Shubha Ghosh Completes Fellowship at Japan’s Institute for Intellectual Property

Posted on Wednesday 12/13/2017

Design is a hot topic of debate for those engaged with intellectual property commercialization. A common definition of design is how a product looks or how it functions. The legal system has divided up design into the areas of utility patent, design patent, copyright, and trademark. However, according to Crandall Melvin Professor of Law Shubha Ghosh, Director of the College of Law’s Technology Commercialization Law Center, current law blurs boundaries among these areas, creating uncertainty for practitioners and policymakers.

In December, Ghosh was invited by the Institute for Intellectual Property (IIP)—an independent policy think tank that advises the Japan Patent Office (JPO)—to study these issues for a few weeks as an Invited Researcher. The fellowship was made possible by the Foundation for Intellectual Property, which supports visits by professors and practitioners from around the globe. 

Ghosh’s invitation to apply for the fellowship led to an application, a competitive review process, and a grant in early 2017. “It was an honor to be selected,” says Ghosh, “and to follow an exciting intellectual opportunity to learn more about a different intellectual property system.” 

During Ghosh’s visit, IIP arranged interviews (and an accompanying interpreter) with staff at the JPO, practicing patent attorneys, and professors in the field of technology management and intellectual property.

His research was the subject of a presentation to 30 practicing attorneys in Tokyo on Dec. 8, 2017, and it will be published as a special report by the JPO in Spring 2018.  Ghosh will also expand his report into a law review article. 3L Lauren Lyons provided background research to assist Ghosh.

According to Ghosh, Japan draws stricter lines among different types of design through a distinction between applied and fine art. The United States lost that distinction decades ago, leading to the possibility that design patent, copyright, and trademark laws are being used to protect what should be the subject of a utility patent. 

“In recent cases, Japan has extended copyright protection to the ornamental design of a high chair and a kimono sash, useful articles that if anything should be the subject of patent law,” Ghosh explains. “Lines are blurring in Japan as they have in the US, but there are useful lessons from the traditional boundaries that Japanese law has been able to draw.”

Wherever design law ends up, concludes Ghosh, it is important for technology and intellectual property commercialization because many creative people seek to obtain a foothold in markets for products that are both useful—and beautiful.