I didn’t take the typical route to becoming a patent attorney. Many start with a degree in a technical or scientific field, but I began with a degree in finance. After law school, I worked as an assistant district attorney. However, after five years, I realized that criminal law wasn’t where I wanted to stay. I didn’t want to be the lawyer dealing with excuses like, “I wasn’t holding that marijuana, it was my friend’s.” I was looking for something more meaningful, something that could help make a positive impact on society. That’s when I decided to reinvent myself and pursue intellectual property law, where I could work with inventors and help bring their ideas to life, making the world a better place.
Managing Corporate Patent and Trademark Portfolios
I run a smaller firm, so when clients come to me, they’re looking for a more personalized approach that large firms can’t provide. Despite this, I work with both multimillion-dollar corporations and individual inventors, from $50 million to $100 million companies to a mother with a new baby bottle nipple.
For corporate clients, I implement a comprehensive patent and trademark policy and help set up patent committees within the company. These committees track all new inventions from employees, ensuring we have proper documentation if needed in the future. This system also protects against potential theft of intellectual property by former employees. Additionally, I hold regular meetings with R&D teams, marketing, and decision-makers to discuss new inventions. I remind them that ultimately, the VP of the company will always make decisions based on return on investment (ROI), and we need to ensure the inventions are both protectable and commercially viable.
In essence, I see myself as part of the bigger picture. For example, when it comes to the process of creating an invention, I’m like the plumber in a construction project. I’m one important part of the process, making sure intellectual property is protected, while others focus on manufacturing, marketing, and distribution.
Leveraging Intellectual Property for Profit
There are several layers to how companies can leverage intellectual property. First, we conduct thorough research to determine whether an invention is unique. A patent doesn’t grant the right to make something, but it does give the right to prevent others from making it. For example, patents last for 20 years from the filing date, providing a window of exclusivity. Take Viagra as an example: when the patent expires, it loses its monopoly and becomes just another blue pill.
When assessing the viability of an invention, I always stress the importance of keeping an eye on the competition. Both you and your competitors are likely trying to improve upon similar ideas, and understanding what they’re doing is vital to making strategic decisions about protecting your own intellectual property.
Dealing with Close Patents
One common question clients ask is what happens when two patents are very close in nature but not exactly the same. Patents have to meet specific criteria: they need to be new, useful, and non-obvious. A simple way to explain this is through a table analogy: imagine I invent a table with four legs, and someone else invents a table with three legs. They might not be infringing because their table is a different design. However, if they modify the design by adding more functionality (like a pencil sharpener or PEZ dispenser), it may still infringe on my original patent.
The key issue is whether the changes are significant enough to make a new invention. Minor changes that don’t alter the essence of the invention won’t get around an existing patent.
Centralizing and Streamlining IP Management
At my firm, we provide personalized attention and work to streamline our clients’ IP management. While larger firms may rely on associates who aren’t as invested in each client’s success, I prioritize building one-on-one relationships. I work closely with clients to set up patent committees, track ideas, and handle potential infringement issues. In the case of infringement, we may start by sending cease-and-desist letters, but we’re also open to negotiating settlements and cross-licensing deals to avoid prolonged litigation.
Litigation is typically a last resort, and we work with specialized litigators when necessary, ensuring that patent law expertise is always a part of the process.
Working with Inventors and Corporations
In my practice, I not only defend intellectual property but also partner with inventors and corporations to help bring their ideas to market. Whether I’m working with a startup or a large corporation, I assess the feasibility and commercial viability of inventions. That means analyzing production costs and evaluating the logistics of manufacturing and shipping. The goal is to ensure that the invention can be produced profitably and meet consumer demand.
For instance, if an inventor creates a product but can’t manufacture it affordably, it might not be a viable business. I guide inventors through this process, making sure they understand the critical steps toward commercialization.
Teaching IP Protection in Corporate Settings
Through my co-authored book, Patent Fundamentals for Scientists and Engineers, and my training sessions, I help employees understand the importance of identifying and protecting intellectual property within corporations. Many employees don’t realize that the ideas they create may be valuable intellectual property. I emphasize the importance of tracking and documenting these ideas, using questionnaires and disclosure forms. Understanding the criteria for patentability—novelty, utility, and non-obviousness—is key.
Common Misconceptions about Inventions and Patents
A common misconception I encounter is the belief that minor changes to an existing invention automatically make it patentable. In reality, patents must be significantly different from previous inventions. Another misconception is that ideas must be groundbreaking to be patentable. Often, it’s about incremental improvements rather than completely novel concepts. However, these improvements must still meet the criteria for patentability and commercialization.
Advice for Aspiring Intellectual Property Attorneys
For anyone considering a career as an intellectual property attorney, my advice is to first gain practical experience through an internship. Intellectual property law requires a deep understanding of both the law and the industries you’re working with, so hands-on experience is invaluable. Additionally, be prepared to write constantly, as patent law requires meticulous documentation. Writing is a core part of the job, and you’ll spend much of your time revising and perfecting your work.
Ultimately, if you’re passionate about protecting innovation and contributing to technological advancement, IP law can be incredibly rewarding. But if you’re not excited by the work, it might not be the right field for you.
Conclusion:
Intellectual property law is about more than just legal protection; it’s about enabling creativity and innovation to thrive. Whether it’s helping a corporation protect a $100 million product or assisting an inventor with a new baby bottle nipple, the impact of IP law is vast and essential. It’s about finding ways to make ideas a reality and ensuring they’re protected for the long term.
