Jonathan D’Silva leads Penn State Law IP Clinic as new director

UNIVERSITY PARK, Pa. – Jonathan D’Silva joined Penn State Law in University Park as an assistant clinical professor of law and is the director of the Intellectual Property Clinic at the Happy Valley LaunchBox. As director, he will lead students working at the IP Clinic to help them gain hands-on experience of working in a small law firm and the responsibility of having a client. 

“The IP Clinic is a critical part of Penn State’s LaunchBox & Innovation Network that provides a wide array of no-cost resources needed by entrepreneurs and innovators,” said Vice Admiral (Ret.) James W. Houck, the interim dean of Penn State Law and the School of International Affairs. “We welcome Jon as the new clinic director to guide students through our important experiential learning program.”

D’Silva’s experience in IP law covers a variety of areas. He founded his own law firm in intellectual property called MMI Intellectual Property in Erie, PA. He is IP counsel for multinational corporations, universities, and a number of small businesses. He understands the ins and outs of serving all types of clients while also managing employees and the day-to-day responsibilities of running a firm, giving him a unique perspective as the clinic director.

“I’m CEO, janitor, and everything in-between,” he said. “My goal is to teach students the experience of how to run a practice. I didn’t have that working in a large law firm—they don’t teach you how to run a business. This includes payroll, what insurances you need, paying bills on time, and how to deal with that side of the business. It’s important for people who are going to be in practice to understand what it feels like to run a business.”

Michele Vollmer, associate dean of clinics and experiential learning, director of the Veterans and Servicemembers Legal Clinic, and clinical professor of law, said, “We are fortunate to have recruited Jon as a clinical professor at Penn State Law. When Jon shares his depth of experience with our law students, they are provided an excellent opportunity to learn from him as a one-on-one mentor in a small setting while representing a myriad of clients.”

D'Silva’s passion for patent law drives him to find the best avenue for his clients to move forward and help them realize the implications of their inventions. Since the patent route can be difficult and expensive, it may make more sense for a client to consider trade secrets or copyrights to protect the invention instead.

If a client chooses to go with the patent, D’Silva explained that it is his responsibility to take a broader examination of the client’s invention as a solution to a problem. He’ll likely find a wider range of situations where the invention may be applicable than what the inventor originally thought.

“It’s my job to make the patent worth it. That means showing the inventor that what they’ve come up with isn’t just a widget—it’s a solution. The widget is one embodiment of that solution and we then draft a patent application that covers every kind of widget that embodies that solution.”

Tom Sharbaugh, professor of practice, and director of the Entrepreneur Assistance Clinic at Penn State Law, said “Jon will be a great leader for the IP Clinic. There are not many IP lawyers in PA except in the major metropolitan areas, and with the addition of Jon, the IP Clinic will now be able to assist startup and early-stage entrepreneurs in PA—at no cost—to protect their inventions and innovations.”

D’Silva is looking forward to working with students within the clinic and expanding their knowledge of managing and working with clients. “This is going to be my first formal student interaction. It’s a different challenge. I’m hoping to make them see what the practice is going to be like and to give them that experience. This is a law firm. We have clients who have patents, trademarks, copyrights, licenses, and contracts that we need to deal with.”

He also sees the clinic as an opportunity to inform more students about their options when it comes to law. To work with patents, the individual must have an engineering or science degree and law degree—a fact D’Silva learned for himself after completing his master’s degree in Bioengineering at Cornell University. “Recruiting is important. There’s a shortage of patent attorneys in the world because people don’t tell engineers they can become lawyers,” he said.

D’Silva intends to continue to facilitate professional relationships across the state to make more people aware of the clinic as a valuable resource for entrepreneurs. “One of my charges is to connect the Penn State LaunchBoxes with the clinic and also with economic development in Pennsylvania as a whole.”

He has already started that venture to some extent, as he’s referred clients from his own law firm to the clinic. “I’ve been sending people to the clinic because intellectual property practice can be very expensive. The process of product development is also very expensive.”

One of the final ideas he wants to impress upon students working in the clinic is what they’re contributing to their client and what it means for people to have the clinic as a way to achieve their goals.

“Penn State has a lot of resources for start-ups and development that has enormous impacts on people’s lives, but it requires a lot of hard work and effort, and this is just one step. What the students do makes it possible for them to take that step.”

When the students have completed their time at the IP Clinic, D’Silva said, “I would hope that they would be more confident in their ability to hit the ground running in any future task they undertake, especially in dealing with clients and with their ability to communicate their knowledge and navigate unfamiliar systems. Many attorneys who do not take clinics [in law school] never get the chance to work with clients until after they graduate. Getting a taste of what their practice might be like is an invaluable opportunity.”

The Intellectual Property Clinic gives Penn State Law students the opportunity to develop practical skills from working in an environment similar to a small law firm and serving real clients. Their responsibilities resemble those of practicing IP lawyers, which include client intake and interview, intellectual property research, filing applications in the U.S. Patent and Trademark Office, and more. With the guidance of the clinic director, students gain realistic experience in intellectual property law practice.