Unintended Negative Consequences of Joint Ownership of a Patent

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1 International In-house Counsel Journal Vol. 3, No. 9, Autumn 2009, Unintended Negative Consequences of Joint Ownership of a Patent RODNEY L. SPARKS, J.D., PH.D. Senior Biotechnology Patent Counsel, University of Virginia Patent Foundation, USA Abstract When one entity is a joint owner of a patent or pending patent application with another entity, there are many potential negative ramifications as to licensing, ability to enforce a patent by infringement litigation, as well as a potential negative impact during patent prosecution. Furthermore, naming the correct inventors on patents is important to ensure the validity and enforceability of a patent. Therefore, it is important for in-house counsel of an entity such as a company or university to have at least a general understanding of the effect of joint ownership on patent issues, as well as how to determine the true inventors of a technology. This article will review the some of the serious impediments on licensing, patent prosecution, and patent litigation that can arise when joint ownership results from collaborations with other entities, as well as ways to avoid the potential dangers of joint ownership. Key words - inventorship; ownership; patent; licensing; invalidation; litigation Introduction Many companies today derive their value from patents. That value can be realized by making, selling, or using the patented product or process, licensing it to another company to exploit it in exchange for a royalty, or in-licensing a technology and sharing the profits with the licensee. Maintaining a competitive edge can be difficult, but it can be even more difficult when the profit margins are altered because the company did not realize that it might become a joint owner of a technology it thought it owned, or did not carefully consider all the terms of an agreement into which it entered. There are many potential negative consequences of joint ownership and the complex problems of joint ownership are generally underestimated in practice. It is rare that two or more entities foresee the joint ownership problems that may occur when starting a research and development collaboration where joint ownership of an invention will result. They typically view the collaboration as an effective way of sharing expenses and do not perform the necessary due diligence to fully address all the issues before that decision is made. The negative consequences of joint ownership can be worse when there was no planning at all or the joint ownership arises accidentally. The description provide below underscores the need for careful planning and monitoring before collaborations are undertaken between two or more entities, including the need to have employee-employer agreements in place if necessary and to enter into written research or intellectual property agreements before the collaboration begins. Included at the end of this article is a glossary of commonly used patent or related terms, particularly terms used in this article. International In-house Counsel Journal ISSN print/issn online

2 1412 Rodney L. Sparks, J.D., Ph.D. Role of in-house counsel, particularly non-patent lawyers When a company s viability is based on patentable or patented intellectual property, inhouse counsel may need at least a basic understanding of the patenting and licensing process. In-house counsel should take a proactive approach when handling inventions made at their company or those which are in-licensed or out-licensed, because companies without proper evaluation and strategy practices have difficulty surviving in the extremely competitive global market of today. Therefore, having a formal technology evaluation and patenting strategy in place is crucial in preventing a company from losing its competitive edge by helping to identify and pursue critical technology and in avoiding costly and time-consuming patent infringement lawsuits. Negative impact of joint ownership with other entities as to patent prosecution, patent litigation, and licensing There are two ways for an entity to become a joint owner of a patent or technology. One is intentional, such as through a pre-arranged collaboration. The other is unintentional, such as by a collaboration which occurred without prior agreements in place or when scientists from different entities, or whom are not under an employment agreement, discuss a technology before the proper arrangements are made. University researchers are notorious offenders. Unplanned joint ownership has potential fatal impacts on patent prosecution and litigation. Most entities, particularly small companies and universities, do not plan properly and when confronted with joint ownership do not appreciate all the potential future ramifications, even upon entering an agreement with the other joint owner(s). Even inter-institutional agreements, which universities enter into routinely, are not always well thought out as to responsibilities and rights once joint ownership does occur. In the United States (US) and most countries, an inventor of a patent is also considered to be an owner, unless or until that inventor assigns rights to someone else. In most countries, employers may establish policies requiring their employees to assign rights to an invention to the employer. The manner in which the assignment of rights from an inventor to the employer is perfected varies by country and should be dealt with proactively by the employer. US courts have held that assignment requirements from an employee can exist even in the absence of a signed contract, but certain policies or prior agreements must be in place by the employer. Unless there is an agreement to the contrary, the rights of the assignees of a patent or technology are governed statutorily under United States Code ( USC ) 35 USC 262. The code states In the absence of any agreement to the contrary, each of the joint owners of a patent may make, use, offer to sell, or sell the patented invention within the United States, or import the patented invention into the United States, without the consent of and without accounting to the other owners. Under most laws, inventorship equates with ownership, unless there is an agreement otherwise. Effects of joint ownership on patent prosecution Without a carefully planned agreement before joint ownership arises, it may be difficult for joint owners to come to a reasonable agreement regarding patenting and licensing issues. For example, joint owners may not agree on how to prosecute a patent application, which claim groups to elect for prosecution or searching by a patent search authority, when and how to amend claims, whether to file divisional or continuation applications, etc. Additionally, in some jurisdictions such as the US, in certain scenarios prior art cited against a patent application during prosecution can be fatal if the ownership is not the same for the cited art and the application. For example, in the US if the cited

3 Patent Ownership 1413 art is an issued patent or another pending patent application and it is owned by the same owner as the application being rejected, the owner may be able to overcome the rejection by filing something called a terminal disclaimer. This generally arises subsequent to a non-statutory obviousness-type double patenting rejection which is based on a judicially created doctrine grounded in public policy so as to prevent the unjustified or improper time-wise extension of the right to exclude granted by a patent and to prevent possible harassment by multiple assignees. If an argument cannot be made by the prosecuting patent attorney to overcome the art, then the only cure for an obviousness-type double patenting is to file a terminal disclaimer. However, a terminal disclaimer cannot be filed if the ownership of the art and application under review is not identical. For example, if the art cited against the application is a patent owned by company X, but the pending application is owned by both company X and company Y, a terminal disclaimer cannot be filed and the rejection is fatal. In the US, a recent law provides that if a specific type of research collaboration agreement was put into place before companies X and Y collaborated, there might be a chance to overcome such a rejection. Effects of joint ownership on patent litigation According to US patent law (35 USC 281) A patentee shall have remedy by civil action for infringement of his patent. The courts in the US have had to interpret the patent laws and have established the requirements for suing an alleged infringer for patent infringement. One issue of concern is that of standing, which refers to who can sue. In the US and many other countries only owners can sue (not even licensees). Furthermore, the US courts have held that if there are joint owners, then all joint owners must join in the litigation or the case will be thrown out for lack of standing. Therefore, if your joint owner refuses to join in infringement litigation against an alleged infringer, you have no recourse against the infringer. This problem can only be avoided by a prior agreement between joint owners or by avoiding joint ownership. It is difficult to say how often joint owners refuse to join in an infringement litigation. There are many reasons that a joint owner might refuse to join the litigation. The reasons include aversion to lawsuits or negative publicity that might arise, a break down in the relationship of the joint owners, as well as prior and separate license agreements or collaborations between the reluctant joint owner and the alleged infringer. The joint owner may determine that it would be worse off if it joined the infringement suit because it already has a more lucrative deal with the alleged infringer on another technology. This leaves the party who wants to sue unable to protect its rights or to earn potential income by forcing the infringer to take a license or by being compensated for the infringement as a result of a successful result in court. Effects of joint ownership on patent licensing To many companies, and most universities, the value of their technology can only be truly realized when it is licensed. As described above, in the absence of an agreement to the contrary, each of the joint owners of a patent may make, use, offer to sell, or sell the patented invention within the United States, or import the patented invention into the United States, without the consent of and without accounting to the other owners. This means that one joint owner (or co-inventor) can sell the invention without having to pay anything to any other joint owner (or co-inventor). Similarly, one joint owner can grant a license to a company, albeit a non-exclusive license, without the consent of the other joint owners and without having to give the other joint owners a share of the license royalties. It is important for an institution that has outside collaborations to consider ownership issues carefully, particularly when the institution is seeking to license the technology arising from such collaborations. This is especially true if the licensee or

4 1414 Rodney L. Sparks, J.D., Ph.D. potential licensee is a joint owner because if the licensee/joint owner terminates the license agreement or does not take a license agreement, they are free to use or license the product on their own as a joint owner. Additionally, a potential licensee may be less likely to take a license, or may offer a much lower royalty, if there is also a joint owner who also has the ability to use or license the same technology to a competitor. In the US, this leads to what is called a nonexclusive license as to the entire technology, and this sort of license generally has much less value than an exclusive license where only one licensee gets the right to use the technology. Therefore, these problems should be avoided if possible, such as by not collaborating unless a research agreement or contractual arrangement is made in advance. International rights can also be impacted because some countries require all owners to consent to licensing and assigning. Determining inventorship and the importance of naming the correct inventors on a patent Every patent application submitted to the US Patent and Trademark Office must list the inventors. In some countries, the owner(s) must be listed as well. Naming the correct inventors is essential to the validity and enforceability of the issued patent. Inventorship is a question of who actually invented the subject matter claimed in a patent. Inventorship problems often arise when applicants must determine if the invention was a joint effort and who actually contributed to the invention. Inventorship is a legal determination, not a moral decision, and is not determined in the same manner that authorship on a publication is determined. The following sections describe how to determine inventorship, joint inventorship, and correction of inventorship. Conception To be an inventor, one must contribute to the conception of at least one aspect of the invention described. Conception requires the use of the inventive faculties ; it is the creative formulation of a complete view of what the invention is. For example, if someone in a laboratory takes a chemical from the shelf and selects it for testing as a therapeutic agent to treat a particular disease, they have conceived that the compound may be useful for treating that disease, and the conception is complete. Testing performed to prove that the conception is correct is called reduction to practice. However, reduction to practice is not part of the inventing process unless it leads to refinement of the inventive concept. In addition to being an important aspect of the inventorship tests established by the US courts, conception has been described as the touchstone of inventorship. The US Court of Appeals for the Federal Circuit defines conception as the formation in the mind of the inventor, of a definite and permanent idea of the complete and operative invention, as it is hereafter to be applied in practice. Conception is complete only when a person skilled in the art could practice the invention without extensive research or experimentation. If failures or uncertainties arise in the ensuing experimentation that bring into question that the specificity of the inventor s idea is not yet a definite and permanent reflection of the complete invention as it will be used in practice, then conception is not complete. In addition, an idea becomes definite and permanent when the inventor has a specific, settled idea, a particular solution to the problem at hand, not just a general goal or research plan he hopes to pursue.

5 Patent Ownership 1415 Joint inventorship Because inventorship confers ownership rights unless those rights are contracted away, it is important to determine who might be a joint inventor. The statutory treatment of joint inventorship in the United States is partly contained in the first paragraph of 35 USC 116, which states: When an invention is made by two or more persons jointly, they shall apply for patent jointly and each make the required oath, except as otherwise provided in this title. Inventors may apply for a patent jointly even though (1) they did not physically work together or at the same time, (2) each did not make the same type or amount of contribution, or (3) each did not make a contribution to the subject matter of every claim of the patent. Although this statute outlines who should not be excluded from joint ownership, it offers no definitive guidance on who should be deemed a joint inventor. Specifically, it does not state a minimum level of necessary inventive contribution. In joint inventorship analyses, the differences between conception and reduction to practice become important, as a person who merely reduces an invention to practice is not a joint inventor, and therefore, should not be listed as an inventor on the patent. Unfortunately, the case law in the area of joint inventorship is notably incomplete, with many questions still remaining. The US courts have even described joint inventorship as one of the muddiest concepts in the muddy metaphysics of the patent law. One of the few things that is clear about joint inventorship determinations is that there is no bright-line standard, and that the resolution of each case will depend on the specific facts presented. According to the US courts, a joint inventor is one who contributes more than reduction to practice of the invention, makes a contribution to the claimed invention that is not insignificant in quality when that contribution is measured against the dimension of the full invention, and does more than merely explain to the real inventors well-known concepts and/or the current state of the art. While tests for joint inventorship developed by the courts outline what is required of a joint inventor, numerous US Federal Circuit cases have served to carve out specific exceptions for what does not qualify. The Federal Circuit made clear that merely contributing ordinary skill in the art is not inventive conception and does not qualify one to be a joint inventor. Likewise, it is not sufficient to only provide an available product or explain the state of the art. A person who only suggests a result, but does not offer or contribute a solution is not a joint inventor. Joint inventorship is also not proper when a person merely assists the actual inventor after conception of the claimed invention. The reduction to practice of an invention is also not sufficient for joint inventorship. However, an inventor may use the services, ideas, and aid of others in the process of perfecting the invention without losing his right to a patent. Nevertheless, when an inventor utilizes the help of others, the others may in appropriate circumstances become joint inventors by their contributions if conception is involved. For there to be a joint invention, the inventors need not have physically worked together or at the same time, but some collaboration must occur. Additionally, a person who contributes or suggest an obvious element to the invention, merely suggests an idea or change that would be obvious to one who routinely works with such technology, simply follows instructions, explains how or why an invention works, or adopts derived information from another, is not an inventor. In the university or industrial research setting, it may seem contrary to accepted authorship practice to decide that a graduate student, postdoctoral fellow, or colleague is really a pair of hands that just worked on a project because the true inventor may value their contribution, particularly if their investment of time and effort was substantial. Nevertheless, if they carried out experiments at the instruction of a true inventor, even though they may have been the first to see the results, they are not inventors unless they conceived of part of the invention.

6 1416 Rodney L. Sparks, J.D., Ph.D. Collaboration This is an important requirement for the tests of joint inventorship. It is stated in 35 U.S.C. 116 in part that When an invention is made by two or more persons jointly, they shall apply for patent jointly and each make the required oath, except as otherwise provided in this title. Inventors may apply for a patent jointly even though (1) they did not physically work together or at the same time, (2) each did not make the same type or amount of contribution, or (3) each did not make a contribution to the subject matter of every claim of the patent. However, because the word jointly is recited in 116, the US Court of Appeals for the Federal Circuit has stated that there is a requirement of at least some quantum of collaboration or connection among the inventors. Furthermore, it is not sufficient for joint inventorship to be assumed merely because the personnel work for the same company. Correction of inventorship US rules and laws, as well as the laws of most countries, allow inventors to be added or deleted when an error of inventorship is discovered, provided that there was no deceptive intent on the part of an inventor when the error was made. If there was deceptive intent, the patent rights may be irrevocably lost. In the US, this can be done, even after a patent issues. However, even if there was no deceptive intent on the part of an inventor, a patent can still be invalidated if there was inequitable conduct on the part of someone associated with the prosecution of the application, such as the patent attorney or the owner or representative of the owner. Inequitable conduct can be found for various reasons. For example, withholding material information such as relevant publications during prosecution of the application or providing misleading statements during prosecution have been enough to cause a court to invalidate a patent. Another reason to determine the correct inventors early on is that inventorship can be disputed at a later date, even during a patent infringement action. Disputes can occur because of jealousy (money), financial incentives for inventing, financial incentives as to royalties, ego, misunderstanding laws of inventorship, misguided thought that the amount of work done is related to inventorship, possible financial perks to inventors, and an ability to block licensing or lawsuits if joint ownership is established or declared by a court. Suits seeking a change of inventorship are brought either to obtain an ownership interest in the patent or to gain financial benefits from being named an inventor. For example, an ownership interest may be sought when companies work together, and after their collaboration ends, patent applications on the subject matter of the joint work are filed by one company naming only its employees as inventors. If there is no agreement as to ownership of inventions or the agreement pertains only to joint inventions, the omitted company may sue to establish sole or joint inventorship of the patents as a way to obtain an ownership interest in the patents. If the omitted company wins, whether its employees are judged to be sole or joint inventors, it may be free to use the inventions without accounting to the first company. Another reason for disputes is that financial benefits may be conveyed to an employee being named as an inventor, regardless of ownership. Corporate and university inventors are often rewarded as an incentive to invent. The reward is usually through fixed money payments or a share of any royalties collected for use of the invention. Therefore, the inventor whose name is left off a patent may suffer financially, even though they have an obligation to assign their patent rights to the company or the university. In addition, a patent issued in the name of a researcher can add to the researcher s prestige. Both the financial rewards and prestige of inventorship supply a motive to sue for correction of inventorship.

7 Patent Ownership 1417 For example, a putative inventor who was left off the patent may want to obtain an interest in the patent rights. If they were mistakenly left off, the courts can require that the new inventor be added, which in turn makes them a joint inventor and in turn a joint owner, unless a prior agreement was in place with their employee. Furthermore, gaining an ownership interest or a license from a joint owner (a new joint owner in this scenario) of a patent may turn an unauthorized use (i.e., infringing use) of the patent into an authorized use. A successful defense based on the alleged infringer s authority to use the patent defeats the infringement claim. Any contribution to the invention that qualifies as inventorship can result in ownership rights. As discussed above, each owner of a patent is entitled to use the patent or license it to others without the consent of and without accounting to the other owners, unless there is an agreement to the contrary. It is not surprising that this law has led to inventorship disputes in patent infringement litigation in which a defendant attempts to add an inventor in order to gain an interest in the patent and use that interest as a defense to the litigation. This tactic has worked in some cases when a true inventor has been left off, and in at least one case the defendant then entered into a separate license agreement with the newly added inventor/owner, who had no obligation to cooperate with his joint owners. Correct inventorship is one of the essential components of a valid patent and determines whether there is joint ownership. Inventorship should be carefully considered in all patent applications, particularly where joint ownership is a possibility. An inventorship analysis is greatly aided by proper documentation of the inventive process and by careful review of the patent application claims before filing and during prosecution. Accurate determinations of inventorship will help reduce successful postissuance challenges to the patent. International patent and licensing laws The requirements of patentability are similar in most countries, but not identical. The same is true regarding ownership and licensing laws. A few examples are provided below. In Australia, correction of inventorship during pendency of a patent application is easy. However, if the patent issues with the wrong owner(s), then there is a validity problem. Deceptive intent on the part of an inventor is not a required element for invalidity as it is in the US, and in the US inventorship can even be corrected after a patent has issued. However, correction after issuance is fairly difficult and expensive in Australia. The rights of employers/employees are not dealt with by statute in Australia. Rather, in the absence of an agreement expressly dealing with ownership of an invention, the issue of ownership is dealt with under the common law and according to equitable principles. Australian courts over the years have established that, where the employee is paid to invent, the invention will usually belong to the employer by virtue of an implied duty to assign. Hence, the default position is that a researcher will usually be obliged to assign to the employer. However, in a 2008 decision in favour of a university professor the trial court held that, on the particular facts of the case, the professor was not obliged to assign. The trial court looked to many factors in arriving at this conclusion. However, one of the reasons relied upon was that academia is different from the private sector, and it is often the case that academics are not paid to invent in the same way that researchers in the private sector usually are paid to invent. This decision should induce many Australian universities to review their patent policies and employment contracts with their academic researchers and ensure that an obligation to assign is part of the agreement. Any company which has licensed technology from an Australian university or which is contemplating licensing technology from an Australian university should

8 1418 Rodney L. Sparks, J.D., Ph.D. review the type of assignment agreement in place between the university and academic researcher who invented the technology. There is no harmonization of the patent, ownership, and assignment laws in Europe. Even if a country is a member of the European Patent Convention (EPC), its specific laws must be examined. German laws as to inventorship, ownership, and inventorship are similar to US laws; however, the rights and duties of joint owners are different. All joint owners are required to dispose of or assign a patent as a whole, but each joint owner may individually dispose of its share, and this individual right cannot be waived, even by joint agreement. However, some of the terms of joint ownership can be defined contractually. Joint owners must administer the invention and patent together and must decide jointly whether and where to apply for a patent. All joint owners must also agree to claim amendments during prosecution. Unlike US law, all joint owners are not required to join in a patent infringement suit brought by a joint owner. In Japan, some of the patent-related laws are similar to those in the US and other countries, but not surprisingly other laws are different. For example, it is necessary to obtain the consent of other joint owners to make an assignment, to establish a right to pledge a share of the patent rights, and to license to any third party. All joint owners must also consent to filing a patent application. This has severe consequences on potential patent rights and on the ability to license the technology. One reason that a joint owner may refuse to consent to file a patent application is that the technology will be competing with one of their own technologies. Contrary to laws in the US and other countries, in Japan if a patent has issued a joint owner can enforce a patent through litigation without consent of all joint owners. There is no mechanism for correction of inventorship in Japan and even mistakes made in naming inventors can sometimes result in invalidation of a patent. Japan also has strict rules governing remuneration of inventors. These few examples demonstrate the importance of establishing sound patent policies and understanding the laws of inventorship, ownership, licensing, and litigation, in the context of patents. These examples also demonstrate the importance of naming the correct inventors on a patent application, even if the result is unwanted joint ownership. The importance of having the appropriate in-house personnel or using skilled outside counsel should not be underestimated when intellectual property has great value for a company or university. Curing joint ownership issues Some of the potential problems associated with joint ownership can be cured after joint ownership arises, but some can only be cured or prevented if proactive measures are taken. Therefore, to avoid or cure joint ownership problems and to avoid disaster, various measures can be taken. One method to avoid joint ownership issues is to carve out the inventive contributions into separate patent applications. Filing separate applications to limit the overlap of claim scope can solve some of the ownership issues that can influence prosecution, licensing, and litigation. Another is to eliminate the material contributed by the other party. To that end, it is essential to determine if the others are really inventors; if not, they do not need to be listed as an inventor and there is no joint ownership issue. However, remember that the correct inventors must be named, although in most cases inventorship can be corrected at almost any time if it is found that the correct inventors were not named and it was done so by mistake. Another option is for all ownership rights to be assigned to just one party in a collaboration agreement entered into before the collaboration begins or in an agreement negotiated once the issues arise. When this occurs the agreement may require that the

9 Patent Ownership 1419 new sole owner of the technology licenses the technology to the entity that assigned the rights. This is a common practice for universities. Negotiating an agreement as to how to manage technology once joint ownership arises is difficult and is much less likely to satisfy all parties. It will also not cure the fatal issues described above. The agreement should include provisions covering who pays for patent prosecution, whether one party takes the lead or whether all joint owners must consent to patenting, licensing, and litigation management, whether all parties will join in a patent infringement litigation to enforce an issued patent, etc. As a take home message, two phrases should be kept in mind when contemplating collaborative research agreements or upon learning that joint ownership has already occurred. The first is The only thing worse than being a Joint Owner is being a Joint Owner with your Licensee! The second is A trap for the unwary! These sentiments have been echoed many times by those who have been in these situations. Glossary of patent terms for interpreting patentese Claim - One of the numbered paragraphs that appear at the end of a patent and which defines the scope of protection given to the owner of the patent; a claim may be directed toward an apparatus, a method, a product, or composition of matter, as well as new and useful improvements thereof. Conception - The formation in the mind of the inventor(s) of a definite and permanent idea of the complete and operative invention, as it is to be applied in practice. Conception is completed only when the idea is so clearly defined in the mind of the inventor(s) that only ordinary skill would be necessary to reduce the invention to practice, without extensive research or experimentation. Invention - Any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof. That is, an invention must be useful, novel, and non-obvious to one skilled in the art at the time it was made (i.e., the filing date of the application). Inventor - Person(s) who conceived the invention; inventorship is not the same as authorship. Obviousness - Whether an invention is obvious to one of ordinary skill in the art to which the invention pertains. If the invention could readily be deduced at the time the invention was made from prior art by a person of ordinary skill in that art, it is said to be obvious. Prior Art - The existing body of technological information (publications, earlier patents, public use, sales, presentations at scientific conferences, etc.) known at the time an application is filed, against which the claimed invention is judged to determine if it is patentable as being novel and nonobvious. Reduction to Practice - There are two kinds of reduction of practice: actual reduction to practice occurs when the invention is built or practiced; and constructive reduction to practice occurs when an application is filed that adequately discloses the invention. USPTO - United States Patent and Trademark Office, also referred to as PTO.

10 1420 Rodney L. Sparks, J.D., Ph.D. Biography for Rodney L. Sparks, J.D., Ph.D. Dr. Sparks joined the University of Virginia Patent Foundation in 2004 from the well known intellectual property group at Drinker Biddle & Reath LLP, in Philadelphia. His practice concentrated on biotechnology, pharmaceutical and chemical patent issues, including medicine and gene therapy. He has represented a variety of clients in the United States and abroad, including universities, biotechnology companies and pharmaceutical companies. Prior to working at Drinker, he was also in private practice at Morgan, Lewis and Bockius LLP, and at Akin, Gump, Strauss, Hauer and Feld, both in Philadelphia. After completing work on his Ph.D., Dr. Sparks completed postdoctoral training in the cellular and molecular biology of cancer at the Johns Hopkins University and at the Mayo Clinic. He was on the faculty of the Oregon Health Sciences University School of Medicine and was a tenured faculty member of Tulane Medical School. While on the faculty at Tulane, he graduated from the evening program of the Loyola University School of Law. Dr. Sparks current focus includes overseeing outside patent counsel, drafting and prosecuting patents in the pharmaceutical and biological sciences, preparing opinions and providing counseling on patent matters. He also is responsible for providing counsel on government reporting matters for the Patent Foundation and teaches law students in the Law Student Patent and Licensing Clinic of the University of Virginia School of Law, where he is also a Lecturer. Dr. Sparks is a member of the American Intellectual Property Law Association and belongs to the Biotechnology, Interference, and Relations with the U.S. Patent and Trademark Office committees of that organization. He also is a member of the Licensing Executives Society and of the Association of University Technology Managers. Dr. Sparks has served in various consulting capacities for several agencies of the U.S. government. He also recently served as a judge for the Modern Marvel patent contest sponsored by the U.S. Patent and Trademark Office and InventNow.org. About the University of Virginia Patent Foundation The University of Virginia Patent Foundation is responsible for technology transfer at the University of Virginia and licenses and patents intellectual property developed at the university.