3 Questions For IP Law Professor Jacob Sherkow

Gain some insight from an up-and-coming IP personality with a big role to play in developing the next generation of IP lawyers.

Professor Jacob Sherkow

There is a new breed of IP-focused academics, and one of the leading young voices on the life sciences patent side is newly tenured Jacob Sherkow, an associate, and soon to be full, Professor of Law at the Innovation Center for Law and Technology at New York Law School.  A former Biglaw patent litigator, Professor Sherkow teaches IP law and is frequently quoted by major news organization on patent matters. (He is also a bit of a competitor to us at Markman Advisors due to his advising of hedge funds on biotech patent issues — but the tent is a big one, and the need for informed patent advice in the investment community is acute. It is fun and valuable work, and we always encourage investor clients to seek out as broad a base of opinions as possible.) As usual, I have added some brief commentary to Professor Sherkow’s answers below, but have otherwise presented his answers as he provided them.

Immediately below are my written questions and Professor Sherkow’s answers:

  1. Congratulations on achieving tenure.  As a legal academic, do you feel that we are progressing to the point where all law school graduates should leave school with some degree of IP literacy, whether as a result of taking a mandatory IP survey course or otherwise? Should law schools be working with colleges and universities to develop introductory IP-courses for business students?

Thanks. ​I think it would be an act of self-sabotage, if not malpractice, to graduate law school without taking a single IP course. This isn’t just because it’s the one field that seems to be exploding relative to the rest of the legal market, but because it comes up, in some form, in almost every practice area. Going to do Biglaw? I’ve got $20 in my wallet that says you’ll eventually work on an IP case. You’re a tax person? The tax implications of IP royalties are important for many businesses. Trusts and estates? What about copyright ownership after death? Criminal law? You may have a criminal counterfeiting client. And this doesn’t even include being a “traditional” IP lawyer.

I don’t think it’s necessary to start this training in an undergraduate setting, but that doesn’t mean we should discourage undergraduates from studying these subjects. One of the best IP students I ever had was an undergraduate who, aside from basic career advice, wanted to discuss with me some really nitty-gritty details about a patent licensing case. Honestly, she knew more than I did. She went to law school and is now a fellow at the Berkman Klein Center for Internet and Society at Harvard. She’s a rockstar. You’ll hear about her awesome career soon enough.

GK: I definitely agree with Professor Sherkow on the absolute importance of law students acquiring some basic literacy in IP law before graduation. I also agree that an IP-focused class is less essential at the undergraduate level, but I also think a cogent argument can be made that acquiring a degree of IP literacy can benefit students at the high-school level and higher — and may even encourage more people to consider a career in IP law as their academic careers progress.

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JS: I think that’s right. I was first exposed to patent law in high school — thanks to my high school teacher Mr. Erik Sloate — and have been excited about it since then. That may be pretty idiosyncratic, but I’m an idiosyncratic guy.

  1. One of the joys of studying IP law is the vast array of legal issues one is confronted with, on top of the frequent case law developments that help reorient the legal landscape for IP practitioners on a regular basis. Is there one area of IP law that you have found to present a pedagogical challenge for you in teaching your students, and if so, how do you try and address that issue?

​Within the otherwise​ arcane world of patent litigation, there’s a species of it — Hatch-Waxman Act litigation — that concerns how patent cases between brand pharmaceutical companies and generics get litigated. The rules are downright Byzantine — I got stumped on what I thought was a basic question about forfeiture the other day — and that kind of complexity is incredibly difficult to convey to students in a 55-minute course hour. For areas of law with significant strategy concerns and procedural complexities, I think it’s best for students to learn by doing: to ask students to strategize a case and then, invariably, to show them the pitfalls of that strategy. We begin with complex cases — the more complex the better — and then me asking students in class to play lawyer: “What would you do?” If things go well, we’ll hit all the dead ends. I think this teaching method allows students to both understand the statutory regime and for them to see where the gaps remain. And yes, it’s Socratic. But it’s a lot more instructive and entertaining then me standing up there and lecturing like Ben Stein in Ferris Bueller’s Day Off.

GK: This resonated with me as I was coming off trying to engage my high-school students with a lecture of how a lack of enablement finding wiped out Merck’s multi-billion dollar jury verdict against Gilead on a Hepatitis C treatment patent. But Professor Sherkow gets it right. The best way for budding (and actual) IP lawyers to learn is by “doing,” i.e., challenging themselves to analyze a complex issue in a classroom setting, under the guidance of a skilled teacher.

JS: Just like engineers: design, build, test, fail, repeat.

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  1. What do you think is the most exciting patent case (regardless of forum) happening right now, and what should practitioners be looking out for in that dispute?

​I think the CRISPR patent dispute is the most exciting patent case out there now, but that shouldn’t surprise anyone who knows me. CRISPR — if you don’t know — is a revolutionary gene-editing technology that’s widely perceived as the “holy grail” in molecular. It allows scientists to edit genes with incredible precision, directly in the DNA of living cells — not just a test tube. Beyond this basic gene-editing function, CRISPR can also be used for some incredibly amazing applications, such as screening thousands of genes at the same time for new therapies, or creating a super-cheap and astonishingly sensitive DNA forensic tool.

In the U.S., the CRISPR patents were the subject of something called an interference proceeding — essentially a dispute at the PTO over which inventor actually invented the technology first — which was decided in February 2017. That’s being appealed to the Federal Circuit right now and we’re waiting on an argument date. The Federal Circuit decision may very well decide who controls the foundational IP around this technology in the U.S.

There’s a similar dispute in Europe, where one of the litigants, the Broad Institute of MIT and Harvard, recently had its patents revoked due to a deficiency concerning which inventors were listed on an earlier application. That’s being appealed, too, although the patent situation in Europe is more fractured.

Life science practitioners should be watching these disputes — although, frankly, every IP attorney in the bio-space that I speak to knows the case well. It’s like this season of The Challenge: everyone’s watching it.

GK: Reminding everyone that the CRISPR saga continues is a good call. As one of the final interferences handled by the PTAB, it was fitting that the case presented such high stakes. I agree that the Federal Circuit appeal will be one of the more closely watched cases going forward, and think it will be very interesting to watch how the CRISPR patent estate — regardless of owner — continues to grow as the usefulness of the technology increases over time.

JS: Thanks, Gaston.

My thanks to Professor Sherkow for the insights and cooperation, and I wish him continued success and fulfillment with his academic career. It is always a privilege to hear from an up-and-coming IP personality, especially one with such a big role to play in developing the next generation of IP lawyers. I am always open to conducting interviews of this type with other IP thought leaders, so feel free to reach out if you have a compelling perspective to offer.

As a final note, we are entering a busy season of IP-focused conferences. In my experience some of the best IP-related conferences are put on by organizations in the IP media-space, such as Managing Intellectual Property (MIP). For those interested, MIP’s US Patent Forum 2018 is open for registration here. The event is free to attend for in-house counsel, and the agenda looks ambitious and interesting. If you are planning on attending the event as I am, please reach out as I would be keen on meeting readers of this column in-person.

Please feel free to send comments or questions to me at gkroub@kskiplaw.com or via Twitter: @gkroub. Any topic suggestions or thoughts are most welcome.


Gaston Kroub lives in Brooklyn and is a founding partner of Kroub, Silbersher & Kolmykov PLLC, an intellectual property litigation boutique, and Markman Advisors LLC, a leading consultancy on patent issues for the investment community. Gaston’s practice focuses on intellectual property litigation and related counseling, with a strong focus on patent matters. You can reach him at gkroub@kskiplaw.com or follow him on Twitter: @gkroub.