I always had science questions, and that has just never gone away. The nickname my dad gave me growing up was Photon Man. I would have long conversations with an uncle of mine who worked at the NIST labs here in Boulder. He was a physicist, and we used to have wonderfully-long discussions about everything from the color of the sky to quantum mechanics. And not quick discussions like the ones that we’re all so used to today. When you asked him a question, you had to have patience. You had to be ready to sit and listen to the sound of breathing, yours, his, nothing else. Often for minutes at a time. Then, when you weren’t sure you could stand the silence anymore, he’d break the silence with a “well…” and off he’d go.
I never got tired of asking those questions. In college, teammates called me “questions,” which was partially pejorative, but I couldn’t help myself. There are a lot of interesting people with a lot of interesting thoughts and knowledge out there. I couldn’t focus on just one subject, so I studied both physics/engineering and history. I spent many nights in the physics labs, forming microscopic sensors, in software labs, writing code, watching scopes, and analyzing measurements. But there was often no one to talk to or ask questions of in all that lab time. The love for science was definitely there, but I couldn’t see myself hunched over oscilloscopes and lines of Matlab for the rest of my days.
I wanted to be out there talking to people. And to this day my best hours are spent with innovators and founders picking their brains and pulling out those nuggets of the innovation story that make a broad and defensible patent sail through the Patent Office.
Back in college, when someone mentioned patent law to me, my curiosity piqued. Maybe there was a way to marry my love for optics and subatomic particles with the chance to craft business strategies and work directly with the people that turn innovations into thriving businesses.
Marrying Science With the Law
After undergrad, my wheels were spinning about patent law, but I knew I wasn’t ready just yet to pivot away from science and head down the costly and time-consuming path through law school. Before I took that leap, I got my Master’s in electrical engineering with a focus on optics and microfabrication and spent a lot more time in the NIST Boulder labs building microscopic single-photon detectors.
Mutual connections brought me to Craig, Sean, and Shane and the early Neugeboren O’Dowd team. And just over 10 years later at the only firm that I’ve been with since law school, it’s clear that it’s been a great marriage between science and law and well worth the leap from my engineering career.
It’s very challenging. Helping companies grow can seem like a battleship board of sorts. You always have to be thinking about what is hidden on the other side of the board. How will technology change? Can an invention have applications outside the purview of the inventors? Will an incredible technology be manufacturable — will it be profitable — is the market ready yet? Which ideas and what types of patents should a company invest its IP budget and engineer’s time in?
The Battleship Board of Patent Litigation
My favorite part of the day is reading up on a new technology or learning about the evolution of a technology that I used to be on the cutting edge of. For instance, I did a lot of semiconductor fabrication in grad school, but a decade later the cutting edge of chip fab has drastically changed as have the key players in the industry. Getting up to speed with a new client or invention involves not only the technical side but also figuring out the marketplace.
My other favorite aspect of the day is using that new knowledge to work with inventors, often in person, to see past the marketing focus that many engineers and especially founders see their inventions with, and get to the heart of the challenge that inventors overcame. That’s when an invention’s true value really blossoms. Often, without understanding that backstory, and understanding it from an insider’s standpoint, many inventions can seem rather obvious.
After those initial discussions, the strategizing begins. How are we going to protect a concept? What types of patents does the company need to protect its intellectual property? How can I achieve strong coverage while staying within a startup’s budget?
It’s very easy to just go out and have a rote set of procedures for turning an invention disclosure into a patent application. But I like to find more nuanced approaches that are tailored to a given client.
And we need to think about what the product is going to look like five years from now. It’s easy for some attorneys to get sucked in by the inventor’s narrow perspective on use cases and lose sight of the long-term implications of a concept.
We have to try and foresee everything, like the way you do when you play battleship. What’s on the other side of the board? We have to make those educated guesses.
Getting the big picture of things is the foundation of science, and also of patent law. We have to be able to see into the future and how a variety of different people are going to look at an invention.
I create patents with the goal of them never needing to be litigated — a strong settlement position backed by strong patents is often the most valuable position for a client to be in. And for many clients, more valuable than the rare chance that they will take a claim all the way to a trial’s conclusion. If litigation is required, Carolyn Juarez, our firm’s lead litigator, is a masterful lawyer to have on one’s side. And for larger cases, we have a number of local litigation-specializing firms that we work closely with.
Related: Keeping Competitors Away From Your Game-Changing Product
The Process of Patent Prosecution
I have a different perspective than someone who is in court litigating a patent. The term patent prosecution is not what the layperson might think it is.
When you hear the word prosecution, you think the system is seeking to throw someone in jail. It’s not like that.
It’s called patent prosecution because after I draft the patent it is submitted to the Patent Office and I fight like a criminal prosecutor might, to see that document clear the Patent Office with as much value as possible, despite the Patent Examiners’ attempts to do the opposite — widdle a patent down to as small and weak of a document as possible.
People think about patents as being something you use in court to block other people from performing or using a product. But that doesn’t happen too often. In fact, I’ve only had a couple of my patents even make it to litigation.
And I can’t fault them — one of their jobs is to issue patents that won’t inadvertently grant protection over ideas that are already in the public domain or that have been previously patented. And that is a tough task given the limited time that Examiners can commit to any one of the hundreds of cases that they examine every year, and given the fact that the detailed legal language of a patent doesn’t really have absolute bounds until it’s litigated. It’s easy for an Examiner to unintentionally allow overly-broad patents, so they tend to be very conservative. Unfortunately, that conservatism hurts our clients, so patent prosecution is largely a negotiation. We try to obtain as broad of protection as possible while working to reassure the Examiner that the patent won’t cover existing technology.
Empowering Business
There’s a certain amount of creativity that goes into connecting science and the law. Many times, we are doing the jobs of scientists, lawyers, and storytellers. It’s our job to show why every invention is more than a trivial advance, and at the same time to look beyond today’s market and technology and say, “What if you apply this over here? What if you tweak this thing, what would happen?”
I get to work with some of the most creative and gutsy people around — founders are a rare breed. And there’s nothing dull about empowering their efforts to change the world one patent at a time.