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TTO enlists alumni attorneys to provide discounted services

The article below appeared in the December 2008 issue of Technology Transfer Tactics. Click here to subscribe.

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The Office of Technology Transfer at Lehigh University in Pennsylvania is only four years old, and it is not yet a large operation. But in those four years Lehigh inventors have disclosed more than 70 new inventions and the office has filed patent applications on more than half that number. Eight patents have been issued to university researchers, and five start-up companies have been formed based on Lehigh inventions. Though total revenues remain modest at $300,000 in fiscal year 2008, the OTT’s growth rate is solid, up from just $12,000 in 2005.

The accelerating activity requires the services of patent attorneys, and with a modest budget the tech transfer team at Lehigh has found a creative way to afford those services: They use alumni patent attorneys who are willing to work at discounted rates for their alma mater. “I’d say our overall savings range from 20% to 30%,” offers Yatin S. Karpe, PhD, senior manager of the OTT.

Starting from scratch

When Karpe joined the office more than two years ago, “we definitely did not have relationships with outside organizations; we had to start from scratch,” he recalls. “That was especially true on the patenting side.” Karpe quickly recognized the importance of obtaining patent services as reasonably priced as possible given the office’s modest budget.

The move to solicit discounted legal work from alums was actually prompted by one attorney who approached the OTT, recalls Thomas Meischeid, the office’s interim director. “He was very interested in giving back to the university,” Meisheid says. “He offered us discount rates, and now he’s with a firm that is trying to expand its IP portfolio.”

The fact that the attorney approached the university provided a clue that it wasn’t just the OTT that viewed a discount arrangement as favorable. Though the attorneys and firms involved do offer a cut rate, they achieve a new line of steady business as well as the PR value of working with the university, Karpe notes. As for the specifics of negotiating the discount, he continues, “it’s just like negotiating a license; it’s a mutually beneficial relationship. I assume they see establishing a relationship with the university and its inventors as worthwhile.”

In seeking out other attorneys, Karpe kept in mind that alums are always trying to connect back to their alma mater. “Our Corporate and Foundation Relations office can help identify where alums are,” he says. “Another way to identify them is to go to a lot of conferences or meetings and network.”

Karpe says he is not looking to establish a huge network, which could get unmanageable. “We’re looking for three to five,” he says.” You don’t want to go out and do this with a dozen firms — especially because we’re basically a start-up office.” So far, Lehigh has relationships with Kurt L. Ehresman (’88), a partner in the Mid-Atlantic law firm of Saul Ewing, and Paul F. Prestia (’59), a partner in the Philadelphia-based firm of RatnerPrestia.

More than counseling

According to Meischeid, the services provided by these attorneys go beyond standard legal counsel. “These firms are readily available and offer to come on campus to do seminars for the faculty, staff and students,” he says. “It’s very beneficial in terms of educating inventors.”

As alumni, the attorneys are also more accommodating in terms of scheduling, adds Karpe. “Once inventors disclose inventions, we do our due diligence and then we schedule a meeting with the attorney for them,” he says. “The attorneys are flexible, and in most cases they will do it on their own time.” The OTT tries to schedule the meetings at the convenience of the inventor, and usually the attorneys can accommodate those needs. In addition, Karpe notes, the attorneys will come to campus once a month or quarterly “to get to meet a number of the faculty members.”

Time is money

Karpe and Meischeid note that the protection of intellectual property can be very time-consuming, particularly claim preparation, but that working with these alumni attorneys has actually saved time, and ultimately, even more money.

“As the inventors have learned more and dealt more with these patent attorneys, they’ve come to know they have to provide all relevant information, and we’ve been revising our patent disclosure form so it provides that information to the attorney up front,” says Karpe.

Adds Meischeid: “This cuts overall costs even further because of the reduced need for interaction with the attorneys.”

Editor’s note: Contact Karpe at yatin.karpe@ lehigh.edu and Meischeid at tjm5@lehigh.edu; both can
be reached by phone at 610-758-5883.



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