David Park is an IP Intensive student and a 3L JD candidate at Osgoode Hall Law School. As part of the course requirements, students were asked to write a reflective blog on their internship experience.
Experiential education was one of the main reasons I decided to pursue legal studies at Osgoode. Over the past few months, I was lucky to be placed at two very different organizations as part of the IP and Technology Intensive Program. One of my placements was at Alectra Utilities, a large utilities company that serves approximately one million homes and businesses in Ontario. My other placement was at the BEST Lab, a unique initiative at York University for fostering entrepreneurship in students from Lassonde School of Engineering.
During my virtual placement at Alectra, I continued an IP audit started by the previous year’s intern. This involved updating Alectra’s record of registered trademarks using information from external legal counsel. My unique contributions to the audit included drafting memoranda for departments, requesting information that could be helpful to Alectra in trademark opposition and expungement proceedings. I also updated a “Document Log” for the legal team, which is a record of contracts that have IP-related provisions. While reviewing the contracts that I added to the Document Log, I learned a lot about Alectra’s business strategy and its projects piloted by the Green Energy & Technology Centre (GRE&T Centre), the company’s innovation hub. My work at Alectra also included providing feedback on IP-related practices, based on my observations in meetings with GRE&T Centre teams. This open-ended task was a great opportunity for me to apply my legal education and lessons from prior work experiences in a context with real stakes. Alectra is in early stages of developing a robust IP strategy and I was excited to provide a few pointers on IP commercialization. Before my internship ended, I also made sure to ask questions to the in-house counsel about their careers, to have a better understanding of the challenges of their roles.
The BEST Lab may be a smaller organization than Alectra, but it certainly did not lack in interesting work. One of my deliverables for the BEST Lab was hosting weekly drop-in sessions to answer IP-related questions from BEST Lab members. Through these sessions, I met one member who had a fascinating technology and a plan to build a new company. Based on one of their requests, I prepared a video resource for the BEST Lab that describes important elements of IP licensing agreements. Another task I completed at the BEST Lab was drafting their membership agreement and code of conduct, using precedents provided by my supervisors. As part of this assignment, I suggested clauses based on my understanding of the BEST Lab’s operations and goals. My most interesting assignment at the BEST Lab was researching potential solutions to an IP issue in a new program that will soon be launched at the BEST Lab.
York University is one of the very few universities in North America that allow students to retain IP they create at school. This means that York’s engineering students retain IP in prototypes they create for their final-year Capstone group projects. An IP ownership issue arises where some students in a Capstone group wish to start a business with their Capstone IP, but some group members do not. All Capstone group members are co-inventors with title to the Capstone IP. Without being assigned the title, interest, and rights of the inventors who are not co-founding the startup, it could be extremely risky to build a business because the non-participating inventors may sell their title to a competitor or make demands for exorbitant compensation after the business is launched. After conducting online research and reaching out to representatives from organizations/initiatives similar to the BEST Lab, I concluded that the most elegant solution may be to facilitate negotiations between the inventors for an IP assignment agreement by providing critical information such as industry standards for compensation structures/amounts.
Despite having to work in a virtual environment during the current pandemic, I am grateful for the experiential education from my internships which cannot be substituted by conventional classroom teaching. If you are a 1L or 2L student interested in the IP field, the IP and Technology Intensive Program is an opportunity you do not want to miss.