Intellectual property expert helps pave a path for open science

By Lisa Carricaburu

Future lawyers enrolled in Professor Jorge Contreras’s property law course may not remember every detail of the U.S. Supreme Court’s 2005 decision in Kelo v. New London or its impact on eminent domain law, but they do have something to help jog their memories.

Who, after all, could forget the selfie Contreras snapped in front of the little pink house in New London, Conn., that nurse Susette Kelo refused to surrender to waterfront development?

The selfie is just one in a series of photographs Contreras has snapped of himself at locations around the world that are central to landmark property law decisions. He shares them with his classes to help personalize important legal rulings, student Emily Swenson Mabey said. Contreras is masterful at reminding students of the “interesting realities of a case just when you were bogged down in all the legal intricacies,” she said.

Fascinating stories that propel the practice of law forward are what drew Contreras—an electrical engineer by training—to the profession. Lawyers help determine how these stories end, and Contreras has earned a place for himself as an international expert working to interpret not only established law, but to determine what constitutes property and who should control it in an age where—to cite just one example—the functions of a typical smartphone rely on hundreds of distinct patented technologies.

Eminent domain is one thing, but ultimately who should “own” key aspects of CRISPR genome-editing technology, or any other breakthrough, for that matter?

“There’s a balance you want to achieve where you want to incentivize … new technological advancement but you also want an ability for others to develop and innovate on top of existing inventions, and striking the right balance between those opposing forces in not easy,” he said. “No one has completely solved these issues yet, and it’s very interesting.”

University of Utah S.J. Quinney College of Law Professor Jorge Conteras. Photo by Austen Diamond.

A scientist’s curiosity leads to the law

Contreras is the first lawyer in his immediate family, but his fascination with science and technology came naturally; his mother was a computer programmer who studied biology in college, his father was a certified public accountant, and several aunts and uncles were doctors and scientists. As a child growing up in Florida and later Texas, he was raised in a home with numerous computers and microscopes—a place where random chemistry experiments were not unusual. “My mom always encouraged us to be curious about the world,” Contreras said. “We looked at the onions we were eating for dinner under a microscope and did all kinds of bizarre things as kids.”

The fundamentals of biology that would later inform some of his trailblazing legal work were not a primary interest, however. An ace student who took advanced placement and honors classes in high school, Contreras enrolled in regular biology in ninth grade, and said that’s where his formal training in the discipline ended. “I was grossed out by dissecting things,” he said.  “I didn’t want to dissect a fetal pig.”

Contreras went on to major in electrical engineering at Rice University in Houston, and it was while interning at Bell Laboratories following his sophomore year that he was first exposed to patent law. He worked in Bell Labs’ patent department, where he recognized that the practice of law might best nourish his natural curiosity.

“As an engineer, you can spend years working on one particular project, and that was something that wasn’t attractive to me,” he said. “But as a lawyer, you could work on a lot of different projects and see all the cool new technologies as they were being developed. That was appealing.”

Contreras, who also enjoyed and excelled at writing, added an English major to his undergraduate studies, and aimed his ambition toward law school. He attended Harvard Law School, where former President Barack Obama and U.S. Supreme Court Justice Neil Gorsuch were classmates.

After graduating cum laude from law school and clerking for Texas Supreme Court Chief Justice Thomas R. Philips, he practiced transactional and intellectual property law in Boston, London and Washington, D.C., for the international firm of Wilmer Cutler Pickering Hale and Dorr LLP. He was a mid-level associate at the firm when he received what he considers a random assignment that would end up defining his career.

At the forefront of ‘open science’

In 1998, Contreras was assigned to the team representing a unique consortium of the world’s major pharmaceutical companies that sought to build on the success of the Human Genome Project by funding additional related discoveries. The SNP (short for single nucleotide polymorphism) Consortium was made up of companies including Astra Zenaca, Glaxo Smithkline, Pfizer, Novartis, IBM and Motorola. Thirteen companies plus the UK-based Wellcome Trust invested $53 million to fund academic research laboratories to discover and map SNPs, the most common type of genetic variations that occur within a person’s DNA.

The consortium sought to place these discoveries in the public domain to encourage potentially lucrative exploration of how individuals might respond differently to certain drugs based on their genetic makeup. Why? “They did it to prevent a biotech company from doing it first, then making them pay for the information,” Contreras said. “It was better to put it in the public domain so they could all access it for free.”

Visionaries led the SNP Consortium, and it became famous in the genomics world, Contreras said. “The approach had never been contemplated before.”

He eventually became the Consortium’s principal attorney, and the work ignited a passion. Along with patent and intellectual property issues around getting the SNP data into the public domain, there was the question of how to enable the high-powered partners to interact without violating antitrust laws. Contreras worked on governance issues around how the consortium would operate, and contractual issues related to the academic labs that would do the research. “There was a whole range of legal issues, many of them quite novel.”

“Even though this was just a case of an associate getting put on a case, it plugged me into what you would call the open-science movement, and really introduced me to the people and players in this area, both on the science side and the policy side,” Contreras said.

The novice becomes an expert

While working with the SNP Consortium, Contreras met Francis Collins, a geneticist who led the Human Genome Project and is now director of the National Institutes of Health (NIH). Contreras sat on National Human Genome Research Institute Advisory Board, and now is a member of the Council of Councils of the entire NIH. “These positions have given me interesting insight into how biomedical research works in this country, how it’s funded, what the infrastructure is, and what the pros and cons are,” he said. “It’s taught me why it’s important to have open science and how that works to promote discovery in health care.”

Science is an accretive process, Contreras said. “Nobody starts from scratch, you’re always building on prior work, and the question is how easy it is to access current data about discoveries … so you can build on that prior work,” he said.

University of Utah S.J. Quinney College of Law Professor Jorge Contreras. Photo by Austen Diamond.

Some impediments are not bad. Intellectual property and patent law exist so inventors can profit from their discoveries. Without the potential to profit, companies would lack motivation to invest in research and development.

On the other hand, exclusive rights can slow innovation by those who might build on the discoveries of others. The debate over who ultimately will control key patents and licensing agreements to CRISPR genome-editing technology is an example.

Contreras joined Jacob S. Sherkow of New York Law School to write a February 2017 Science article advocating that University of California Berkeley, the University of Vienna and the Broad Institute, a collaboration between the Massachusetts Institute of Technology and Harvard University, should collaborate to open up licensing stemming from key CRISPR patents to the many biomedical and biopharmaceutical companies that see the technology as game changing in their race to discover new cures.

They also urged the NIH to update its guidelines regarding the licensing of federally funded inventions. “Platform technologies such as CRISPR should be recognized as offering the same potential for industrywide innovation and discovery as traditional research tools,” the article said.

Contreras remains hopeful that open science will prevail as the battle wages over CRISPR patents and licensing.

“We could see a greater opening up of the patent landscape if it becomes clear that the companies created by Broad and Berkeley [to manage licensing of the technology] need each other to operate,” he said. “We might see some kind of compromise.”

Contreras emphasized that CRISPR is just one technology raising legal questions. More broadly, he is interested in legal issues related to the use, dissemination, and sharing of data wherever it may be.  How genetic data should be treated from a legal perspective is a focus, for example.

Researcher, writer, professor

His prolific research and writing fit well with his role as a professor, the career transition that eventually led Contreras to the University of Utah.

After 17 years of practicing law with the same firm, he realized that the academic articles he occasionally had the opportunity to write were the part of his job he enjoyed most. Academia called when his wife, Kimberly Kaphingst, a health communication researcher, got an offer from Washington University Medical School in St. Louis, Mo., a city that lacked the same large legal practice community to which Contreras had grown accustomed in Boston and Washington, D.C.

Contreras took a nontenure-track position at Washington University to decide whether he liked teaching and writing, and found that he did. That led to a tenure-track appointment at American University Washington College of Law, where he was when Kaphingst began exploring an opportunity at Salt Lake City’s Huntsman Cancer Institute. “Our goal was to find a school where we could both get an appointment so we could live in the same city.”

He liked the U of U because it offered him an appointment at the S.J. Quinney College of Law and an opportunity to do hands-on work as an adjunct professor in the School of Medicine’s Department of Human Genetics, where he teaches courses on the ethical, social, and legal issues surrounding genetics and genomic medicine. “It’s extremely rare for a university to offer that kind of interdisciplinary connection,” he said.  “Every law school says it does this but in practice, it’s rare.”

Also rare are law professors with the type of distinguished career in private practice that Contreras brought with him to the U of U., said Eugene Mishchenko, a 2018 S.J. Quinney graduate who also is a U of U physics professor.

“He brought important new expertise,” Mishchenko said. “He is a brilliant person who happened to be in the right place at the right time, and that is what has made him so prominent.”

Since joining the U of U faculty in 2014 and earning the S.J. Quinney School’s Early Career Teaching Award for the 2015-16 academic year, Contreras has become a sought-after teacher, known for his meticulous preparation, dry sense of humor, and generous mentorship. In addition to the selfies he shares to illustrate instructive legal cases, he’s also known for adding clips from “The Simpsons” to his lectures.

“He is a very good teacher loved by students for his teaching style,” Mishchenko said “He is engaging not just through his personality, though, but through his intellect. I very much appreciated that as his student.”

Student Carlos Quijada views Contreras as a mentor who nurtures and supports his interest in intellectual property law. Contreras has taught him the power—and the responsibility—that comes with practicing law, he said. “He’s helped me see that behind every breakthrough in society is a lawyer playing a part. We have the power to do good, to make a difference in daily life.”

The story behind a legal precedent

When he’s not teaching at the U of U or working abroad (Contreras spent the summer teaching and lecturing at Tilburg University in the Netherlands) Contreras feeds his passion for writing.  He’s at work on a book about Salt Lake City-based Myriad Genetics Inc. and the eventual U.S. Supreme Court decision holding that no company can patent human genes.

To Contreras, the storyteller, the book is a thriller.

“Don’t expect a legal monograph,” he said. “There are plenty of books out there about gene patenting and I’ve written journal articles that 25 academics are going to read and that’s pretty much it.”

He hopes five years of research, 60-plus interviews, dozens of Freedom of Information Act requests, and thousands of pages of legal documents will lead to a book he hopes to model after Jonathan Harr’s best-selling 1995 book, “A Civil Action.”

“It will explain how the law deals with new technologies … and how these legal questions get resolved,” he said.  “It will describe the crazy number of coincidences, strokes of good luck, and pure serendipity that lead us to the law.”

Researching the book has given Contreras some new stories to share with students.

And considering that Myriad’s headquarters are just a few miles up the hill from the S.J. Quinney College of Law, Contreras should not find it too hard to take a new selfie.


Lisa Carricaburu is a Utah-based freelancer writer.