I started this blog to begin a conversation about patent law and policy, particularly how it affects those of us involved in “prep/pros” and, more particularly, how it affects examination policy and practice in the USPTO. This blog will have a particular focus on biotechnology and pharma patent law and practice. Of course, I welcome your comments and short casenotes or opinion letters on anything in this area, particularly on anything I have to say. After almost 30 years in practice, I have a fair amount to say, but I wanted to do something by way of introduction. It is one thing to have your photo on a firm website or a blog, with a brief, self-congratulatory bio paragraph that says you can do anything – at least, anything in your particular sub-specialty of IP law. It is quite another thing to ask colleagues and/or clients to read what you have to say about their profession on a regular basis and to have any opinion about it.
So this morning I updated my resume (or C.V. as the academics say). (There is a link to my resume at the end of this post.) Since I am a founding partner of one of the largest patent law firms in the United States, I am not looking for a job, but pulling out meeting programs and journals made me think a lot about what I have been doing recently and how I (and most of you) got started in the first place. Most patent attorneys are what I sometimes refer to as “failed technocrats”. What I mean by that is that if we were such great biologists or chemists (or even M.D.’s in some cases), we would still be doing it at some level, and not writing patent applications and opinions on other people’s work. I have quite a few patents naming me as a co-inventor – see U.S. Pat. No. 4,149,017 – but none of them ever made a dime as far as I know. I left my job at Miles Laboratories in 1978 to go to law school, and never looked back.
I think a beginner patent attorney needs three things to attain success in patent prosecution (I am going to drop the “prep/pros” abbreviation hereafter). She/he needs to be technically proficient, be a good writer and realize that we are all in a service industry. We are not seeing heart patients or doing roofing work or moving furniture, but we depend on a steady flow of new work from old (and new) clients. In a service business, you have to replace about 20% of your clients and the work they give you every year, on average. Client service can and will be the subject of other postings (perhaps yours). Patent attorneys who are missing any one of these three legs of their professional stool are not going to make it.
But can you think of a more interesting profession? If you had to design an interesting job, “biotech/chem patent attorney” might be number one. We get to interact with researchers who are making discoveries that are on the cutting edge of everything – medicine, agriculture, energy, and on and on. Time magazine has put stem cells on its cover more than once. When the human genome was sequenced, Esquire put Heidi Klum on the cover, with the question, “Who Owns This Body?” Now that was a conversation starter at parties. I have a big “university practice”, but even if you do not get to hob-nob with Nobel prize contenders or medical device pioneers, it is “all good” because it is today’s news – or tomorrow’s. I have seen pioneering patents expire before the claimed inventions got close to commercial development. Then, after you “interview” the inventors, you get to go back and write interesting stories about what they are doing. Occasionally, I call patent attorneys “highly paid technical writers”, but that is only when I want to make a point about the need to write well. Writing and filing the application is just the beginning. We then have to deal with administrative law; we are now lobbyists and advocates for our clients before a Government agency, and on a path that can lead to the Supreme Court.
So this post is getting fairly long, and I really have not done much except to give you random thoughts, like Kevin Costner gave Susan Sarandon in Bull Durham, though lacking some of the free-form wit. I did get my resume updated and a link to it is to the right of this post. Patents I have written and/or prosecuted are listed on the firm website. I have had a fair amount of success over the years – including obtaining the first patents on Bt corn and obtaining patents that cover the anti-HIV drug marketed as Abacavir/Ziagen. I have also had some major set-backs – not just patents I didn’t obtain in time or at all, but ones due to failures to “get” what my clients needed or wanted. Well, we all know that “you can’t always get what you want.” This blog is going to be about how you can get what you, and your clients, need.