- R E B E C C A S . E I S E N B E R G

AS A TEENAGER, I HAD A PASSION for studying foreign languages. 1 loved immersing myself in an unfamiliar idiom, struggling to make sense of another system for parsing words and sentences to describe experiences and observations. I reveled in subtle differences in the meaning of words that were sometimes, but not always, equivalents in translation. Most intriguing of all were the occasional insights I gained into the limitations of my own language when I recognized that a foreign locution simply has no English equivalent.

PROFESSOR

OF LAW

A.B. STANFORD

UNIVERSm, J.D.

UNIVERSITY OF

CALIFORNIA

AT BERKELEY

SCHOOL OF LAW

I gave up the study of foreign languages at some point in college, or so I thought. But as I reflect upon what I'm doing in mid-career, I wonder if I've become a lifelong exchange student of sorts, continually struggling to make sense of a foreign idiom, and always trylng to figure out what is getting lost in the translation.

I am trained as a lawyer and have been teachng intellectual property to law students since 1984. Although I think I carry out this job in plain English, other observers might report that I speak some sort of " I P dialect of legalese. But my research continually takes me outside the community of lawyers and h y r e lawyers to attempt conversation with people who work in a very different idiom. I study how intellectual property operates in the setting of biomedical research, and that task brings me into communities of research scientists on a regular basis. Sometimes my formal role is more or less that of a guest lecturer or author, trymg, without benefit of a translator, to make patent law concepts comprehensible to people who don't know my dialect. But once my own presentation is finished, I revert to the role of exchange student, listening or reading along while scientists talk to each other in a language that makes a little more sense to me each time I hear it.

What fascinates me in both of these roles - presenter and observer - is not simply trylng to follow the scientific jargon, nor even the far greater challenge of following the science that the jargon - describes, but rather the challenge of recognizing the similarities and differences in the categories and

I

concepts that are salient in the discou~ses of intelleitual property and research science. Why is it. for example, that a publication announcing the identification and characterization of a new gene may list fifty authors, whle the patent application on the same gene will list only two or three inventors? How is authorship on a scientific publication like or unlike inventorship on a patent application? And what are the implications of these similarities and differences for patent controversies withn the

I

6 THE UNIVERSITY OF MICHIGAN LAW SCHOOL

law npeatedly invokq mctitioner bC 0-

meation in setting legal

Ti sa@ne ewmt, d%zmces in h e vemagdars of k d sdgmce mtreq~ond to cultural differmcm be- hdqstgy ma the academy in biomedical mi. Mmh of my work focused on ehe role of imekle~tud property at the public-private dMde in mmrh science. Recently I served as chair of a wop& p u p on &reh tools for the National Inrdtumgf Wth. h that capacity I spent many h m tdkhg to peuple in universities and p h t e fhp +out difBdties they enc0-r in negotiating wm&y aweable t e n s of exchange for research

1 toot -- maerhls, infomtion, and magents - for use $.bh-cal d. Just ahout evezyone agpes,,that diere is a @-king problem, bur they tell M&mt st& about wrhat the pmblern is, Those who dinimbter the patent system often take it for wed that ownm of inven.Eions will be adequately

I meihwr~d to transfer pmprietary technalogy to , pmen@al users if the s b m high enoughL yet in

this pwtkhr setting, b2cw of baqpining seem ' to be GO- the giuns from exchange. Why are ex- mdmisms that have worked tolerably @l in other fields lais successful in the market for a

I Isjhdical mearch tools? When I left practice for Gsching, I mmed that

afta a few years 1 would be b o d in the Ivory Tow&, too far removed b m emerging problems in the &al world. In practice, I was constantly presented with new problems, and my challenge was to desaibe the issues in a way that made the resolution favored by my client seem like the most

1 modest, unexceptionable increment over prior resolutions of similar problems that had long been settled. In the academy, I feared rhat I would never see a new problem, that I would'instead be doomed to rehaslung old issues, and my challenge would be to repackage old ideas in a way that seemed new and unprecedented.

Instead, to my great delight, the field I observe is constantly presenting new problems, shifting in ways that turn my questions around and reveal new '

angles I hadn't thought of. My telephone keeps ringing, although I have no clients to conuol. how I spin an issue. My greatest challenge is to be sure I understand all that I've heard before I speak, and to be sure that my own words are not mkunderstood.

R O N A L D J . M A N N Assistant Professor of Law B.A. Rice University, J.D. University of Texas, Austin

" A s a a & & q i k & y ~ h a s b ~ o u t h ~ a daunting tau& to a d m t a d the 1 a w - w as- of MotdnologgfmmtheInadeou~Onlllremanythimpthatwe doaslaw-rs, thatienotatpekthatcanbecanfsdvery far sitting at a desl; mading etatutim and judicial decidona AllthatyuucanleambyreadinglawboolrsIs~thelaw~ w l d & d n e s n o t * y o u ~ f s l r ~ ~ ~ t h e induetrywocks,eqdaItyInarapidlydd~sdendfic tleM like bbtedmology. .'Ib master her field, Bedry had to learn not only the law diutektual property (a major task; in itself) b u t ~ t o b e c o m e ~ t l y e s p e r t i n b i o c h ~ a n d molecu larpEaaet tmto~the~thatWnrethe lab --P-e-q-and- inedtudone that coxllldnae die world of biotechnologg.

Wlb~hthattieid,~hasproducedastrlngof Implrwsaee ertbdeg a d y d n g mpny dthe most central bum n l a t i a g t o W o ~ ~ ~ h a s s t 4 l d i e d t o p i E s r a n g i n g d r o m t b e ~ d ~ i n a c a d e m i c a n d comme&dd~mnen@tothescopeofpatent exemp~fw~aOherwrrentwtukonthepolide8 thatjwMjqmbliclundlagofmearch thatcoqebwith p r h n r t e I y ~ ~ e f t o r Q . I n a B o f t h ~ ~ e a r e a b , B e e y s worLhasbmkennewgmund,briugingserio~~thwghtto important topica not p ~ ~ d e d in the &lady literahue.~theseminal~tyofherworkonthoae topics, it isnotan~nto~thatBecJtyhrtsdetIned the field inwhtchshewo~Weareluckytohaveherhem

Wwingdallofthat,considermystateofmindsh~rtiy after1 aeceptedtheDem'soffertocometoMkhigautoteach eoaunerdal traneaEtlcwa About the h e that I decided to come here, I had the novel idea that it would be lntemstbg to start studying Intell- property. I decided that I should call uphb~berg(whomIhadn0tye tmet inauy ~ ~ t w a y ) t o s e e w h a t s b e w o d d ~ a b o u t m y d e d ~ t o w o l i r i n t h r t ~ l ~ ~ t h e c a l l w l t h m m e

trephdon:W111 &e think rninkudiugintoher domainPWtnShe~Icdt ~ h u m e n o u g 8 t o teach intellectual m a t her school? M y concerns wme completely unfounded. Iwasovemhdmed immediatelywith her excitement at the pmpect that one of her adhagum had dedded to study intellectual prom Stnee then,ahehmhonedmy closeat Hen& on the faculty) gtvlng generowdy of her time and e x p d w in the field."

Ira Wnlmlsbia, '98 B.S.E., B.S. tlniversity

"Them have h e n so many gmes and ~ g y r

Rotereor Eismberg lm had an tnffusnta on my law & o o l eqmrienee that.wtrn&Bq tmuk of tbrrn. Of c m m , 31)89 a gnatteacha Beha Wid on Sn he# elasses Is mom like a convma?ion #an as inqukitiun, and in piom through the wred rfte R never afraDd b let us lmow1whm dw thlnkrnt~r mrt has camplat@& bhwn ths @aH.

"She has aloo been among the most accessible of my professon at Michigan: whenever I felt that I needed advise, whether about work, clerkship applications, the bar exam, or law school in general, she has always been willing to make some time to help me.

"Finally, Professor Elsenberg is a superlor legal scholar. Her writings on IP (intellectual propetly) law, her field of expertise, am clear and persuasive and a d d m important issues. l wish emrythin_p I read in law lournas was like thattn