Students get a taste of intellectual property law UM program puts tomorrow's lawyers to work in busy field; The professions

THE BALTIMORE SUN

Rick Minogue had a good idea but nowhere to take it.

In 1995 Minogue, a Cockeysville-based house painter who also dabbled in songwriting, designed an ergonomic keyboard -- intended to ease the stress of computer use. But he found out after meeting with several lawyers that it would cost about $10,000 to seek a patent to protect his invention.

Max Oppenheimer, then a partner at the Baltimore law firm of Venable, Baetjer and Howard, had a proposition. Overseeing the project, he would assign the legal work to students in his intellectual property law clinic at the University of Maryland School of Law in Baltimore.

Minogue, who took the offer, estimated that he ended up spending about $5,000 to obtain a patent. "I didn't have money to nurse the project from start to finish," he said. "Without the Maryland program, I wouldn't have been able to get the patent."

Minogue, who is still seeking a market for his keyboard, is one of the beneficiaries of the 5-year-old Law Technology Program. The program, which assigns second- and third-year law students to work with aspiring inventors, technology companies, researchers and policy-makers, is aimed at preparing students for one of the fastest growing sectors of law.

Oppenheimer said it is one of the first programs to put law students to work doing real-world intellectual property work. The University of Baltimore School of Law has exposed its law students to intellectual property through a joint program with its business school since 1991.

"It takes about seven years to make a lawyer -- four years undergraduate and three years of law school," said Oppenheimer, who ran the program for three years at Venable before joining the law school as an associate professor two years ago. "It takes 10 to 15 to make an intellectual property lawyer."

In a broad sense, intellectual property is anything the mind can conceive -- a huge range that includes Nike's "Just Do It" slogan, Black & Decker Corp.'s Snake-light design, Guilford Pharmaceuticals Inc.'s drug compounds and Microsoft's Windows 95.

In practice, it means inventions, software, technologies, trademarks and other features of what is broadly known as the information economy.

The sophistication required of intellectual property -- or IP -- lawyers is the result of one simple fact: To protect something valuable, a lawyer must have a deep enough understanding to explain and defend it. That means many IP lawyers have backgrounds in engineering, chemistry, biology.

"The degree a lawyer got as an undergraduate might take precedence over a law degree," said Anne Neal, a principal with the legal search firm of Williamson, Neal and Amato.

Stewart Pape, managing partner of Washington-based Patton Boggs, concurred. "You sometimes hear people make the comment almost pejoratively that patent lawyers wear short sleeve shirts and pocket protectors," he said with a bit of a chuckle.

Patton Boggs last month hired 22 attorneys -- including six intellectual property lawyers. "I can envision adding more," Pape said, perhaps pushing the number up to 20 from just a couple of years ago.

Frank Morgan, former chairman of the intellectual property committee of the Maryland State Bar Association, said most large and medium-size firms tend to have at least one intellectual property lawyer. "I don't think you would have found that five or 10 years ago," said Morgan, who is associated with Hodes, Ulman, Pessin and Katz in Towson. It's not clear precisely how much intellectual property law has grown, several lawyer organizations said. But key numbers suggest a rapid climb. Michael Kirk, executive director of the American Intellectual Property Law Association, estimates membership at 10,000 -- up from about 7,000 five years ago.

The number of patent applications has climbed from 137,173 in 1987 to 237,045 last year, a 73 percent increase. During the same 10-year period, the number of patents issued increased 38 percent, from 88,793 to 122,977. And 2,762 lawyers took the patent bar exam this year, 34 percent more than five years ago.

The growth of intellectual property law results from the economy's shift from the industrial age to the information age.

At the same time, patent law has become an international issue. And new technologies, such as the Internet, are speeding the exchange of information.

Morgan, of the state bar association, said technology is not the only factor driving the growth of intellectual property law. He said businesses have become more protective of advertising slogans and images. He also said law firms are marketing intellectual property services more actively.

"Frankly, the hottest property on the streets these days seems to be intellectual property," said James R. Sweeney, a 40-year practitioner and the director of the intellectual property program at John Marshall Law School in Chicago.

Sweeney said a few law students write patent applications in a clinic at that law school. "It's a kind of thing that schools ought to do if they don't," he said.

Oppenheimer started teaching his clinic about five years ago, when he was a partner at Venable. Billed as "the real world without the malpractice risk," the six-credit program requires participants to spend 20 hours a week working on the legal technology problems of partners that next semester will include the National Institutes of Health, Congress, the Office of Technology Development at the University of Maryland in Baltimore County and other law firms.

The class, which typically admits five participants from more than twice as many applicants, also meets with inventors who can come almost literally off the street.

"Someone came in looking for protection of glowing nail polish," Oppenheimer said. "One fellow came in and claimed to have invented a way of powerless space travel."

Before taking on a project, the program raises four questions, Oppenheimer said. "What are the prospects for success? Are we competent to handle it? Does it fit the profile of a company we're trying to help? And do we have time?"

Over the past few years, the program has taken on an invention of tool handles that mold to a user's hand, an Internet phone and Minogue's keyboard.

Law students researched similar inventions and helped Minogue pinpoint what made his invention unique. "They took layman's language and fashioned it into legal parts," he said.

William T. Fryer, a professor at the University of Baltimore, said that school's "lab-to-market" program groups business, law and

other graduate students into teams. In the first of three courses, students analyze the potential of a technology -- usually from a federal government lab. In the second course, they develop plans to commercialize the technology. And in the third, they attempt to hand it off to a company.

One inventor developed a device that detects when a baby stops breathing. "The program showed him the commercialization and protection of it," Fryer said.

Marita Mike, a student in the University of Maryland's program, studied molecular genetics and neuroscience as an undergraduate. She was paired with UMBC researchers this semester. One of her jobs was to strike an agreement between co-inventors of a cancer-fighting technology.

"Because of the background I have, I get most of the stuff that is highly scientific," she said. "The most substantial part of the program is that we get to get out there. I don't think there's enough of that kind of opportunity."

Several of the program's alumni now work as intellectual property lawyers -- including a couple with D.C. firms. Another works as a patent examiner. Oppenheimer would like the program to grow, eventually to about 15 to 20 students.

"It's a good educational experience where students are not looking over someone's shoulders, but actually solving problems," he said.

Pub Date: 11/15/98

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