O'Connor, S M --- "Teaching IP from an entrepreneurial counselling and transactional perspective" [2008] LegEdDig 33; (2008) 16(3) Legal Education Digest 12

• Teaching IP from an entrepreneurial counselling and transactional perspective

---

Teaching IP from an entrepreneurial counselling and transactional perspective

S M O’Connor

52 St Louis U L J, 2008, pp 1–14

The 2007 Carnegie Foundation report Educating Lawyers confirmed what many of us had already known: excessive reliance on the traditional Socratic dialogue, appellate case method approach to legal education fails to: (1) introduce students to the nature of actual law practice; and (2) train students to think about their future clients’ situations ethically and holistically.

I have taken to counselling students that there are three primary areas of specialisation under the general rubric of IP practice: (1) prosecution/registration/filing; (2) litigation; and (3) transactional. The first can operate as a stand alone specialty more usually for patent prosecutors because of the rigorous nature of the patent examination and issuance process with the U.S. Patent and Trademark Office (PTO), and less usually for copyright or trademark attorneys because the registration process with the Copyright Office and PTO, respectively, is less rigorous, to varying degrees, than patent prosecution. By contrast, IP litigation either across the IP areas, or within any particular one, can be a standalone practice specialty area. A number of years ago, the prosecution/registration and litigation subcategories may have been seen as constituting a more or less exhaustive taxonomy of IP specialists. The counselling or licensing components could have been collapsed under one or both these traditional subcategories. However, the rapid emergence of IP and technology transaction practice groups at law firms, as well as the dramatic increase in professional programs and materials directed towards IP licensing and technology transactional training, demonstrate the arrival of the IP licensing/transactional subcategory as a stand alone practice area.

At the same time, actual practicing attorneys may embrace one or more of these subcategories. Doing all three well simultaneously may be less common because the transactional mindset and skills can be so different from those of the litigator. Yet, regardless of whether in practice attorneys can combine all three subcategories, they remain different areas for purposes of teaching IP in the law school environment. Accordingly, to the same degree that IP survey courses attempt to cover all areas of IP at some basic level, those courses should also introduce students to the three subcategories of practice areas.

One additional critical perspective must be considered: that of the industry focused attorney who does not limit her practice to a traditional legal practice type (e.g., litigator, transactional) or substantive area (e.g., contracts, torts, employment law), but rather cuts across a number of these areas to act effectively as general counsel to individuals and businesses in a particular industry (e.g., biotechnology, construction, media). Educating and training students to prepare for this sort of role requires academic instructors and/or mentors who are equally industry focused and can help the student coordinate classes to learn at least the substantive law areas that will arise during her practice.

At the highest level of abstraction, the issues can be aggregated together as a challenge to explain to students three critical perspectives on how they should be thinking about their education and career in IP law. First, students must be made aware of the rough definitions and boundaries of the different substantive IP areas — patents, copyrights, trademarks, and trade secrets. This is done easily enough in a good IP survey course. Second, students must be introduced to the nature of different types of practice within or across the substantive areas of IP — prosecution/registration, litigation, and transactional. This can be done in IP survey courses or stand alone ‘silo’ courses in the substantive areas, but it requires deviation from exclusive reliance on the traditional appellate case method. Further, it is quite helpful for the students if someone can explain to them, roughly, the different sorts of temperaments that suit these different practice types. Third, and most challenging to the scope of an article about teaching IP, students must be introduced to the notion of industry focused practice. After all, many of our incoming IP and/or technology law focused students already have backgrounds in a particular art/science/technology/industry and loosely envision becoming lawyers in that ‘space.’ In my counselling discussions with many of these students, I often find that they were inchoately thinking of the company general counsel type role in their art or industry area. Or, they would like to represent artists, inventors, or entrepreneurs, without exactly knowing what they mean by ‘represent.’

Some students, of course, are truly interested in litigating the issues in various IP, art, and technology related areas such as privacy or the public interest. For these students, the traditional appellate case method approach may work quite well. Thus, the remainder of this article is not focused on these students, as they are arguably already adequately served. Because my main research interests lie in entrepreneurship and innovation law, the courses and clinics described below are biased towards that angle.

After my move to the University of Washington School of Law, I was able to bring to fruition a trio of curricular innovations to introduce students to the substance and practice of representing entrepreneurial and innovation-based organisations. The first is exemplified in the IP Core course I created with Dan Laster and Bob Gomulkiewicz in 2003, and have happily co-taught with Dan for four years now. In short, it is an IP survey ‘on steroids’ crafted primarily for our incoming IP LL.M. students, whose widely varying backgrounds require a boot camp type course to provide a launch pad for the structured trajectory of the LL.M. program. The main theme of the course is to teach students to think holistically about a client’s actual problems and innovations, outside of substantive IP categories, so that they can effectively counsel the client as to legal strategies to optimise the value of innovations that often defy pigeonholing into any one substantive area. The second innovation is comprised of a set of courses and lectures for both non-IP focused law students and graduate students from across campus. This initiative focuses on how to convey the important principles and practical strategy issues that general practice attorneys, business executives, and entrepreneurs/innovators need to know about the IP system. The third innovation is the Entrepreneurial Law Clinic (ELC), which I founded in 2005 to bring a counselling and transactional focused clinic opportunity to law and business students.

There are two basic components to IP curriculums in U.S. law schools.

My perspective is that both the traditional survey and silo approaches create limitations for students’ ability effectively to sequence courses, especially if they want to train across more than one area of IP. Further, my opinion is that many new ideas and innovations neither present themselves as, nor fit comfortably within, siloed areas of IP.

At University of Washington [UW], we also faced two other challenges as we began our IP LL.M. program in 2002–2003: (1) we wanted to provide a structured program that was not simply a second chance to take existing J.D. IP courses; and (2) every year we have a very diverse range of incoming students.

Creating a program taking into account the foregoing was indeed challenging. Because this is not an Article about IP LL.M. programs, I will not go into detail about all aspects of the program we created. Rather, I will describe one foundational part of our solution, the IP Core course. At eight credits, this is a hefty course, even set in a quarter rather than semester system. It meets four days a week, for two hours each day. Technically, my coinstructor, Dan Laster, and I split the credits, which means that in theory it should only be a manageable four credit course load for each of us. However, a key part of the course is the interaction that Dan and I have in the classroom. While one of us is always the lead instructor for any given session, the other frequently attends the session too and critiques or expands upon points made by the lead instructor.

Equally important to the structure and content of the class are our constant efforts to compare the different areas of IP to show how similar devices — e.g., fair use and research exemptions — can work quite differently in each area. We continually emphasise the different mixes of common law property, contract, and tort that underlie the different areas of IP. At the same time we constantly pull in other areas of both federal and state law — e.g., antitrust, contract, unfair competition, tort — to demonstrate that successful counselling and strategising must take these areas into account. We use Merges, Menell, and Lemley’s IP in the New Technological Age, because it has excellent chapters for these ‘fringe’ areas as well as enough depth in each traditional IP area to go beyond what would normally be covered in a standard three to four credit IP survey course.

The deep motive force for IP Core is the development in students of an appreciation and understanding of the apparently endless wellspring of human creativity in all its forms. From that critical starting point, we then constantly use practical real or hypothetical scenarios to challenge the students to think creatively as to how to help the idea’s creators (or, sometimes, other owners) develop sensible legal and business/commercial strategies to refine the idea into aesthetically and/or commercially useful artifacts or services that can be transmitted to the world. We use a number of interactive role playing exercises, drafting exercises, and graded exercises throughout the course that help inculcate in the students an ability to counsel innovators and entrepreneurs. IP Core has been in such high demand from our J.D. students that this year we are introducing a version primarily for them. It will replace the existing siloed introductory courses.

Because we already had a robust set of offerings for IP focused law students when I arrived at UW Law in 2003, it occurred to me that we ought to tailor the existing IP Survey, which I was designated to teach, to meet the needs of law students who were not considering a career in IP law, but who intended to work in fields where glancing knowledge of IP would be an asset (e.g., business law). Later, I took my thoughts about this division of the student population to the next level when I reduced IP Survey to two credits after my first year or two of teaching it. I decided that it was critical to be able to range from delivering the utmost basics of all areas of IP for the lay person in a single hour, at one extreme, to delivering a sustained, intense cross-IP course for the practice-oriented such as IP Core. IP Survey would then represent an intermediate point on this spectrum. Based on interest across campus, I also opened up IP Survey to non-law graduate students.

I developed a particularly close relationship with UW Business School’s Executive Education and Center for Innovation and Entrepreneurship (CIE) programs. Specific to the teaching focus of this article, I have created cross-IP content mini-courses for the Executive MBA, Entrepreneurship Bootcamp, and Corporate Directors College programs. These teaching exercises have been extremely valuable to help me understand how to teach IP from a business and strategic perspective. This understanding has helped me further push law students to understand the business and strategic dimensions of IP management — a skill that will enable them to relate far better to the mindset of their future clients.

This counselling and strategic planning perspective is perhaps best exemplified by my longstanding course, Biotechnology Law.

In essence, Biotechnology Law is exactly the kind of industry practice focused capstone course I believe is called for in the Carnegie Foundation’s Educating Lawyers. It calls on the students to integrate a number of substantive law areas (not just IP, but also for example, business law, tax, employment law, and food and drug regulatory law) while focusing on how those areas work with regard to that industry (e.g., the particular quirks of biochem patent law). It also then requires the students to consider how they would apply these areas of law to counsel a client who is trying to operate in this industry. When I use actual biotech companies as the course case study, I invite in attorneys who have worked with the company (in-house or external) to talk about specific legal issues the company faced. Thus, this course represents almost a kind of practicum or simulated clinic to prepare the students to work with real clients in the industry space.

The most salient points about the ELC for this Article are the following. First, the ELC fills a much needed gap in clinical opportunities at UW Law School in that it is the only transactional and counselling focused clinic, and it is the only clinic that allows IP students to work directly with clients in business settings. Second, the ELC gives IP students an excellent opportunity to apply directly the substantive IP knowledge they are learning in the classroom to actual clients who often really just need a primer on IP to figure out where to go next with their entrepreneurial vision. At the same time, the IP students must engage in this counselling with an understanding of the client’s whole vision, and in coordination with the counselling being provided by the business law, tax, and MBA students. Thus, the IP student is forced to think beyond the narrow confines of IP law in counselling the client on IP strategies. This directly applies to the Carnegie Foundation’s call for more direct practical training of law students in the form of capstone integrated courses and clinics. Third, the use of practitioners from the local bar both generates a much needed opportunity for relevant pro bono work for IP attorneys and creates a natural vehicle for mentoring by, and networking with, relevant practitioners for our IP students.

Over the last year, I realised that I had reached the limits of the kind of practical perspective and training that can be given in a substantive doctrinal class. To go further would risk short changing the students on the equally important theory and policy issues. At the same time, with the ELC and a host of IP and tech oriented externship opportunities finally fully online, I realised that it was time to let each component do its part. However, I still worried about how students would effectively coordinate the components. Then a student of mine, Peggy Hawkins, approached me one day after Biotechnology Law to tell me that the combination of that class and an externship at UW TechTransfer in the same quarter was working out incredibly well. She analogised it to undergraduate science courses that tether together classroom and lab components. The light bulb went on for a new vision of how to tie everything together.

Rather than leaving students to pick and sort through clinics, externships, and courses as they try to prepare themselves for a certain practice area like IP, we could coordinate these opportunities for the students. Thus, my proposal is to tie together the doctrinal courses with the practical experience of clinics and externships by requiring participation in a relevant clinic or externship as the ‘lab’ component of certain foundational or advanced courses in specific substantive law fields such as business law or IP.

All of this may mean that an increased development of counselling, transactional, and even regulatory or administrative procedure clinics is needed. Of course, the transactions and regulatory/ administrative procedures cannot be large and complex, such as major corporate financings or patent prosecution, else the work flow may be every bit as unpredictable as that occurring in litigation based clinics. With that as a caveat, it is easy to see that much more could be done with the counselling, transactional, and/or regulatory/administrative based clinic, similar to what I have done with the ELC. This is especially true for substantive and practice areas that have a large component of counselling, transactional, or regulatory/administrative filing or compliance work.

My proposal also effectively requires doctrinal teachers to become more willing to engage with practice issues and concerns. The model will not work very well if the doctrinal teachers largely ignore the lab component or are unwilling to discuss the legal issues behind a real situation unfolding in the related clinic or externship setting. Even where doctrinal teachers are willing to engage in this way, there could be attorney-client confidentiality issues, especially for off campus externships. Both of these are real concerns. I cannot say that they can be adequately addressed in all, or even many, cases. I can say that I have dealt with both kinds of issues for both the ELC and most of the externships available to our IP students.

Because of space constraints, the foregoing is more of a sketch rather than a detailed description or argument for any or all of the components discussed above. More broadly than teaching IP, I hope to help usher in the new field of entrepreneurship and innovation law to the law school curriculum. Ideally, this new addition will be multi-disciplinary, not simply among substantive areas of law, but rather also across campus, including business and management schools, engineering schools, medical schools, and even many of the departments within colleges of arts and sciences. I have already made substantial progress on the multidisciplinary fronts at UW.