal thought of civil law and common law systems; constitutional aspects of the legal system in the U.S., including federal and state legislation and jurisdiction.

Legal Research and Writing

Training in the general skills required in scholarship and the conduct of research, with special emphasis on the differences in legal argumentation between common and civil law systems. Topics include: presentation of written work; citation and referencing; conducting a literature search; essay writing; examination writing; doing a dissertation/research project; preparing seminar/conference papers; and preparing work for publication.

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Curriculum (continued)

Basic Courses

Jurisdiction and Conflict of LawsPrinciples applied to determine the competence of courts and the applicable law under EU and U.S. law, with a focus on IP conflicts; problems arising in the EU under the Brussels Regulation; the specific relevance of jurisdiction matters and conflict of laws in the digital environment; and harmonization prospects.

European and International (WTO) LawThe legal structure of the EU and the EEA, including the legal constitution and tasks of main EU institutions; impact of principles set out in the EC treaty (such as the subsidiary principle, non discrimination and the “four freedoms,“ in particular free movement of goods and services); instruments for harmonization and their legal foundation in the EC treaty. History and background of the WTO treaty; institutions established under the treaty; central principles such as the MFN clause; and legal impacts and ongoing developments.

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Curriculum (continued)

European CopyrightThe theoretical foundation and historical development of copyright in selected EU countries (France/Germany/UK) and differences resulting there from (author’s right vs. copyright systems, monism and dualism); prerequisites and scope of copyright protection and protection for neighbouring rights according to German copyright law, with a comparative view to other EU countries; harmonization of copyright in the EU, including an overview on the existing directives, the state of implementation of the most recent directives, further harmonization projects, and ECJ case law in the field of copyright.

European Patent LawThe present state and future prospects of the European Patent system, including patentable subject matter, patentability requirements, and scope of protection under the European Patent Convention; patent prosecution before the European Patent Office; litigation of European patents, including jurisdictional questions; and an introduction to the proposed Community Patent Regulation and other proposed legislation in the patent field.

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Curriculum (continued)

European, U.S. & International Trademark Law

Acquisition, scope of protection, and enforcement of trademark rights on the basis of harmonized national law in EU Member States as well as under the Community Trademark system, including a survey of ECJ case law and OHIM practice; comparison of EU law with important features of U.S. and Japanese trademark law; international trademark law, including the Madrid system of international registration; provisions of relevance for trademark law in the Paris Convention and TRIPS.

European, U.S. & International Design Law

Protection requirements, scope of protection, and enforcement of design rights on the basis of harmonized national law in EU Member States; the Community design system, including the unregistered Community design; comparison of EU law with important divergent features in U.S. and Japanese design law; international design law, including the Hague system for international deposit of industrial designs, and provisions of relevance for design protection in TRIPS.

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Curriculum (continued)

International and Comparative Patent Law

Study of differences between systems for acquiring patents, including patentability requirements, scope of protection and remedies for patent infringement under U.S. and Japanese law; detailed study of the respective international conventions (TRIPS, PCT, etc.); present state of discussion and prospects for further developments on the international level, e.g. in the context of the Doha round.

International and Comparative Copyright

Introduction to special features of U.S. and Japanese copyright law, as well as copyright law in other selected countries or regions; a detailed study of the international Conventions in the field of copyright and neighboring rights; prospects for further international harmonization, including specific matters of jurisdiction and conflict of laws.

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Curriculum (continued)

Unfair Competition, Advertising and Marketing Measures (I)

EU directives concerning unfair competition, especially misleading and deceptive marketing measures, including e-commerce and commercial communication; Legal underpinnings and jurisprudence of the ECJ.

Unfair Competition, Advertising and Marketing Measures (II)

Further analysis of legal problems in the area of unfair competition and trade practices with a comparative view to the United States, including a survey on protection of geographical indications under EU and TRIPS.

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Curriculum (continued)

European and U.S. Competition Law

Survey of the statutory basis, policy aims, and mechanisms of German, European and U.S. competition (antitrust) law, in particular with regard to the IP/competition law interface; includes a detailed survey of the relevant practice of competent authorities and courts under European and U.S. law.

Licensing of IP Rights

The legal context of licensing situations; appropriate terms and conditions in contracts; antitrust and misuse constraints; choice of law; jurisdiction.

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Curriculum (continued)

Specialized Courses

Arbitration

Arbitration law and strategy, including international conventions controlling recognition and enforcement of arbitration awards; mediation and other forms of ADR, including online dispute resolution in domain name conflicts (UDRP).

Protection of Databases, Plant Varieties and Semi-Conductors

Comparison of the different regimes of sui generis protection for databases, plant varieties and semiconductors, including EU law, American law, and relevant international conventions. Particular focus on database protection, including the emerging case law in EU countries; problems with respect to competition aspects; and the debate about the appropriateness and feasibility of database protection.

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Curriculum (continued)

Computers and the Law

Intellectual property rights in software: comparative analysis of copyright protection for computer programs and patent protection for computer implemented inventions under U.S. and European law, including discussion of public policy issues such as open source code vs. proprietary systems; specific problems in software contracts; acquisition of rights in programs developed in an employer/employee relationship or in larger teams; regulation of e-commerce in the EU.

Practical Training in European Patent Law, especially Biotech Patent Law

Application of the theory of European and international patent law, especially biotech patent law, to practical cases, including discussion and analysis of recent decisions; training on practice cases; patent granting procedure before the EPO; claim drafting practice; and discussion of special problems, such as those deriving from the nature of subject matter to be patented.

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Curriculum (continued)

IP Prosecution and EnforcementSanctions and enforcement in IP law, with a special view to patent prosecution under German, European and U.S. law; policy and practice considerations in the enforcement of patents and other IP rights; survey of EU legislation on customs control and seizure, as compared to the situation in the U.S., and on pending EU legislation with respect to sanctions for IP infringement.

Entertainment LawParticular problems related to the rights of performing artists and producers in the entertainment industry, including a comparison between the situation in the U.S. and the EU, inter alia with respect to the relative strength of the parties involved, as reflected e.g. in collective agreements and the role of trade unions, branch organizations etc.; problems of international contractual law in the entertainment industry; protection of merchandising property.

Privacy and PublicityProtection of privacy, including protection of private data; personality merchandising under U.S. law with a comparative view to relevant EU legislation as well as national law in selected EU countries, particularly in Germany and in the United Kingdom.

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Time Schedule

• Deadline for applications May; open end in 2003

• Admissions July; open end in 2003

• Begin of Semester October 2003

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Exams & Diploma

• Written and oral exams – 48 ECTS Points

• Master Thesis

• Diploma issued by University of Augsburg in co-

operation with GWU, TUM and MPI

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For Free?

• Unfortunately not

• Tuition 23.000 €

• Lodging secured for a limited number of students

• Social events organized

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Thank you

and see you in Munich next Fall!

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Curriculum (continued)

Taxation of E-Commerce

Entrepreneurship

Broad coverage of entrepreneurial issues in privately held companies, focusing on fast-growing high-tech ventures where firm value is highly dependent on intellectual property, with particular attention to start-up financing. The course combines lectures and discussions with expert guest speakers.

Managerial Finance

Introduction to financial management issues in companies, most importantly financial statement analysis, financial planning and corporate control, with special emphasis on management issues of intellectual property companies. The course combines lectures, discussions and case studies.

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Curriculum (continued)

Start-up Companies & Intellectual Property

Intangible Assets Valuation

Consideration of approaches to the valuation of various types of intangible assets, such as patent rights, copyrights and brand names, in the course of licensing negotiations, valuation of start-ups, mergers, acquisitions, and general strategic planning. Emphasis is placed on a detailed understanding of theoretical underpinnings as well as the actual execution of IA valuation tasks. Practitioners from the IP community will be involved to provide hands-on experience in asset valuation.

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Curriculum (continued)

Current Issues in IP Management (I)An introduction to appropriate techniques for managing, valuing, selecting and processing intellectual property projects, based on the premise that intellectual property is in fact created through projects, such as research projects that lead to patents. The course will combine lectures, discussions and case studies.

Current Issues in IP Management (II)

Innovation & Technology Management

Innovation PolicyAnalysis of the theoretical rationales underlying innovation policies and the institutional implementations of those policies in various nations and supranational organizations, including consideration both of the crucial roles of intellectual property rights systems and of the problems they create. Consideration of intellectual property systems in conjunction with other elements of innovation policies, such as subsidization of R&D, tax incentives for innovation activities, and preferential treatment of particular sources of finance (e.g., private equity, small business loans for innovation projects); quantification of the economic effects of these policies.

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Curriculum (continued)

Practical Training in Media Law

Practical cases in media law, with a special view to problems occurring in a networked environment. Drafting of contracts, in a national as well as an international context; implications of legal choices in a variety of regulatory frameworks for the production and transmission of protected content; problems resulting from technical protection measures with respect to access to information; discussion and analysis of recent decisions and legal developments, e.g. with respect to the EU-Infosoc directive.

Advanced Copyright Problems

Analysis of problems in selected copyright and adjacent areas, such as overlaps between copyright and other types of IP rights, and the consequences of media convergence; public policy aspects such as the recent debate on public domain; practical issues such as digital rights management in an international environment.

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Curriculum (continued)

Internet and Communication Law

Law and institutions governing telecommunications as well as internet structures, particularly in the U.S.; liability of ISPs, legal regulation and practice with respect to typical internet problems such as spamming, linking, framing; domain name conflicts and other types of IP infringement related to the internet; jurisdiction issues.

Taxation of Intellectual Property

Domestic and international aspects of intellectual property taxation; tax treatment of royalties and artistic or scientific services; EC developments.