Thomas Edison knew something about ideas. The holder of more than 1,000 patents, he developed many of his ideas into inventions, bringing him to conclude that “the value of an idea lies in the using of it.”
Yet once value translates into dollars and profit, things get complicated, particularly in the 21st century. One of the most prominent examples of this is still playing out in court—the legal wrangling over who came up with the idea for Facebook, the popular social media website whose origins and subsequent legal case was the focus of the 2010 Oscar-winning film “The Social Network.”
The world of ideas—including copyrights, licensing, patents, trademarks, and other “creations of the mind”—falls under the legal definition of intellectual property (IP), an area of law with roots in 18th-century copyright and patent law that has exploded as technology has advanced to include information, computer software, and other developments connected to electronic commerce and communications media.
Protecting the value of ideas
Students attending the UConn School of Law have learned firsthand about the challenges of this area of law through the School’s Intellectual Property and Entrepreneurship Law Clinic. Located in East Hartford, Conn., the IP Law Clinic provides its students an extraordinary opportunity to undertake a wide range of intellectual property pro bono legal services, under the guidance of supervising attorneys, by assisting Connecticut-based entrepreneurs, inventors, and startup companies.
Since its opening in January 2007, the IP Law Clinic has assisted more than 160 clients with intellectual property counseling, patent searches, patent applications, trademark clearance searches and registration applications, copyright and trade secret matters, drafts and negotiations of intellectual property agreements, and Connecticut LLC formation. Assisting clients representing a variety of industries, including agriculture, biotech and medical devices, computers and information technology, entertainment, consumer and food products/services, engineering design and material sciences, the Clinic also is committed to expanding its work with clients in green and high-tech industries.
In 2008, the IP Law Clinic was selected by the U.S. Patent and Trademark Office as one of six law school clinics in the United States to be part of a two-year pilot program under which law students provide pro bono legal services, under the supervision of an attorney, before the Patent and Trademark Office. Last year, the program was expanded, renewing UConn’s participation for an additional two years.
“The Clinic proved to be the most important facet of my law school education,” says Hilary Sumner ’09 JD, who chose the School of Law because of its IP program. “I was given an invaluable opportunity to work directly with small business owners, counseling them on a variety of issues. … I left with a solid understanding of business organizations, transactional work and negotiation strategies. It was this experience that gave me the confidence to open my own IP-focused firm.”
The IP Law Clinic is directed by Hillary Greene, associate professor of law, who previously served as project director for intellectual property in the Federal Trade Commission’s Office of the General Counsel and as a litigation associate at Cahill Gordon & Reindel in New York City. Clinic classes are co-taught by Geoffrey Dellenbaugh, associate clinical professor and supervising attorney, who has practiced patent and licensing law with Johnson & Johnson and the Warner Lambert Co. for more than three decades, and Lily Neff, assistant clinical professor and supervising attorney, who worked at IBM for two decades, first as a hardware/software architecture engineer and then as a senior intellectual property attorney. Prior to joining UConn Law, the IP Law Clinic’s program coordinator, Kathleen Lombardi, practiced law with Adams & Rafferty in Massachusetts for a half dozen years, focusing on matters including small business representation and licensing.
“The IP Law Clinic embodies three of the finest traditions at UConn Law,” says Greene. “First, it strengthens and deepens the School’s long-standing commitment to clinical education. Second, it furthers our innovative approach to the study of intellectual property law. And, finally, it continues the School of Law’s dedication to serving the people of Connecticut and contributing to the economic well-being of the state.” Greene emphasizes that in addition to serving clients one-on-one, the clinical faculty regularly deliver presentations to innovator/entrepreneur groups throughout the state and to important organizations with complementary missions, such as the Yale Entrepreneurship Institute and UConn’s Center for Clean Energy Engineering.
“If Connecticut is going to have a competitive economy long into the future, our country must continue building a robust intellectual property system,” says Jeremy Paul, dean of the School of Law. “That is why we put so much effort into our Intellectual Property Program and why we are committed to assisting Connecticut entrepreneurs and innovators by providing the important services offered by the IP Law Clinic.”
Alumni with expertise in IP law help business growth
Using their expertise in intellectual property and other areas of law, UConn School of Law graduates Michael Grillo ’91 JD, Gerald DePardo ’94 JD, and Mark Myers ’08 JD together have had a hand in stimulating economic growth in Connecticut.
With strong science and technical backgrounds in diverse fields—Grillo in electrical engineering and physics, DePardo in electrical engineering, and Myers in biology and applied mathematics—their careers all eventually intersected about a decade ago with a single company.
At CiDRA, a Wallingford-based company that designs and manufactures sensors used today in the mining, oilsands, and pulp and paper industries, Kevin Didden ’81 (BUS)—CiDRA’s president and CEO, and a fellow UConn alum—worked in various capacities with Grillo, DePardo, and Myers to secure intellectual property rights for a developing sensor technology used in measuring temperatures, pressures, sound, and flow in oil wells.
As a result of their work, Weatherford Industries, one of the largest oilfield service companies in the world, in 2001 bought—for $130 million—the prototypes, intellectual property, and know-how necessary to build the sensor technology. Grillo, DePardo, and Myers were integral in the deal, with Grillo serving as general counsel, DePardo helping potential acquirers understand CiDRA’s intellectual property portfolio and crafting the sale of that portfolio, and Myers taking the lead on demonstrating how the technology worked in the field. “When we sold the division, revenues were quite low,” recalls Grillo. “The value was in the intellectual property.”
Today, CiDRA’s primary product—a technology that Grillo, Depardo, and Myers were instrumental in bringing to the marketplace—is used by leading companies in the mining, oilsands, and pulp and paper industries. With the help of the law school alums, the company retained the rights to apply its sensor technology in other areas, including telecommunications and biotechnology.
Nearly a decade later, Grillo, DePardo, and Myers are enjoying separate careers in which intellectual property continues to play a significant role in generating wealth for Connecticut businesses. Today, DePardo serves as vice president, intellectual property counsel at The Travelers Co. Inc.; Myers heads up his own Storrs-based technical and business consulting firm, Point Break Associates LLC; and Grillo remains at CiDRA, where he is executive vice president, general counsel, and secretary.