Academics: Professional Training

Patent and Licensing Clinic I

ADJUNCT PROFESSORS ROBERT DECKER AND RODNEY SPARKS; 3 CREDITS

The clinic involves instruction and practical training in patent drafting as well as the negotiation and drafting of patent and software license agreements. Students participate in class sessions covering these topics and are assigned to one or more significant drafting and counseling projects in one or both of these two areas.

The clinic also covers evaluation of inventions and computer software for patentability and commercial value; counseling of UVA faculty inventors regarding patentability, inventorship and the patenting process; preparing, filing and prosecuting provisional U.S. patent applications; dealing with patent examiners; and researching current issues in the fields of intellectual property and technology transfer. Some exposure to international patent applications under the Patent Cooperation Treaty may be possible. Students will help resolve disputes with licensees and possible infringers where appropriate.

Several class sessions are scheduled early in the semester at a mutually convenient time. Students work in the office of the University of Virginia Licensing & Ventures Group eight hours per week. A technical background is required — students will be asked to provide the instructor with a statement relating to technical background (scientific, engineering, mathematical, computer, etc.) to aid in the assignment process.

Patent and Licensing Clinic II

ADJUNCT PROFESSORS ROBERT DECKER AND RODNEY SPARKS; 2 CREDITS

The second semester of the Patent and Licensing Clinic involves many of the same projects as P&L I, but in this clinic, the student can choose to work exclusively with patent attorneys drafting, filing and prosecuting patent applications (and associated tasks like prior art searches and evaluations, meeting with faculty inventors, preparing information disclosure statements, etc.), or working exclusively with licensing agents to draft license agreements, negotiate licensing terms and conditions, prepare confidentiality agreements and marketing documents. Clinic participants may also evaluate inventions and computer software for patentability and commercial value; counsel U.Va. faculty inventors regarding patentability, inventorship and the patenting process; deal with patent examiners; and research current issues in the fields of intellectual property and technology transfer.

Students may be exposed to international patent applications under the Patent Cooperation Treaty, and they may resolve disputes with licensees and possible infringers where appropriate. Students work in the office of University of Virginia Licensing & Ventures Group approximately six hours per week on a fairly flexible schedule. A technical background is required. Students are asked to provide the instructor with a statement relating to technical background (scientific, engineering, mathematical, computer, etc.) to aid in the assignment process.

 

My Experience as a UVAPF Law Clinic Student and Intern: Q&A with Adam J. Sibley '10

By Morgan Estabrook
UVAPF 2009 Annual Report
Oct. 19, 2009

Sibley
 
Adam J. Sibley '10

When Adam J. Sibley began his internship at the University of Virginia Patent Foundation in summer 2008, he was hoping to supplement his coursework at the Law School with some practical experience in the area of patent law. More than a year later, Sibley, now a third-year law student, has found he got more than he bargained for, including a patent application under his belt, experience in technology licensing, co-authorship of a journal publication and the support of a mentor.

After serving as a law intern, Sibley enrolled in the Patent Foundation’s Patent and Licensing Clinic, offered by the School of Law; he is currently enrolled in the second, advanced clinic. Through its clinic program, the Patent Foundation over the last decade has immersed nearly 150 U.Va. law students in patent drafting and in the negotiation and drafting of patent license agreements.

In the following Q&A, Sibley tells us about his experience as a Patent Foundation intern and law clinic student and how that experience has prepared him for a career in patent prosecution and litigation.

PATENT FOUNDATION: How did you first become interested in working as a law intern — and later law clinic student — at the U.Va. Patent Foundation?

ADAM SIBLEY: I am planning on practicing patent law, so during the summer after my 1L year, I was looking to do some patent-related work. When I learned about the intern position at the Patent Foundation, I decided to go for it.

After spending the summer as an intern and getting to dig into some really interesting research topics with UVAPF patent attorney Rodney L. Sparks [J.D., Ph.D.], I knew that I wanted to enroll in the clinic; it seemed like a great opportunity to get introductory practical experience in the patent field.

PF: What did you enjoy most about your law internship at the Patent Foundation?

AS: As an intern, I enjoyed researching the co-inventorship of applied novel chemical compounds with Dr. Sparks. Our work in this area has resulted in a co-authored paper scheduled for publication this year. I consider Dr. Sparks a mentor; he has been a great source of information and advice on how law students should adjust to a career in a private patent firm.

PF: And the law clinic?

AS: In the first clinic, I was glad to have the opportunity to draft a patent application. This assignment helped me become familiar with a patent prosecution file and gave me a great head start for my summer internship at a private firm.

I also really liked researching neglected diseases with my licensing mentor, Miette H. Michie, to learn what various organizations are doing to try to increase the commercial viability of associated technologies and treatments. This is not necessarily an issue that is often addressed in a classroom setting, and it was pretty enlightening to learn more about those efforts.

I am presently enrolled in the second clinic, and I’m looking forward to doing various research projects that are of emerging interest in the field, including proposed patent reform.

PF: How has your experience at the Patent Foundation prepared you for the future?

AS: I expect to practice patent law at a private firm, and although I anticipate that I will gravitate toward litigation, the patent prosecution experience I gained from the clinic will be invaluable for this pursuit. In addition, my legal research and writing improved greatly during the summer internship, and I expect those skills will be crucial to any area of the legal profession.