Careers in Patent Law - University of Pennsylvania · Careers in Patent Law John M. Covert Director...
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Transcript of Careers in Patent Law - University of Pennsylvania · Careers in Patent Law John M. Covert Director...
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
3 © 2011 Sterne, Kessler, Goldstein, & Fox P.L.L.C. All Rights Reserved.
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.
4 © 2011 Sterne, Kessler, Goldstein, & Fox P.L.L.C. All Rights Reserved.
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
5 © 2011 Sterne, Kessler, Goldstein, & Fox P.L.L.C. All Rights Reserved.
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”
6 © 2011 Sterne, Kessler, Goldstein, & Fox P.L.L.C. All Rights Reserved.
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
7 © 2011 Sterne, Kessler, Goldstein, & Fox P.L.L.C. All Rights Reserved.
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
8 © 2011 Sterne, Kessler, Goldstein, & Fox P.L.L.C. All Rights Reserved.
Client Counseling
• Prepare Legal Opinions
– Freedom to operate
– Non-infringement
– Invalidity
– Patentability
• Carry out Due Diligence Investigations
– License negotiation
– VC funding
– Mergers and acquisitions
9 © 2011 Sterne, Kessler, Goldstein, & Fox P.L.L.C. All Rights Reserved.
Client Counseling
• Education
– IP Protection/transfer/enforcement
– Technology transfer
– Record keeping
– Publication/marketing
• Goal: To help our clients make informed
business decisions.
10 © 2011 Sterne, Kessler, Goldstein, & Fox P.L.L.C. All Rights Reserved.
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
11 © 2011 Sterne, Kessler, Goldstein, & Fox P.L.L.C. All Rights Reserved.
Types of law firms
• Big litigation firms
• Foreign “preparation and prosecution”
patent firms
• Patent firms that service U.S. companies
and universities
12 © 2011 Sterne, Kessler, Goldstein, & Fox P.L.L.C. All Rights Reserved.
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:
13 © 2011 Sterne, Kessler, Goldstein, & Fox P.L.L.C. All Rights Reserved.
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:
14 © 2011 Sterne, Kessler, Goldstein, & Fox P.L.L.C. All Rights Reserved.
Student Associate
• B.S., M.S. or Ph.D. in Chemistry, Biological
Science, or Engineering
• 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:
15 © 2011 Sterne, Kessler, Goldstein, & Fox P.L.L.C. All Rights Reserved.
Associate
• B.S., M.S. or Ph.D. in Chemistry, Biological
Science, or Engineering
• Law school graduate
• Type of work: Patent prosecution, licensing,
opinions, and/or litigation
Qualifications:
16 © 2011 Sterne, Kessler, Goldstein, & Fox P.L.L.C. All Rights Reserved.
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
17 © 2011 Sterne, Kessler, Goldstein, & Fox P.L.L.C. All Rights Reserved.
Why enter the world of patents?
• Job satisfaction
• Job security
• Wide variety of work assignments
• Compensated Well
18 © 2011 Sterne, Kessler, Goldstein, & Fox P.L.L.C. All Rights Reserved.
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
19 © 2011 Sterne, Kessler, Goldstein, & Fox P.L.L.C. All Rights Reserved.
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
20 © 2011 Sterne, Kessler, Goldstein, & Fox P.L.L.C. All Rights Reserved.
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.)
21 © 2011 Sterne, Kessler, Goldstein, & Fox P.L.L.C. All Rights Reserved.
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]