Conference Transcript

•  Patent agents or scientific advisors at law firms assist firm partners in due diligence, litigation, opinions, and other tasks similar to those of associates.

•  It is more cost-effective to have a scientific advisor, patent agent, or scientifically-trained intern, rather than a litigator, review technologies and perform due diligence.

•  Some attorneys prefer to prepare and prosecute patent applications rather than litigate, and some litigators do some patent applications to vary their work load.

•  At Morgan Finnegan, Ph.D.s hired as scientific advisors may or may not go to law school but are expected to become patent agents and to draft, prosecute, and secure patents.

•  A tech-transfer office protects a university's intellectual property and works with counsel and law firms to develop patents, search for prior patents, and some freedom-to-operate searching.

•  A tech-transfer office is the first door a scientist opens and is thus closer to the initial science, acting as a liaison or translator between scientists and lawyers.

•  A patent attorney is able to address real-world applications of the academic questions that are interesting and important to scientists. Sonnenfeld does not know any attorney who wishes he or she was still back at the bench.

•  Only an attorney can render a legal opinion on intellectual-property matters such as infringement. They rely on scientific advisors to understand the technology but are the only ones who can render an opinion or litigate.

•  A patent is a negative right, not a positive right. A patent allows the holder to exclude others from making, using, and selling that invention but does not give the right to make, use, or sell that invention. Someone else may hold a more encompassing patent that allows that right. A patent does not bestow the right to market a product. Thus, infringement is a serious issue and filing an opinion has legal ramifications. A client who is found guilty of willful patent infringement must pay treble damages.

•  A scientific advisor at a law firm deals with cutting-edge science every day.

•  A patent attorney does not leave science behind but must have a scientific background to understand technologies and be able to communicate scientific facts in a legal framework.

•  Many jobs in intellectual property expose the employee to a broader range of science and technology than does a research career. This is especially true at a law firm, as opposed to work in-house at a company, though there are a range of research areas even at a company dealing with a narrow area.