Last year Michigan State University College of Law and the university’s Bioeconomy Institute launched a program to help entrepreneurs with intellectual property issues.
MSU College of Law students meet with entrepreneurs to help them explore various intellectual property issues.
“The law school has created a clinic where inventors, innovators and business people who are starting out with a new idea or business and need IP help can get it for free,” said Adam Candeub, the MSU law professor who is overseeing the initiative.
Candeub said the program also includes IP attorney mentors, many of whom are MSU alumni, who oversee the students’ work on the cases.
“Selfishly, my first goal is to give my students real world experience,” Candeub said. “The second goal, of course, is to help the community, to show how the university is involved and is supportive of our efforts to build the Michigan economy.”
He noted it is beneficial to MSU to offer intellectual property help.
“The university will do best in a culture that is looking toward coming up with new ideas and marketing them, and IP, of course, is central in that role,” he said. “Also, in general, it complements what the university is doing and is required to do under the Bayh-Dole Act, which is to bring innovation and research from the universities and commercialize it.”
Candeub said the law school students and their attorney mentors are available to help on a wide array of IP law needs, including patent protection, trademark issues and licensing contracts.
“You would be amazed at the diversity of issues that come through and we try to help with,” he said.
Many startups also look for help to protect their ideas and products when entering the global marketplace.
“A lot of them end up with international issues,” he said. “You’d be amazed how quickly Michiganders are doing business across borders — just the nature of our economy today.”
Brian Cheslek, IP attorney at Price Heneveld, has worked with local incubator programs and agrees global markets are often part of the picture.
“We help our clients file all over the world for both patents and trademarks and things of that nature,” he said. “We have a network of foreign associates — basically, law firms like ours in different countries, so when they do the development here and they develop all these processes, then we usually sit down and say, ‘Where do you plan to market this? Where do you plan to sell this? Where do you plan to make it?’
“Usually those three areas or those three considerations are reviewed to determine which countries they should plan to pursue protection in, and we do help with that.”
Whether a startup company is planning to pursue international markets or not, Cheslek agrees consultation with an IP attorney is important.
“We have worked with a number of companies and we have worked with companies that have come out of that incubator system, and we have helped them develop products and obtain and actually even license and sell some of their IP,” he said.
“A lot of times those will be smaller companies, and as they are developing new concepts — new ideas they are innovating — a lot of times those developments will require some sort of intellectual property protection, or protection should be, at least, considered.”
Cheslek said companies don’t necessarily need to be in consultation with an IP attorney from the first step, but he did say it’s a good idea for them to take advantage early on of IP help if it’s offered.
He noted one of the unique challenges in the university setting is the pressure placed on professors and researchers to publish what they are doing.
“They are often highly encouraged to disclose their concepts and publish their articles and show the world what they are working on,” he said. “Well, that’s good, but you need to get an IP attorney involved earlier on to make sure that disclosure doesn’t create a problem, either for them trying to obtain protection later or from someone else that already has protection that finds out they are doing it.
“Sometimes they want to go file a patent application and it’s years after the publication that was done. That is tough, if not impossible,” he said. That’s because in most cases an inventor only has one year to file for the patent.
“Disclosure is an issue,” Candeub said. “Ideas that are disclosed to the public are not patentable. With the Internet, everything that is out there, you have to be more careful about sharing your ideas with the public.”
Candeub said patent law has changed recently: It is now “first to file” rather than “first to invent,” which makes it increasingly important to file early on.
“It used to be it was the first to invent, so if you invented an idea but never bothered to file it, you’d still be protected. Now the protections have changed,” he said.
While patents don’t directly benefit a state, they are a good indicator for the economy.
“To the degree that patents (are) correlated to economic growth, I think it certainly is an advantage,” Candeub said. “The point is, if you protect your IP, you have a stronger basis to build a business.”
Companies can sometimes leverage their intellectual property, Cheslek said.
“That is one thing that is helpful, too, when you are a smaller company: if you can develop some value in the intellectual property that you come up with and maybe use that as a bargaining chip from a licensing standpoint to obtain more funds or to get exposure.”
MSU’s program has been very popular. In the first year, it has involved speaking with approximately 75 people, with about 30 of those taken on as clients.
“It really simulates ‘real world, real law’ practice. It provides a real service and it’s tremendously gratifying as a professor,” Candeub said.