shutterstock_400002814puresolution
5 August 2020Influential Women in IP

Career series: Sarah Burstein, University of Oklahoma

How did you become a professor of law?

I went to college to become a graphic designer or a photojournalist, so I majored in art and design, and later added a second major in journalism and mass communication. The latter required me to take media law and, when the course was done, my professor told me to go to law school.

Next semester, I decided she was right. I knew from her class that I liked copyright, trademarks, and advertising law. After law school, I ended up doing IP (mostly utility patent) litigation. I learned that design patents existed while I was thinking about trying to make the switch to law teaching.

Outline a typical day in your role.

On teaching days: I prepare for class (re-read the cases, make or update slides, etc), attend various meetings, read and respond to lots of emails, and teach. If I’m lucky, a student will pop into my office or stay to chat after class. They always think they’re imposing but actually it’s one of my favourite things. On writing days, it varies depending on what I’m working on, but it’s a mix of research, thinking, and actual writing.

What are the best parts about your job?

My students.

What is the most difficult part?

Trying to find balance is the most difficult part of my day. Between teaching, scholarship, and service, it always feels like there’s something more I could or should be doing.

Have you faced any barriers or challenges in your career?

Hasn’t everyone? For example, I’ve been told “no” so many times I’ve lost count. “No, art majors can’t go to law school.” “No, you can’t do copyright without a technical background.” “No, you don’t have the right CV to be a law professor.” On and on and on—I’m glad I persisted.

What is your biggest achievement?

Professionally, it was probably being cited (and followed) by the  US Court of Appeals for the Federal Circuit last year, in Curver Luxembourg v Home Expressions. It was an issue I really care about and I feel that my work made the law better, if only a little bit (see details below).

“I’m always looking for ways to get my students hooked into professional networks, to help them learn the things I didn’t know when I started” – Sarah Burstein






What advice would you give to someone looking to pursue a similar career path?

Don’t be afraid to ask for help. There are so many great people who are generous with their time and I wish I’d reached out more. And yes—feel free to reach out to me.

Who or what inspires you?

On a daily basis, it’s my students. Their passion, their insights, their drive—they keep me going when things get rough.

What was your most unusual job before becoming a law professor?

Probably being a college photojournalist. I spent a lot of time in college photographing concerts, football games—you name it.

Women in law

What are the major issues facing women in law?

There are so many things! In my small area, design patent law, the so-called “patent bar” is a real barrier. Many people like me are shut out of the system because they don’t have the “right” background—even though we do have the background you need to be a design patent examiner.

It disproportionately affects women: Jeanne Curtis & Chris Buccafusco have written a great paper on that.  In “ The Design Patent Bar: An Occupational Licensing Failure”, published in the Cardozo Arts & Entertainment Law Journal in 2018, Curtis and Buccafusco argue that the  US Patent and Trademark Office’s (USPTO) rules produce a disparate impact on women’s access to a lucrative part of the legal profession, and offer two proposals for addressing the harms caused by the current system.

“By limiting design patent prosecution jobs to those with science and engineering credentials, the majority of whom are men, the USPTO’s rules disadvantage women attorneys,” says the abstract.

Is the legal profession doing enough to improve gender diversity?

No, but I’m heartened to see some people trying. The  International Trademark Association’s (INTA) Women’s LeadershIP initiative, led by INTA president Ayala Deutsch, is encouraging. I look forward to seeing where she goes with it.

Rolled out on International Women’s Day—March 8, 2020—the initiative is “designed to foster the development of strong leadership skills for women in the IP field”.

How are you involved in promoting diversity?

In addition to getting involved with efforts such as the Women’s LeadershIP Initiative when I have those chances, I’m always looking for ways to get my students hooked into professional networks, to help them learn the things I didn’t know when I started. In my writing, I’m trying to be more conscious about who I cite—trying to make sure I cite a wide range of voices and experiences.

In my latest project, an open-access patents casebook, my co-authors and I are trying to be very intentional about that, too. So if anyone knows great scholars we should be citing, please let me know!

The  US Court of Appeals for the Federal Circuit cited Burstein’s article, “The Patented Design” (83 Tenn. L. Rev. 161, 212 [2015]), in a design patent infringement decision.

The Federal Circuit upheld the dismissal of a design patent lawsuit that household products maker Curver Luxembourg brought against Home Expressions over storage baskets. Curver alleged that Home Expressions made and sold baskets that incorporated Curver’s design pattern and infringed its D677,946 design patent for a chair.

The Federal Circuit quoted Burstein’s argument that particular designs—even those that are patented—should remain free to be adapted to different types of products.

The Federal Circuit upheld the ruling of the US District Court for New Jersey, which held that claim language specifying a particular article of manufacture (a chair) limits the scope of the design patent in cases where “the claim language supplies the only instance of an article of manufacture that appears nowhere in the figures”.

Already registered?

Login to your account

To request a FREE 2-week trial subscription, please signup.
NOTE - this can take up to 48hrs to be approved.

Two Weeks Free Trial

For multi-user price options, or to check if your company has an existing subscription that we can add you to for FREE, please email Adrian Tapping at atapping@newtonmedia.co.uk


More on this story

Influential Women in IP
3 August 2020   Law firm Allen & Overy has set new diversity targets after research revealed that black and ethnic minority lawyers had shorter tenures at the firm when compared to their white counterparts.
Influential Women in IP
7 September 2020   Jayne Durden, vice president of law firm strategy at Anaqua, tells WIPR about her motivation to help companies achieve their goals in a simpler way, and her determination to mentor and encourage her younger peers.
Influential Women in IP
17 August 2020   The proportion of women appointed as arbitrators almost doubled between 2015 and 2019, a new report from the International Council for Commercial Arbitration has revealed.