Greg R. Vetter

Advanced Topics in Intellectual Property, Spring 2012

Course Description

A seminar course to study advanced topics in intellectual property law, typically within trade secrets, patents, trademark or copyright. The study is through authorship of a seminar paper.


I need an email from you!

Before the Fall 2011 final exam period starts, please send me an email so I have your email address. This allows me to correspond with you about your topic selection process. In that email, include the best phone number where I can reach you, typically your cell phone number.


Course Particulars and Other Information

Name: Advanced Topics in Intellectual Property
Course # / Section #: 7307 / 16584
UHLC Course Listing:
Place: 113 BLB
Time: Tuesday and Thursday, 4:00 p.m. to 5:15 p.m. (2 class sessions per week, 3 credit hours)
Required Text:

Eugene Volokh, Academic Legal Writing (4th ed. 2010) ("ALW")

Prerequisites Patent law or copyright law or permission of the instructor.
Grading: The seminar paper is graded at each point of submittal. More details forthcoming, but grading includes a component that is sensitive to adherence with process and deadlines.
Brief Description of Coverage: Assignments from ALW will be given as the semester progresses.
Topic approval deadline: I must approve your topic by 12/21/2011, which means I need to receive it before then, preferably many days before then, which gives time for you to adjust it if necessary; but, at the latest, please send it to me no later than 12/20/2011.
First week assignment:

For the first day of class, 1/17/2012, read this course web page and the items linked to it, and re-read Part I of ALW. Be prepared to tell the class your topic on 1/17/2012, along with about 2 or 3 minutes of explanation.

For the second day of class, 1/19/2012, read Parts II through VII of ALW.

Audio Recording of Class Sessions I may audio tape some of the class sessions using a portable recorder attached to my person and post links to the audio tracks on the class web site for the sole and limited educational purpose of allowing students to stream the recorded sessions to review or to enable students who missed a class to hear the class presentation. Any audio tracks created will be deleted and destroyed shortly after the final exam for the class. Since I call on students, there is a slight chance that your contributions to class discussion, whether voluntary or while on call, may be included in the audio recording. The chance is slight because the recording technology I use does a poor job of picking up any voices other than my own. Your continued registration in this class indicates your acquiescence to any such incidental recording for the purposes described above unless, if you have concerns about this, you come speak with me as soon as possible but in no event later than the first day of the second week of class.
Research and Drafting (R&D) Day(s) see course schedule (distributed via email to registered students)
Presentation Day(s) 4/24, 4/26
ADA Whenever possible, and in accordance with 504 of the Rehabilitation Act of 1973 and the Americans with Disabilities Act of 1990, the University of Houston will attempt to provide reasonable academic accommodations to students who request and require them. Please contact student services for more information.
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Contact Information and Office Hours

These are posted on my home page at:

Topic Selection

Although the link below is for a slightly different situation, it has relevant input for topic selection for a seminar paper. Please read it.

Also, for topic selection, please read Part I (pages 10 to 39) in ALW - "Finding What to Write About (The Claim)"

For the seminar course, your topic needs to be approved by me.  It is a research topic of the kind a judge or law firm partner would assign, with a product that reports the authorities.  The focus of the writing is not an essay on your views.

Besides the considerations in the link above, consider these remarks for structuring the paper as an article (not as a “case note”) around a particular case:

Use a recent (past 5 years or so) case of interest. You can then collect the statutory provisions involved, earlier cases in the same area, and follow-on cases that have come down.  High-visibility cases, such as recent Supreme Court decisions, are generally not advisable: (1) they have already been written to death by other scholars; and (2) they impair your ability to get your paper published after the semester ends, if that is of interest to you.

If you like (but there is no obligation to do so), send me your CV and I can consider your background as a part of discussing possible topics with you.

Below is a list of general areas where you might find a topic.  Compared to the large number of possibilities, this is a small list.  Its purpose is to trigger your search.  Also, consider for a topic those areas of IP from past courses in which you are particularly interested in expanding your knowledge.

Possible IP advanced topics:

  1. international exhaustion scenarios (esp. if comparative cases from other countries’ courts can be located)
  1. patent misuse cases of the mandatory package license type; emphasize disappearance of licensee estoppel to challenge validity
  1. remedies for IP licensees, exclusive, partial [field; territory; term-limited] exclusive in all types of IP cases; assume that the IP owner is a party
  1. issue preclusion and claim preclusion in patent judgments (this is a sophisticated area); related subject of who can be bound by an injunction – meaning of “active concert”
  1. trademark disputes over domain names with expansion of global top level domains; trademark use in search engines
  1. fair use cases as applied to colleges and universities (include related subject: experimental use exemption from patent infringement)
  1. on sale and public use of a method claim – when can it be?
  1. degree of quality control needed in a trademark license to avoid abandonment
  1. co-inventor status – how you get it; what are the implications
  1. validity of contracts, under state law, of restrictive or $$ covenants where there is no underlying patent or trade secret
  1. who is bound by an IP injunction? meaning of “in concert”
  1. parameters of the “right of publicity” – esp. news gathering
  1. implied patent licenses – implied in fact; not implied by the facts but forced by estoppel
  1. fair use or implied copyright licenses in web-based materials, esp. photos
  1. conflicts of interest in representing IP clients
  1. issues in the new patent law – the America Invents Act (AIA)
    and for other patent law issues by the same author:   
  1. copyright preemption of trade secrets for software, see: Globeranger v. Software AG, 2011 WL 3586420 (N.D. Tex. 2011)
  1. { more possibly forthcoming }


As much as you can, during topic selection, try to read abstracts of written papers.  Reading a few each day from IP professor authors at is a great place to start.

For example, read the abstracts of the patent law articles by Professor Cotropia, the link to which is here. For a copyright law professor example, try Professor Reese, whose SSRN link is here. For a trademark law example, try Professor McKenna, whose SSRN link is here.


To submit your topic, email it to me. For example:

Subject: Topic for IP seminar, Spring 2012

Professor Vetter:
My seminar paper topic is: The utility doctrine in patent law as applied to the genetics technology of expressed sequence tags (ESTs): the situation since In re Fisher (Fed. Cir. 2005).

A topic is not necessarily a paper title. Thus, don't worry about polishing the wording of the topic. That will come later when you fashion a title for the article. But, make sure the topic is sufficiently narrowed in law and in fact so as to be manageable - which typically means no more than several dozen directly on-point cases, and a few law review articles in the area.


Course Progression and Requirements

The course schedule is distributed via email to registered students.

Here is the Writing Requirements document about how to construct, write and submit the paper, and how it will be graded in the context of a seminar course.

Law Center plagiarism policy.

Law Center policy for seminar paper to meet writing requirement.

{ more items possibly forthcoming}


Some Writing Materials

Professor Post's writing guidelines:

{ more possibly forthcoming}

Paper Publishing

See Part VII of ALW. This is not assigned reading.

Here are additional resources for paper publishing:


Last modified on January 17, 2012, by Greg R. Vetter