Announcing the New Exciting Commercializing IP Course at Osgoode

Announcing the New Exciting Commercializing IP Course at Osgoode

I am excited to announce the addition of a new and exciting seminar course entitled “Legal Values: Commercializing Intellectual Property (IP)” to the ever-growing IP curriculum at Osgoode Hall Law School.

This new course has been a long time coming. Commercializing IP will provide a new learning opportunity for our IP Osgoode Innovation Clinic student volunteers and allow them to obtain credit for their work completed as a part of the team.  This course is also open to Lassonde School of Engineering students who are eager to learn more about intellectual property.

The IP Osgoode Innovation Clinic is a needs-based innovation-to-market legal clinic staffed by law students and run in collaboration with the Ontario Centres of Excellence’s Centre (OCE), who refers clients to the Clinic, and Torys LLP.   Students who are selected to be IP Osgoode Clinical Fellows provide business strategy and IP advice to individuals or start-up companies and by working pro bono, serve to minimize the client’s legal costs.

Commercializing IP will focus on issues related to the creation, development, protection, and exploitation of intellectual property rights as a business asset for both high-growth start-ups and established businesses.   It will examine the entire process of creating, capturing, protecting, leveraging, and transferring technology and ideas, including internal strategies designed to incentivize scientists and engineers engaged in innovation and idea generation; deciding whether, what, where, and how to obtain IP registrations and the related economics; developing commercialization strategies (selecting the target market and application for the idea) and business models; drafting and negotiation of technology transfer/licensing agreements; offensive and defensive IP strategies; assessing competitive IP; negotiating and interpreting IP-sensitive contracts including licenses, confidentiality agreements and non-competition agreements; transactional IP protection, with discussions on China, India and other emerging markets; and key technology specific legal issues relating to software, digital communications and data processing, mobile devices and social media, financial services and life sciences.

The course will also address the financing options available to the high-growth start-up, including crowd-sourcing and other modern financing techniques.

The course instructors are Loreto Grimaldi, Chief Operating Officer and General Counsel at MedAvail, and Ed Fan, a partner at Torys LLP.   Ed Fan and his associates at Torys LLP, Ebad Rahman and Yolande Dufresne, are the legal supervisory team that oversee the work of our IP Osgoode Clinical Fellows.

For the past two years, Ed Fan and his team have been providing invaluable theoretical and practical legal training for the IP Osgoode Clinical Fellows.  This rigorous training and orientation that all our Fellows undergo will now be formalized in this new Commercializing IP course.   All students selected to be IP Osgoode Clinical Fellows for the upcoming 2013-2014 academic year will be required to enroll in this new course for the winter 2014 term.   Since completion of the Commercializing IP course will become a pre-requisite for volunteering at the IP Osgoode Innovation Clinic next year, all students wishing to apply for an IP Osgoode Clinical Fellow position for the summer 2014 term and fall 2014 term should also enrol in this new course for the winter 2014 term.

Commercializing IP will leverage the experiences and challenges from leading experts in the fi and employ a variety of case-studies, including one of course instructor’s own companies, PharmaTrust (now MedAvail), a rapid-growth start-up in the pharmacy automation business and one of Ontario’s largest angel-funded start-up organizations.

While students with some background in substantive areas are welcome, no prior experience in these areas is required. Of course, as I often say in my own course syllabi,  students’ keen enthusiasm to learn about IP issues and participation in the course is strongly encouraged.

If you have any questions about this new course or would like more information, please contact

Professor Giuseppina D’Agostino is the Founder and Director of IP Osgoode, the IP Intensive Program and the IP Osgoode Innovation Clinic, and an Associate Professor at Osgoode Hall Law School.