From Lab to Market
BU Law hosts panel to examine the challenges of moving innovations from the university to the private market.
On Wednesday, November 2, Boston University School of Law invited students and faculty to Inventions in Academia: Cross Currents and Challenges to discuss the difficulties of spinning out inventions created in university programs and laboratories for use and further development in the private sector. Andrew Sellars, director of BU Law’s Technology & Cyberlaw Clinic, moderated the conversation.
Panel participants included practicing attorneys, professors in the technology transfer space, and members of the technology licensing offices at BU and MIT. Jerry O’Connor, director of the Entrepreneurship & Intellectual Property Clinic at BU Law, opened the discussion by exploring the legislative mechanisms that give universities ownership of intellectual property from research innovations and start-up ventures created by faculty and students using federal research funding, and the difficulties that ventures, universities, investors, and others can face with this ownership regime.
The discussion covered the licensing process for students starting their own companies with university support, and when universities license technology to start-ups versus established businesses for development in the world. Lesley Millar-Nicholson, director at MIT’s Technology Licensing Office, and Elizabeth Carlson, licensing director for life sciences at BU’s Office of Technology Development, spoke about the differences in licensing practices and the roles of each university as they help students and faculty prepare innovations for commercial investment.
Millar-Nicholson asserted that technology transfer offices often operate at a revenue loss for the university, in part because they see their mission to help ensure technologies get developed for use in the world, instead of purely as a source of income for a university. Carlson agreed, noting that any returns on investments that BU does receive from the innovations it licenses either go to investors or to support future royalties. Both emphasized that technology transfer directors should make decisions to help the public, and their decisions should be truly invested in the mission of scientific development.
The panel discussed how attorneys in this space can often face ethical questions related to privilege and conflicts of interest, including when they represent both universities and start-ups that rely on university technology. Dr. Melissa Hunter-Ensor, an attorney at Greenberg Traurig, discussed her work with a start-up from John Hopkins University that developed the first ovarian cancer diagnostic approved by the FDA. Because of the potential for conflict, she described an often-used tool in this area of the law—the common interest agreement—in which two closely aligned parties can claim a joint attorney-client privilege. However, she cautioned that parties entering into a such an agreement run the risk that the it will not be upheld in court.
Cynthia Laury Dahl, a practice associate professor of law who works with students in the Detkin Intellectual Property and Technology Legal Clinic at the University of Pennsylvania Law School, spoke to the ethical obligations of legal clinic students and attorneys working with UPenn’s technology licensing office, including the difficult privilege questions that can arise.
The event was organized by BU Law’s Entrepreneurship, Intellectual Property & Cyberlaw Program, a collaboration between BU Law and the Massachusetts Institute of Technology that brings MIT and BU student entrepreneurs and innovators together with future lawyers from BU to address the legal and regulatory compliance issues associated with their academic and extracurricular pursuits and their efforts to turn ideas into businesses.