Law, Science marriage appeals to some attorneys: intellectual property lawyers must have technical know-how and sound judgment

San Diego Business Journal, August 1, 2005 by Pat Broderick

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 R 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.

Playing Around

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.