Interviewed by Bert Schiettecatte, Expert Computer Scientist.
On your linkedin profile I read you studied Chemical Engineering originally at the University of Delaware. How did you decide to study law and focus your career on intellectual property?
The short of it is that I took a course in undergrad, called “Intellectual Property for Scientists and Engineers,” and fell in love with patent law. It married my analytical skills with my love of learning and my interest in science and technology.
I noticed you previously worked for big law firms before starting your own practice, Schneer IP law. How did you decide to start your own firm and how is running your own firm different from working for a big law firm?
The hours in big law were grueling. The deal used to be, years ago, that you worked about 7 years for long hours and then made partner. Now you need a book of business. So, I realized that building a book of business was more important than “paying my dues” (at least after the first few years of practice) and decided I should work on building my own practice rather than growing somebody else’s. That was the realization that led to me starting the firm.
As for the differences, there are many, but the most important is that I enjoy a lot more autonomy over the way the practice is run, which is very important to me. I want to be able to serve the clients unimpeded by the bureaucracy that accompanies large practices. When clients have a problem, they contact me directly, not an associate, not a paralegal. My thought goes into everything, from the wording of emails to the way invoices are presented. At some point I will have to delegate more, but I suspect I will always be able to “put my stamp” on things, even while being “hands off.” As a result, the clients are much happier than they seemed to be in biglaw.
Your profile mentions that you are a former US patent examiner. Does this give you an advantage in patent prosecution and how?
I do like to think so. I understand the motivations examiners have and the constraints on their time. As a result, I am able to present my clients’ positions in a way that is most palatable to the examiners, without jeopardizing my clients’ positions.
I know some “inside baseball” about the patent office that you wouldn’t know if you didn’t work there. They can be a bit opaque. I’ll leave it at that.
What are your thoughts on the current patent legislation? Do you think there is room for improvement, and if you could, what would you change, and why?
It is close but not there yet. I like the idea of codifying specific exceptions to patent eligibility, and to limiting ineligible subject matter to those exceptions, but the language of the most recent bill is far too expansive and open ended.
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 sheer number of patents has gone up exponentially. Patent 1 million was issued in 1910. Patent 10 million was issued in 2015. This means 9 million more patents have issued in the last 100 years than in the prior 200 combined.
As a result, the way patents have been enforced has changed. You now see large corporations enforce multiple patents at the same time. Patents have become more about securing funding and assets than ever before. Previously the threat of enforcement would be used to secure licensing, but the arms race of patents has made everyone a lot less litigious and more respectful. Companies have become really savvy at avoiding infringement.
I think inventors, especially smaller inventors, should realize that while quality is important, so is quantity. To compete in today’s IP marketplace, you really need to focus on building a patent portfolio. Obtaining a broad patent that covers your entire idea is becoming less realistic.
I recently came across a news post on linkedin about PatentPal, which from what I understand, is a language generation tool for patent drafting. What are your thoughts on the abilities of state of the art machine learning to help draft patents?
These tools have a long way to go, but they are promising in that they automate the rote aspects of patent drafting. They also eliminate mistakes and needless human error that stemmed from these automated drafting tasks being performed manually.
They will continue to evolve and become more sophisticated and useful overtime and will soon be indispensable to most patent practices.
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 to focus on?
A lot of lawyers struggle with people skills and confidence. If you can work on those you can set yourself apart. The field is so “type A,” that it is hard to imagine outworking anyone. As a result, there has to be a different way to stand out. Type A people tend to put people on edge, so while their hard work can be appreciated, they can be a pain to work with. I have seen these types of lawyers turn clients off throughout my career despite their great work ethics. Learn to be the lawyer who clients love to be around and who makes their life easier.
Which do you feel are some of the most interesting cases you worked on in your career, and why?
I have worked on so many interesting cases. I love learning about technology, so the ones that stand out are usually technology that I find interesting. Some highlights— patent applications for: a lithium refining process, a nanopowder manufacturing process, a machine-learning-based personality test, an asphalt recycling process, a sulfur dioxide removal process, and a waterproof phone speaker.
What did no-one tell you about working in intellectual property, that you wish you knew, as a law school student?
How important it is to have a service related mindset. This is not a job where you can have a bad attitude or ‘mail it in.’ Many of us got into patent law because we found science more interesting than people at times. We have a reputation of being ‘socially awkward.” But we spend a lot of time counseling clients, so you have to be interested in the people to succeed in this field. Fortunately, the people I interact with and who become clients of the firm tend to be interesting and smart, which makes them easy to get along with.
What do you think makes a good expert witness?
In patent cases, it is most important that an expert witness be able to take direction. Patent cases have a strategy and a theory of the case that are very important. Arguments can fall apart on subtle nuanced points that are not often apparent to anyone other than patent attorneys.
So while the patent attorneys often aren’t as technically skilled as their experts, it is important that the expert be flexible to framing their testimony in a way that is most favorable to the case.
Where can our readers find more information about your work and how can they contact you?