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When it comes to choosing IP firms, schools and universities are more egalitarian than elitist. Virtually every major IP firm or general practice firm with a strong IP group can wave a college flag. Milwaukee’s Quarles & Brady does stem-cell patent work for the University of Wisconsin’s Wisconsin Alumni Research Foundation. Philadelphia’s Woodcock Washburn has prosecuted 276 University of Pennsylvania patents covering inventions like a safety propeller for boats and a method of increasing cows’ milk production, along with cancer vaccines and fuel cells. Miami’s Saliwanchik, Lloyd & Saliwanchik represents the University of Florida on the portfolio of patents that fuel Gatorade. The sports drink was invented in 1965 by the football team’s doctor, and it’s earned the university tens of millions of dollars over the years. At St. Louis’ Howell & Haferkamp, patent lawyers successfully prosecuted more than 100 patents for Washington University in St. Louis, including aspects of cellular telephone technology, a method of breast cancer detection, and a method of genetically modifying plants. At the end of 2001 the firm merged with Thompson Coburn of the same city. These firms can thank Congress for the business. More than two decades ago lawmakers became concerned that inventions were languishing inside the academy. In 1980 Congress enacted the Bayh-Dole Act, which allows universities to retain title to inventions resulting from federally funded research. The law motivated schools to bring inventions out of the lab and into the world. IP lawyers have been a side beneficiary. Each year, the Association of University Technology Managers (AUTM) of Northbrook, Ill., tracks university technology licensing. In 2000, the most recent year for which statistics are available, the top five grossing schools on AUTM’s list took in more than $570 million in licensing revenue. They spent more than $23 million in legal fees in the process. Law firms are happy with the prestige and revenue that comes with representing a top-flight research institution like the University of California or Columbia University, the top two grossing schools in the survey. And they love when they get retained by the startup companies that are often spun off from a school. Edward Gamson of Chicago’s Welsh & Katz has picked up spin-off clients from the University of Chicago, including one that does water treatment and radioisotope separation. And he’s done patent work for a vaccine company, Epovia Inc., of San Diego, which spun off from his client, the Scripps Institute. “Many of the entrepreneurs of today — the ones who get all the press — started out in an academic setting,” says J.D. Harriman, a partner at the Los Angeles office of New York’s Coudert Brothers. Netscape founder Jim Clark, for example, was a computer science professor at Stanford before he made the entrepreneurial leap and started Mountain View, Calif.’s Silicon Graphics Inc., which produced workstations used to create computer-generated special effects. Los Angeles’ Blakely, Sokoloff, Taylor & Zafman did IP work on this technology for Stanford and also for Silicon Graphics in its early days. New York’s Pennie & Edmonds has done a similar double-duty. It represents both Yale University and Curagen Corporation of New Haven, Conn., a spin-off, on matters relating to drug targeting, a gene-based technology used to treat disease. For many lawyers, representing these schools is like coming home. Welsh & Katz’s Gamson says that he’s “more comfortable in an academic setting.” Gamson received a Ph.D. in organic chemistry from Northwestern University in 1970, and he’s done patent work for the University of Illinois, Penn State, Northwestern, Yale, Scripps Institute in San Diego, and the University of Chicago. “I get my jollies hanging out with tech people,” he says. Vicki Veenker is a partner in the Menlo Park, Calif., office of New York’s Shearman & Sterling. Her father was a college professor, so she feels at home on campus. “I love professor-inventors,” she says. “And I think I understand a little more about academic institutions than my colleagues, who sometimes wish academic institutions would ‘act as rationally’ as their corporate clients do.”Veenker does patent work for both Stanford and Columbia universities. Her area of specialization is the use of recombinant DNA in drug development. Mark Wilson of the Austin, Texas, office of Houston’s Fulbright & Jaworski says, “It’s fun to get back into the lab.” And he means this literally. When it comes to rainmaking, Wilson says hanging out in the lab is one technique that’s worked for him. Wilson holds an M.A. in molecular biology from the University of Texas, now his client. He’s prosecuted patents dealing with a wide range of technologies, including chemotherapy, disease diagnosis, pharmaceutical development, and genetic engineering. Carol Larcher has a Ph.D. from the University of Illinois, where she used to conduct research on corn genomes. Today, she’s a partner in Chicago’s Leydig, Voit & Meyer and prosecutes patents for Iowa State University in that specialty. Patents themselves are good selling tools for IP lawyers looking for university clients, Larcher says. Scientists will often carefully read the patents within their areas of research. All patents list the lawyer or firm that wrote it. “Every time that a patent is issued or a patent application published, the work speaks for itself,” she says. Patent work for universities does have its downsides. Some academics are philosophically opposed to protecting IP. Larcher says that she occasionally encounters an uncooperative scientist. Sometimes she’s even had to cobble together a preliminary patent application with virtually no cooperation from the scientist. But that’s a generational issue, suggests 55-year-old Lynn Pasahow, a partner at Palo Alto, Calif.’s Fenwick & West. Most of the antipatent scientists “are my age or older,” he says. Nobel laureate Arthur Kornberg was legendary at Stanford for his opposition to the patenting of technology developed at the university. “But over time he was brought into the fold, and he agreed to his department’s being part of the Cohen-Boyer patent,” says Pasahow. Stanford’s Cohen-Boyer patent, which covers the technology involved in cloning, issued in 1980 and helped the school earn $200 million in licensing revenue. Biotech lawyer Bertram Rowland prosecuted the patent when he was at San Francisco’s Townsend and Townsend. Washington, D.C.’s Finnegan, Henderson, Farabow, Garrett & Dunner enforced it. These days scientists are becoming more accustomed to the patent process, but they often don’t follow procedure. Lawyers would like the school to file a patent application before the scientist has publicly disclosed an invention. This can lead to last-minute heroics. “Every patent lawyer who serves a major university has had his overnight preparing a patent application,” says Fenwick’s Pasahow. Not that he is complaining. Pasahow is working with Stanley Prusiner of the University of California, who won the Nobel Prize in medicine in 1997. “It’s the star factor,” Pasahow says. “There aren’t a lot of businesses in which you get to work with Nobel laureates.” Related charts: The Honor Roll: Top 25 U.S. Universities Ranked by 2000 Licensing Revenue Top Spawners: Schools With the Most Startup Companies

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