Solving Ethical Puzzles to Unlock University Technology Transfer Client Work for an Intellectual Property Legal Clinic

Intellectual property (IP) and technology legal clinics are experiencing an unprecedented surge in popularity. Before 2000 there were only five such clinics, but by 2016 there were seventy-four, with fifty added since 2010 alone. As law schools are approving new IP clinics and as practitioners are developing syllabi, there is an increasing need to share knowledge about models that work and how to avoid pitfalls. One potentially fertile – but traditionally underutilized -- source of client work for an IP and technology clinic is the university technology transfer office (“TTO”), the department that protects, markets, and licenses all university intellectual property. Through TTO projects, students access cutting-edge technologies, grapple with sophisticated legal concepts, and conform their legal counsel to business realities. Yet very few IP clinics accept TTO projects at all, let alone focus on them as a sizeable percentage of their docket. This disconnect might be explained by the unexpected and thorny ethical challenges that this work can present. For example, with disclosure an especially acute concern with such high-stakes patents, are students who are not members of a state Bar sufficiently bound to a duty of confidentiality? What happens to attorney-client privilege when students from the business school and students from the law school work together on a project? When the project involves advising a new spin-out venture built around a university-owned technology, how can the students share the advice with both the TTO and the venture without compromising privilege, breaching confidentiality, and running the risk of developing a conflict of interest? And finally, if the project exposes students to prior art when there is an active patent application, are they ethically bound to report the information, even if it may defeat the client’s patent? Drawing on the specific experiences of a clinic that has been doing tech transfer work for four years, this article first suggests a model for engagement and then identifies and analyzes some of the most important ethical challenges this work presents. Analyzing the Model Rules, the USPTO Guidelines, and the latest case law in the areas, it suggests solutions for clinics interested in working with the TTO to unlock great potential for student professional development, university innovation, and scientific and technological entrepreneurship in general