On Friday, April 10, 2015, Thomas Jefferson School of Law IP Honors Students presented ‘Fulfilling the Commercialization of the Bayh-Dole Act,’ a symposium illustrating the existing challenges in Technology Transfer Offices (TTOs) and how law students can facilitate the commercialization of federally funded research.
“The Bayh-Dole Act allowed universities and small businesses to elect ownership of inventions made under federal funding,” said IP Honors Student 3L Jermina Landstrom. “If an organization decides not to elect title on a patent, the federal agency that awarded the federal funding has the option to take title. If they chose to elect title the inventor is guaranteed a portion of any royalties.”
“What we’re hoping to accomplish is to create a program called Legal Connect, where we can place our students and those of Cal Western and USD in university incubators and tech transfer offices, that this is what this is about,” said Professor Randy Berholtz.
The symposium consisted of four panels: the first panel provided background on the Bayh-Dole Act; the second panel explained how TTOs are meant to facilitate the commercialization of discoveries for the benefit of the public by handling patent filings, marketing, and licensing, in addition to generating income to further research; the third panel presented several approaches to resolve the challenges TTOs face; and the fourth panel described the proposed Legal Connect program.
The panelists included the heads of TTOs at the University of Massachusetts Amherst, UCSD, UCI, San Diego State University, and Emory University. Partners from Knobbe Martens Olsen & Bear, Wilson Sonsini Goodrich & Rosati, and Mintz Levin Cohn Ferris Glovsky and Popeo, P.C. also provided students and attendees with valuable insight about TTOs and what law schools can do to meet their demands.
“The data shows that the new trend is law schools forming their own externship programs through which they place students. More schools want to get involved with those programs,” explained IP Honors Student 3L Alesya Nalbandyan. “TJSL Professors Judybeth Tropp and Randy Berholtz have placed 3 to 5 students a year in TTOs. We are an example of a school that does not have a program but selects students for field placement.”
The culmination of a year-long research project, the symposium was organized by IP Honors Students Tony Rafati, Rachelle Law, Theodore Montgomery, Alesya Nalbandyan, Tamara Marshall, Jermina Landstrom and Mark Hackmann. The result of their research is Legal Connect, an externship program modeled after a non-profit law firm that will provide university technology transfer offices and incubators with students and IP lawyers. Legal Connect will allow students to earn academic credit while developing legal and professional skills under the supervision of experienced faculty partners and volunteer attorneys. “With Legal Connect we want to bring law students into the tech transfer process, to catalyze innovation, essentially to increase innovation at universities,” concluded IP Honor student 3L Tamara Marshall.