Neslihan Doran-Civan and Ruthleen Uy | What does a career in patent prosecution look like?

BCLT Careers in Tech podcast

Patent prosecution and patent litigation are very different career paths that broadly fall under the heading of “patent attorney.” How do you know which one is right for you?

More on Neslihan Doran-Civan and Ruthleen Uy.

Episode Transcript


Ruthleen Uy, Wayne Stacy, Neslihan Doran-Civan


Wayne Stacy  00:00

Welcome, everyone to the Berkeley Center for Law and Technology’s Careers in Tech Podcast. I’m your host Wayne Stacy, the Executive Director of BCLT. And today we’ll be talking about the different paths for becoming a patent attorney, and what the actual work of a patent attorney day to day looks like. We have two experts from Kilpatrick, Townsend and Stockton. Joining us today to help us understand what these paths look like. We have Neslihan Doran-Civan. She’s a partner at Kilpatrick and Ruthleen Uy, who is senior counsel at Kilpatrick. Townsend. Thank you both for joining us and welcome. And before we talk about patents, I wanted to actually set out some terms. We talked a little bit before the recording started about what the term patent attorney means to different people and in different firms. And what I wanted to remind any the students that are listening is you got to ask when people say patent attorney, are they referring to the license? That you just you’re just been approved to practice before the USPTO? Or are they talking about a particular branch within the patent practice like patent prosecution, you always have to ask, because firms are different. So with that in mind, I think both Ruthleen and Neslihan would describe themselves as patent attorneys. And I was going to ask you to kick off this this discussion by telling us what what are your days looks like?


Neslihan Doran-Civan  01:32

Alright, so I’ll go first, this is Neslihan, the typical day would include two main tasks, I would say. One would be drafting a patent application. And the second major task is responding to Office actions that you receive from the patent office. And when we open these two boxes, the patent application preparation will include, obviously this all of them may not happen in a single day, you will talk to the engineers about their ideas that they came up with this invention. So that’s when your engineering side kicks in. Right. So you have the technical background, speak the language with the inventor. So when you get your details, then it’s pretty much on your own, you draft your patent applications, you may start with the different sections. So I’m not going to go into the details of that there is usually a preferred way or you can develop your own preferred way. And once you have your application filed with the USPTO, and then you sit tight for a few years, and then you get your first office action. So at that point, that’s our second box, second tasks, set of tasks when you this office action comes in, there are references cited in there, which requires you to kind of review them again, your engineering background comes into play. And then you identify the differences with your application and this references and prepare a response to the patent office. A part of that also may include interviews with the examiner’s so you call up the examiner to discuss the case. And then it becomes a negotiation at the end of the day. And if both sides agree what is the distinction is that needs to be captured in your claims in your application. And hopefully your application that will proceed to allowance.


Wayne Stacy  03:26

So Ruthleen I’ll get this question to you. And both of you are very senior and very expert level. In your practice. How does your practice day to day differ from the one of the first years that would be coming in?


Ruthleen Uy  03:42

I’m Ruthleen, I am counsel. And I’m located in Kilpatrick San Diego office. And I have about 19 years of patent prosecution experience. And I’m a member, my undergrad degree was in computer science. So I am in the Electrical Software Group for Kilpatrick. So just like what Wayne was saying earlier, like even though we’re all patent attorneys, we’re all in different groups, and we all specialize in different subject matter. So even within our firm, someone who’s in life sciences, who’s a patent attorney will be doing different work from myself who’s in the software group. And we we deal with different rejections. You know, I’m sure everyone’s familiar with Alice, which other groups are one to one, which other groups don’t have to address. So just in general, compared to a first year, I think as a first year, most of your time, it’s about learning the rules. There’s actually a lot of rules in the MPP to learn. And as a first year, I think for most firms, they allow you to have that opportunity just to figure out how things work, how to document due dates, how do you know what things are due? Because the first year is basically about figuring out how do you do this, when are filings due? What are foreign filings due? When you want, you have to report to the there’s a lot of due dates, basically. So in the first year, you’re just trying, most firms give you that opportunity to figure out, how do you do things and to learn how to address a rejection. Versus once you’re more senior, you’ve already figured out how to manage a large docket with different due dates, because you’re dealing with foreign and US. And then you’re also you know, there’s less, you’ll also help other folks answer their questions. And then you review the work of those junior to you. And in general, even within ourselves, you’re always learning something new, like me and Neslihan are always chatting like, oh, did you see this? How would you respond to this? So yes, you’re learning a lot your first year. But I would say you still continue to learn even as you’re more senior, because there’s always situations that come up that you haven’t seen before.


Wayne Stacy  05:53

Well, you said two things that I wanted to follow up on. One, I think all of us are the vintage to remember the printed version of the MPP, which is that the manual for patent examining procedure. So I want to make sure people knew what what that was, but it’s a in physical prints, it’s a very intimidating book that has a obscene number of rules to learn and try to navigate on a day to day basis. In that takes me to the second thing you pointed out about what you use the term dockets and due dates. It’d be great to understand how the idea of rules and coordination and management really becomes a key piece of a patent attorneys practice.


Neslihan Doran-Civan  06:42

So I think without question, let’s just kind of put in together what I was talking about the office actions right or or the applications, the applications will have most of the time, due date that they need to be filed at. So that date gets entered to our system. So and then we get reminded by by our docketing system to say, Okay, did you prepare the application, you know, your due date is coming up, you need to file by that date. And once we get these office actions that I talked about from USPTO, those also get logged into our system, and they trigger some response dates, there’s always a timeline associated with these actions. And so that’s, that’s what the docketing means. And the due dates are. And usually, as an attorney, even as a first year, let’s say you’re into the profession, for five months, you’ll have a docket, which means while you’ll have due dates that you need to prepare your assigned actions at. So and usually you are assigned a few matters. And as you know, as you get more and more experienced, that numbers probably becomes you may be handling about, I don’t know, 10, 15, you need to be very organized personally to be on top of your dates. And as you get as I said, as you get more senior, you may not have people kind of making sure that you get your assignments ready by the due dates.


Ruthleen Uy  08:17

And in handling the docket, you’re not alone, there’s a docketing system that keeps track of all the due dates, and you yourself should be maintaining your own docket. So you you know what you have do and what you need to work on. And that’s actually a benefit of doing patent prosecution is you generally know what’s going to happen, things shouldn’t be a surprise to you, because when communications come in, they tell you the due date, and you can dock it accordingly. And then if you don’t think you will have the time to complete it, then you can just, you know, ask the partner or a colleague or somebody else can someone work on this. And it’s just, it’s easier to maintain that way.


Wayne Stacy  08:52

It’s a great point. And you mentioned the docketing system and the document clerks in most of the big firms. You’re not alone, you always have groups of really great professionals helping guide the management process. Well, both of you have obviously reached a very senior successful level in your career. If you were talking to a first year, what would you say are the keys from getting to first year to your level of success?


Ruthleen Uy  09:20

I would say not to worry so much I feel like a lot of first years in general I think are like very worried to succeed. I think I would just say you’ll just you’ll you’ll do just fine. You know, just do your best and work at it. And I would say it’s probably the worry I think that’s with almost any career is is when you start out as a first year is am I doing this right? Like will you know and and you’ll be fine. Just have to talk to other people. You’re never alone in any situation. No, you’re never the only person experiencing This issue, you there’s always other people that you can talk to for help. It’s not as bad as it seems, basically.


Neslihan Doran-Civan  10:06

And I would say, raise your hand a lot and ask a lot of questions. So try to work with as many different senior associates partners as possible, you will learn something from each one of them, you will learn their styles, everybody has their own style, you’ll learn something about what they pay attention to. And that will make you grow in your career and make you a better practitioner.


Wayne Stacy  10:32

Stepping away from the law firm side of this, you’ll see, obviously, that lots of tech based corporations have in house patent attorneys. Can you tell us a little bit about what an in house patent attorney does? And how you interact with them?


Neslihan Doran-Civan  10:49

Sure, so the in house attorneys will be hailing the patents of their own firm, right. So they’re only seeing that technology. But also, since most of them especially the large companies, they will be working with one or more outside firms. So for example, Kilpatrick, right? So we’re working with in house counsel, their daily tasks are a little bit different than ours, they they’ll be probably doing less drafting applications or responses, but there’ll be more overseeing a portfolio in terms of so we do that for our clients as well. However, they will be at a better position in terms of determining their budgets, how they want to spend the money, which product they’re launching this year, so that they may want to shift the focus on their portfolio towards that applications or that technology. So we work with them. But in houses have more, I think managerial role in the patent portfolio management than an outside counsel, outside counsel also gets to work with a variety of different technologies with a variety of different clients. So that way, they’re exposed to maybe more issues that may come up, come up during prosecution. So that’s also the value that the outside counsel provides the in house counsel, because they may not have seen this issue before they may come across something. And instead of spending their time researching this, they’ll probably just pick up the phone and call their outside counsel and ask the question.


Ruthleen Uy  12:21

And in house counsel roles also vary, same as within a law firm, so even one in house counsel in a smaller firm, may do everything. They may draft, do the interviews, by law, their applications, manage their docket, manage everything, and then some in house counsel in really large companies. All they’re doing is managing a portfolio and they don’t do any prosecution at that point, because the company is so large, they have to manage such a large portfolio, they wouldn’t have time to draft and you do the interviews and everything else.


Wayne Stacy  12:56

Well, then the last question, we’re gonna go back for students that are in the investigation stage of their of their career. They’re not sure if they want to do patent prosecution, patent litigation transactional, they know they have a technical background, and they’d like to use it somewhere. So what are the questions that you would recommend they ask during the interview process or at career fairs?


Neslihan Doran-Civan  13:26

So I think first they should understand and I was I meant to actually circle back to something that you said at the beginning, when it’s the licensing requirements with USPTO. Any technical background does not qualify for being registered with USPTO. So they should probably first figure this out. If they have an engineering degree, if they have a science degree, probably they’re fine. But when we say technical background, that’s a little bit too broad. If they figure it out, and if they can actually be registered with the USPTO. That means that they can do patent prosecution. Otherwise, the other paths to litigation and other paths are still open. But to be a patent or to be registered in front to practice in front of USPTO. They will need that registration, the Patent Bar, as it’s often referred as. The other questions are, I think, one thing that Ruthleen brought up and that’s that’s been something really important for me is the predictability. So the patent prosecution is not a very exciting lifestyle, but it is a very predictable one. So you don’t go to the courtrooms most likely. And, you know, your job is, as I said, patent drafting and taking it out of the USPTO so that your client has a patent. But and the other question, I think they should ask themselves do they like this lifestyle where, you know, they like to go to the court, they like to argue the case, then I think the patent litigation is a better, better path.


Ruthleen Uy  14:57

Just to follow up on what Neslihan says, yeah, it’s not necessarily exciting, but it’s always challenging. And I feel we’re always thinking, and we’re always learning something new, which is, which I find, you know, enjoyable. And it’s always interesting when you hear a bunch of patent attorneys talking about something, because I don’t think anyone else has like a similar conversation, because it’s a mixture of technology and law. And then also following up to what Neslihan was saying there, you could still take the patent route, even if you don’t do the Patent Bar. And that’s as a patent engineer. And, but under that role, you would need to be supervised by someone who was registered and has a patent registration number, because you would not be allowed to file responses with the patent office. And there are. So and that’s a good way for you to test out like, as with anything, if you’re not sure, if you’re interested in doing it as a career, you should test it out, you know, so you can test out being a patent engineer while you’re an engineer, or you can go ahead and take the Patent Bar Exam, which is, you know, it’s a short exam, and then just get the registration number and then give it a go to see if you’re interested in it. It’s not that expensive. So you can, you can test it out to see if you’re interested. And then if not, you know, maybe you’d prefer to do litigation, it’s not going to hurt you to have a registration number to do patent litigation, they actually prefer it because it’s like, Oh, you already know the patent rules. When we do patent litigation you have you have knowledge in it. So it can all work on top of each other. It doesn’t have to be a standalone thing. You don’t have to do one or the other. You can try one and then go on to the next step.


Neslihan Doran-Civan  16:38

And maybe let’s also clarify these three terms, patent engineer has a technical background and no legal degree or requirements. Patent Agent is someone who has a technical degree and has passed the Patent Bar, so it’s registered with the USPTO may not have any other legal degrees or may not have a law degree. And if a person has passed the Patent Bar and also graduated from law school and passed the bar, then they become a patent attorney.


Wayne Stacy  17:06

Well, I want to thank you both for forgiving an introduction to these career paths. It’s hard for people to look at law firm websites and figure out these days, what it might look like for them as a first year. So it’s great to hear it firsthand. Thank you both again, and we’ll talk soon.


Ruthleen Uy  17:24

Sure. And we’re also available if anybody has questions in general about the different roles and the different opportunities that are that are available.