Careers in Patent Law - University of Pennsylvania · Careers in Patent Law John M. Covert Director ... • Trade Secrets –A formula, ... Must pass the USPTO Patent Bar Examination

October 05, 2011

© 2011 Sterne, Kessler, Goldstein, & Fox P.L.L.C. All Rights Reserved.

Careers in

Patent Law John M. Covert

Director

Sterne, Kessler, Goldstein & Fox P.L.L.C.

1100 New York Ave., N.W.

Washington, D.C. 20005

2 © 2011 Sterne, Kessler, Goldstein, & Fox P.L.L.C. All Rights Reserved.

Overview

• Introduction to Intellectual Property Law

• Careers in Patent Law

• How does a patent lawyer assist his/her clients?

• Patent Positions

• Sterne, Kessler, Goldstein & Fox


What is Intellectual Property Law?

• “A category of intangible rights protecting

commercially valuable products of the human

intellect.”

– Black’s Law Dictionary.

• Goal: “To promote the progress of science and

useful arts, by securing for limited times to

authors and inventors the exclusive right to

their respective writings and discoveries.”

• U.S. Constitution, Art. I, §8, cl.8.


Types of Intellectual Property

• Patents

– Protect new and useful processes, machines, manufactures

and compositions of matter

• Trademarks

– Marks which denote the source of goods (e.g. “Coca Cola”)

• Copyrights

– Protects the tangible expression of ideas (e.g. books, music,

performances)

• Trade Secrets

– A formula, practice, process, design, instrument, pattern, or

complilation of information that is not generally known or readily

ascertainable


Patents

• Exclusionary right

– Exclude others from making, using selling, offering to sell or importing an invention

• Requirements:

– Novel

– Non-obvious

– Written description, enablement and best mode

• Patents are issued by the U.S. Patent and Trademark Office – The exchange with the patent examiner is called

“patent prosecution”


The Patenting Process

• Invention reviewed to determine patentability

• A custom patent application is drafted

• The application is prosecuted in the U.S.

PTO and foreign patent offices

– It is typical and expected to receive multiple

rejections from the patent offices

– Can take 5 years or more to receive a patent

– Patent term is 20 years from filing date


Careers in Patent Law

• Functions of a Patent Attorney

– Draft and prosecute patent applications

– Draft license and assignment agreements

– Client counseling

– Enforce patents in court

– Conduct patent interferences/derivation

proceedings at the patent office

– Conduct patent reexaminations/post grant

review proceedings at the patent office


Client Counseling

• Prepare Legal Opinions

– Freedom to operate

– Non-infringement

– Invalidity

– Patentability

• Carry out Due Diligence Investigations

– License negotiation

– VC funding

– Mergers and acquisitions


Client Counseling

• Education

– IP Protection/transfer/enforcement

– Technology transfer

– Record keeping

– Publication/marketing

• Goal: To help our clients make informed

business decisions.


Patent Positions

• Law Firms:

– Technical Advisor or Technical Specialist

– Patent Agent

– Student Associate

– Associate

– Partner (Director)

• Corporate Patent Attorney (in-house counsel)

• Examiner at the U.S. Patent and Trademark

Office


Types of law firms

• Big litigation firms

• Foreign “preparation and prosecution”

patent firms

• Patent firms that service U.S. companies

and universities


Technical Specialist

• Ph.D. in Chemistry, Biological Science or Engineering

• Transition position, usually choose to become a

registered patent agent and/or a student associate

• Type of work: Varies, but often functions as an attorney

doing patent prosecution and discovery in litigations,

freedom to operate searches

Qualifications:


Patent Agent

• B.S., M.S. or Ph.D. in Chemistry, Biological

Science, or Engineering

• Passed the patent bar exam

• Type of work: Varies, but often entails patent

prosecution

Qualifications:


Student Associate



• Admitted to law school

• Type of work: Varies, but generally functions as a

patent attorney doing patent prosecution, providing

opinions and assisting in litigation matters

• Tuition reimbursement

• Reduced billable hour requirement

Qualifications:


Associate



• Law school graduate

• Type of work: Patent prosecution, licensing,

opinions, and/or litigation

Qualifications:


Becoming a Patent Attorney

• Prerequisites for the Patent Bar Exam (www.uspto.gov):

– Must have a bachelor’s degree in chemistry, biology, engineering or

related science

– Must be of good moral character

1. Must be a law school graduate and pass state bar exam

2. Must pass the USPTO Patent Bar Examination

Functions of a Patent Attorney

• Draft license and assignment agreements

• Prepare and prosecute patent applications

• Review other people’s patents and provide opinions

• Interferences/derivation proceedings

• Litigation


Why enter the world of patents?

• Job satisfaction

• Job security

• Wide variety of work assignments

• Compensated Well


Non-technology Skills

• Attention to detail

• Careful preparation and handling of paper

and electronic records

• Quickly appreciate differences in disclosed

technology

• Very good oral and written persuasive

communication skills

• Ability to deal with issues where there are

few black and white answers


Sterne, Kessler, Goldstein & Fox P.L.L.C.

• Legal pioneer in high tech IP law for 34 years

• Legal staff comprised of highly trained scientists and engineers; over 50 Ph.D.s

• Serve clients throughout the United States and across the globe from our Washington DC office

• DC presence gives us immediate access to:

– USPTO

– Federal Circuit

– Supreme Court

– Congress

– International Trade Commission


SKGF (continued)

• Industries served include: – Pharmaceutical (new molecules, synthesis methods,

drug design platforms, screening assays, new formulations, new therapeutic methods, diagnostics, medical imaging agents etc.)

– Biotechnology (molecular and cell biology, nanomedicines, pharmacogenomics, vaccines, bioprocessing, biofuels, therapeutic antibodies, nutraceuticals, biologics and biosimilars, stem cells etc.)

– Chemical: (agrochemicals, organic synthesis, food chemistry, nanotechnology, coatings, polymers, ceramics, paints etc.)


How To Apply

• Sterne Kessler Goldstein & Fox is looking for talent!

• Top Students should visit our website: www.skgf.com/careers.php

• OR

• Contact Sharon Silberstein, Legal Recruiting Coordinator: [email protected]

http://www.skgf.com/careers.php

mailto:[email protected]

Careers in Patent Law - University of Pennsylvania · Careers in Patent Law John M. Covert Director ... • Trade Secrets –A formula, ... Must pass the USPTO Patent Bar Examination

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