Interviewed by Bert Schiettecatte, Expert Computer Scientist.
Before studying law, you obtained your PhD in electrical and computer engineering at the University of Maryland, College Park. How did you decide to study law and focus your career on intellectual property law rather than choosing an engineering career?
My foray into a legal career is more serendipitous than planned. After finishing my Ph.D., I continued at the University of Maryland as a post-doctoral research associate to groom myself for an academic faculty career. I was publishing papers left and right and applying for research grants. I even won a prestigious grant from the National Science Foundation as a co-principal-investigator (PI). But soon I realized that faculty positions in my area of expertise do not necessarily open up at locations of my choice. By that time, my husband and I bought our first home in Maryland, and were expecting our first child. My husband had a nascent start-up. In order to be geographically least disruptive, I started thinking about how I can use my deep technical background and my love for analytical writing in a career other than academia. It just so happened that a friend who switched career from science to patent law was visiting us at that time, and advised me to apply for jobs as a technical advisor to the patent attorneys in a law firm. And that was a “light bulb” moment for me, as I had already worked with a patent attorney for a patent application that the University of Maryland’s Technology Transfer Office had filed based partly on my graduate research work. So I applied to a few law firms in the Washington DC Metro area and got my first job as a technical advisor at an intellectual property boutique firm without much struggle. And I immediately liked patent law. After that, there was no looking back.
How did you choose Santa Clara University for your studies in law?
I was six months pregnant when I started my first job in patent law in May 2005. I eventually became a patent agent by passing the patent bar exam, but waited for my son to grow up a little before I embraced becoming a student again to get a law degree. In summer 2008, we moved to the silicon valley as my husband joined Google. Being the mother of a young child and having a job at a law firm restricted my choices of law school. But fortunately Santa Clara University is right in my backyard and has one of the nation’s top five intellectual property law programs. So I joined as a full-time law student while continuing to work part-time at my then law firm. I know a lot of working adults join Santa Clara University for the flexibility of its part-time program.
I understand you have been focusing mostly on patent prosecution. Do you also do patent litigation? Which type of work do you enjoy the most, and why?
Right after graduating from law school, I tried my hand at patent litigation at the law firm that sponsored my legal education. While it was thrilling to work on a trade secret misappropriation case at a California state court and a patent infringement case at the International Trade Commission (ITC), I realized that I missed brainstorming with the inventors and being part of a constructive process of building patent asset portfolio for a company. Also, as my son is still young, I craved for predictability in my schedule, which patent prosecution certainly offers. Therefore in May 2018, I have joined my current firm Lowenstein Sandler’s Palo Alto office to focus more on patent prosecution and counseling than patent litigation.
I read on Linkedin about your pro-bono patent drafting work for the WANDA organization. Can you tell us more about WANDA, and how you came to work with them?
I am extremely thankful to my current law firm Lowenstein Sandler for the opportunity to work on a patent pro bono project under the auspices of the Cardozo/Google Patent Diversity Project. WANDA is an acronym for a non-profit organization (Women Advancing Nutrition, Dietetics and Agriculture) based in Washington DC that focuses on promoting healthy eating among African American diaspora harnessing ancestral food knowledge from Africa. I am very proud to have worked with WANDA’s founder and CEO Tambra Raye Stevenson to get a design patent on the unique design for an eponymous doll Wanda, who is the “spokespuppet” for the organization.
The important discussion on equal career opportunities for women in technology has intensified these past years, especially in Silicon Valley. Do you think there is a difference in challenges that women face, if they choose a career in law, versus a career in engineering?
According to statistics available on the Society of Women Engineers' website, 37.8% of STEM and Engineering undergraduate degrees are awarded to women in 2020. Enrollment numbers are even more encouraging for women in law, as 55.29% of the law students were women in 2021. However, only a small percentage of women who go to law school pursue a legal career in technology. I would think the career challenges for women engineers and women attorneys in the technology sector in the silicon valley would be somewhat similar, e.g., not enough role models at work, ticking biological clock if the women aspire to have children, balancing work-related travel with family obligations, inability to negotiate a salary as high as their male counterparts etc. A complaint I have often heard from women engineers is that after a while they find their work a bit too impersonal, i.e. lacking human touch. On the other hand, women lawyers, especially in private practice, sometimes perceive business development to be a daunting task. So there are pros and cons for women on both sides. Personally, I have received an incredible amount of support, encouragement and mentorship both from the firm management as well as from my clients. So I like to maintain a positive outlook for the future of women in tech.
What are the key considerations you think inventors today have to keep in mind, to protect their work, and do you think that the role of patents today has changed compared to 20 years ago?
The inventors should envision, and communicate to the patent attorney, all reasonably possible modifications of their current invention to have a broader scope of patent protection, because technology moves fast, and typical shelf life of a patented product is shortening compared to what it was 20 years ago. Patent attorneys should also use their knowledge of changing patent law to encourage the inventors to think beyond the immediate solution.
The USPTO recently made a landmark decision concluding that AI cannot be a named patent inventor. What are your thoughts on this decision and can you elaborate on what this means for inventors who might rely on AI for new inventions they plan to patent?
Worldwide AI is still not recognized as inventors in any major jurisdiction. (Fun fact: South Africa, a minor jurisdiction, does recognize AI as inventor). Inventors can still have a patent on inventions partially generated by AI by drafting claims smartly with the help of an experienced patent attorney. For example, claims can focus on how to train the AI to generate the results, e.g., what type of data set should be used, whether there is a component of supervised learning, whether the final result is human-evaluated etc. In other words, until the area of AI inventorship gets some legal clarity, there are creative ways to get patents granted to protect AI inventions.
For law students who want to enter your area of specialty down the line in their careers, which skills do you think are the most important ones to focus on? As an add-on to this question, what did no-one tell you about working in intellectual property, that you wish you knew, as a law school student?
If you choose a career in patent prosecution, your science/engineering knowledge, ability to pick up a new area of technology fast, and interpersonal skills to connect with the inventors, in-house counsels and the patent office Examiners would be much more useful than reading about case laws. Drafting a patent application depends on your ability to grasp the inventive concept, and prosecuting the patent application is largely rule-based rather than case law based. Of course if you choose a different area of intellectual property law, such as litigation or technology transaction, your focus areas and required skillset would differ. If possible, it is very beneficial for law students to find out what area of intellectual property law suits their interest and ability during summer internships during law school.
What do you think makes a good expert witness?
During my externship at a Federal Judge’s chambers during a semester while at law school, I observed how an expert witness in a patent infringement case distilled a complex technology into a simple scenario for the non-technical Judge and jury members to easily comprehend. I think that ability to come down from the ivory tower and give voice to the client’s case in layman terms rather than showing off your technical expertise with jargons is the foremost quality for an expert witness when deposed in a courtroom. For the written reports, it is better if the expert can write on his/her own rather than simply agreeing to what the attorneys are prompting.
How can readers learn more about your work and contact you?
My official firm bio should be a good starting point: https://www.lowenstein.com/people/attorneys/madhumita-datta
My LinkedIn page is another resource: https://www.linkedin.com/in/mdatta/