By Andrew Cohen
A hands-on pilot program will give Berkeley Law students a coveted opportunity to work on intellectual property (IP) issues with technology startup companies.
Launching this fall, the Berkeley IP Lab welcomes 11 students—selected from a competitive pool of applicants—who will participate in a seminar taught by Professor Robert Merges and a tandem practice project led by patent attorney Vern Norviel. The head of Wilson Sonsini Goodrich & Rosati’s patents and innovation counseling practice, Norviel is also a longtime Berkeley Law lecturer who teaches Biotechnology Law.
“We’ve always tried to be responsive to what our students want and what’s happening in the real world,” said Merges, a renowned authority on IP law. “Your head would have to be 20 feet under the Bay not to see that startup fever is thriving in our area.”
Norviel worked to develop the program with a campus startup incubator called SkyDeck. He discussed its potential with Berkeley Law Dean Sujit Choudhry, who enlisted Merges to help fast-track it.
“UC Berkeley has the world’s hottest startups, and many need legal service early in their development,” said Norviel, who has spent three decades formulating successful IP strategies for life science companies. “Meanwhile, Berkeley has the greatest law students—and they’re right next door.”
The seminar will examine IP issues uniquely encountered by life sciences startups and focus on preparing “freedom to operate” analyses—typically provided to venture funds and angel investors. Students will also dissect the role such analyses play in financing early-stage companies.
The practice project will enable students to assist local early-stage startups on vital IP matters. Merges and Norviel are working with SkyDeck to recruit supervising lawyers from major firms in the area, and developed a webpage for startups seeking legal assistance from the project.
“With exorbitant real estate prices in San Francisco and on the Peninsula, the East Bay has become the new startup frontier,” Merges said. “There are 17 entrepreneurship clubs on campus, all different kinds of incubators and accelerators. Berkeley Law needs to be in the mix, and our students’ response shows that this is a welcome development.”
Students line up
Hannah Jiam ’16, who has a B.S. in biomedical engineering from Johns Hopkins, eagerly anticipates the chance to work with area startups. Currently splitting her summer between two Peninsula law firms to help fuel her budding patent law career, she sees the new Berkeley IP Lab as an “ideal mix” of scholarly grounding and practical experience.
“I’m thrilled to be accepted into this new program because it will offer great exposure to the issues that matter most in patent law,” Jiam said. “It will also be great to work on life sciences projects here in Northern California, which has a strong focus on the high-tech industry. A lot of cases we examine in patent law fall under that realm.”
Jiam took Norviel’s course last year and found it “really engaging and useful because we learned about key clauses that startups must commonly address.” She has heard high praise for Merges from classmates, who describe him as “a great teacher whose classes are hugely relevant to new issues that come up in IP work, patent law, and the startup world. Given what this new program offers and who’s running it, this was an easy decision for me.”
An added incentive: the chance to work directly with students from other campus departments.
“The thing I love about Berkeley, and one of the reasons I came here, is that the students are so remarkable all across campus,” Jiam said. “As a patent lawyer, you’re constantly talking to clients, scientists, and expert witnesses trying to translate complex scientific ideas into layman’s terms. This will provide a great introduction to that, and a valuable chance to work with people in different fields.”
If there is sufficient demand—which seems likely—Merges and Norviel will work to expand the program in future semesters to include other technologies.
“We tried to be focused in our first offering,” Merges said. “This is a small slice of a much bigger pie, centered on a certain type of work product in a certain type of tech startup. But it’s an important area, and a sensible launching point.”