Intellectual property lawyers are a rare breed , professionals who not only made it through law school and passed the bar, but also managed to acquire some impressive scientific credentials.
Attorneys can practice patent law as litigators with no special credentials beyond a law degree. But in order to practice before the U.S. Patent and Trademark Office, attorneys must submit solid proof of a scientific education before they even can sit for the grueling patent bar exam, let alone pass it.
“You need good-quality, high-level experience in the field,” said Mitchell P. Brook, a partner in Luce, Forward, Hamilton & Scripps LLP’s Carmel Valley/San Diego office and an intellectual property specialist who has served as an instructor for a patent bar review course. “It’s a specialized field. The judgment in determining strategy doesn’t come from law school. Experience in the field is very important. Anyone can tell you about a one-year deadline, but judgment questions , what you can delay or must do immediately is very important, especially for emerging companies.”
Admitted to the California and New York U.S. Patent and Trademark Office, Brook is an alumnus of the venerable Massachusetts Institute of Technology.
Another example of the science/law marriage is Dr. Richard Warburg, a partner in Foley & Lardner LLP’s Del Mar office and a member of its intellectual property department, IP litigation practice and its food industry and emerging technologies industry teams.
Warburg has secured patent protection worldwide for clients in some highly esoteric fields, from bio-pharmacology and laser technology to neutron radiation and business-related technology. A graduate of Birmingham University in England, he has a Ph.D. in molecular biology and earned his law degree from Suffolk University magna cum laude.
Last year, Warburg decided to blend his knowledge of science and law, creating a board game called Patential Prescription for Success, which teaches players all about the arduous road of taking a drug to market, from invention to securing a patent, raising venture capital, getting approval from the Food and Drug Administration, even coping with litigation from competitors.
Registered to practice before the patent office, Warburg himself obtained one of his own patents back in the ’80s, a “micro-centrifuge” tube opener still used in labs today.
‘Voices Of Reason’
Steve Swinton, an IP lawyer with Latham & Watkins LLP in San Diego, says that “IP lawyers should serve as independent voices of reason in challenging technology and marketing assumptions upon which their clients rely in bringing products to market.”
Often, he said, company personnel don’t really know what they need, but will “merely follow old instincts or habits” in seeking legal help during the product development process.
“In the patent arena, the legal rules continue to change rapidly and clients that call for particular project assistance may not understand or recognize those changes,” said Swinton.
All that takes judgment, based on technical know-how, he said, as well as “a healthy dose of skepticism concerning the current realities of the cost and uncertainty of litigation.”
Beyond that, it can be just plain fun.
“People think practicing law can be mundane,” said Drew S. Hamilton, a partner in the San Diego office of Knobbe Martens Olson & Bear LLP, one of San Diego’s first IP law firms. “When we’re dealing with technology and the law, there is not a heck of a lot better marriage than that for a practice. It’s fun to work with these small companies and see technology develop.”
Clients, he said, appreciate that IP attorneys can speak their language.
“We understand the intricacies of what they’re doing,” said Hamilton. “These engineers are busy, and they’d just as soon not spend a lot of time educating us on the principles. They can spend their time being engineers.”
It’s easier to teach somebody the law than to teach them science, said Stephanie Seidman, an IP attorney with Fish & Richardson P.C., who earned her master’s degree in chemical physics and a Ph.D. in molecular biology/biochemistry, and was a postdoctoral staff fellow for the National Institutes of Health. She also worked as a patent examiner for the U.S. Patent and Trademark Office. But when Seidman started out, that wasn’t her plan.
“My whole life, growing up, I wanted to be a scientist,” she said. “I always had the aptitude. At some point, I realized there weren’t any jobs for Ph.D.s in the early ’80s. I never contemplated being a lawyer.”
A Growing Field
But then she heard that molecular biology was emerging as a “hot area,” and decided to apply for law school instead. She never looked back.
“There weren’t many of us back then,” she said.
Now, when Seidman is looking for entry-level people, she looks for someone who comes out of the lab armed with a Ph.D.
“It’s the best way to hire people,” she said.
Even if the field has evolved since Seidman entered it, the demand for IP attorneys continues to grow, right along with the technology that fuels it.
Consider that in Robert Half Legal’s 2005 Salary Guide, San Diego attorneys with four to nine-plus years’ experience in large firms earned from $129,800 to $201,300; midsize from $95,150 to $150,700; small to midsize from $75,075 to $127,600; and small $61,050 to $109,725.
But IP attorneys can command salaries that are way off the scale, according to Kristin Kanter, branch manager for Robert Half International Inc., and so can their staffs. IP attorneys, paralegals and secretaries can earn from $5,000 to $15,000 per year more if they have at least three years of experience, Kanter said.
At Buchanan Ingersoll PC, IP generates about 22 percent of the firm’s overall business, and is its third largest practice group, according to Lori K. Lecker, director of communications and public relations.
“We’ve seen significant growth in IP this year, particularly because of the new additions in our San Diego office and the firm’s acquisition of the lawyers from Burns Doane,” she said. “Our IP attorneys and patent agents make up nearly 20 percent of the firm’s total number of attorneys.”
Gordon & Rees, LLP’s IP practice has morphed from one attorney four years ago, Richard P. Sybert, to 17 full-time IP pros , 13 attorneys, two patent agents and two paralegals throughout the firm.
In San Diego, the IP group represents more than 10 percent of the firm’s attorneys, and is the third largest revenue generator year-to-date, approaching 20 percent of the local office’s revenue, according to Susan Ellis, director of marketing.
Sybert, a partner at Gordon & Rees, and head of its IP group, is a graduate of Harvard University, earned his master’s of business administration from UCLA, and, in 1990, served as then-Gov. Pete Wilson’s director of planning and research, responsible for strategic and long-range policy development for the state of California.
Before joining Gordon & Rees in 2001, Sybert served as general counsel for Lanard Toys, a global company based in Hong Kong with operations in Europe, North America and Asia. He is one of three lawyers in California admitted to practice in Hong Kong, said Sybert.
“These are not cases you can parachute into,” Sybert said about IP and trademark law. “These cases tend to be among the most difficult to settle, especially patent cases. There is a lot at stake, and a lot of venture company litigation. Either you own a patent or you don’t. There is no middle ground.”
While having a science background is helpful for preparing patent applications, and to talk with tech-oriented clients, as a litigator, he said, not having a high-tech background can be an advantage.
“The last thing you want to do is talk jargon to the jury and judges,” said Sybert.
Dr. John Wetherell, a partner in the San Diego office of Pillsbury Winthrop Shaw Pittman LLP, has a Ph.D. in microbiology/immunology from the University of Florida, did postdoctoral research at the Forsyth Dental Center in Boston, where he also held a National Institutes of Health postdoctoral fellowship. Before becoming an attorney, he was a research scientist and manager in the biotech industry.
“It’s been helpful to me, over the years, talking with clients,” he said. “All those practical issues you can bring to bear. We will work with them. We can look at the research and try to give them guidance of getting the most for their research dollar in light of where they are heading as a company. Then, they don’t have to deal with all the heartbreak of experiments that didn’t work.”
Wetherell said that IP lawyers have the best of both worlds.
“Being part of the ebb and flow of research, the rush of discovering something new, patent attorneys are very lucky,” he said. “We get to continue our scientific training and blend in with our knowledge of law and business, to try and protect our clients. You develop a very paternalistic feel for your client. You are in there. They pay us and we’re providing a service, but you are also trying to help them succeed. When they succeed, a certain part of you identifies with that. It’s very gratifying.”
One of Wetherell’s clients is Dr. Mitch Eggers, the chief executive officer of GenVault Corp., a Carlsbad-based company that provides archiving and retrieval services for organizations managing DNA collections. Wetherell helped the company patent a system to store bio-samples.
“Typically, you’re looking for an intellectual property firm that has a lot of depth in their technical background,” said Eggers. “It’s difficult to find a multidisciplined background to build these types of systems. You can have a situation where the intellectual property becomes too narrow. You need to develop the broadest claims possible to get the best protection.”
It all comes down to the bottom line, said Eggers.
“In our company, my job is to build value for shareholders,” he said. “A sure way to do that is to get new products in the market before any other company can get in. First to market.”
If a firm gets big enough and the market grows, “you can control the licensing and let people through your gate.”
“You are the toll keeper,” he added.
Getting good IP advice is crucial, said Eggers.
“It’s always surprising, when they do an in-depth search, that there are patents that come up we never saw,” he said. “It’s always good to know what the landscape is.”