Rachna Ram and Joseph Snyder | Life sciences patent prosecution

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What can new attorneys expect, and how does life sciences patent prosecution differ from high-tech patent prosecution?


Episode Transcript

SPEAKERS

Joe Snyder, Wayne Stacy, Rachna Ram

 

Wayne Stacy  

Welcome, everyone to the Berkeley Center for Law and Technology’s Careers in Tech podcast. I’m your host, Wayne Stacy, and today we’re talking about patent prosecution, and in particular patent prosecution in the chemical, biotech and life sciences fields. Anybody that’s ever been involved in prosecution knows the world breaks down into the tech tech and the life sciences world in they do vary in anybody that tells you that they’re exactly the same, hasn’t been paying attention, or that maybe they didn’t hear the question. But either way, we have two wonderful guests today from Kilpatrick, Townsend and Stockton. We have Dr. Joe Snyder. He’s one of the Bay Area’s top law firm practitioners, and he’s the managing partner of the Walnut Creek office. For Kilpatrick, Dr. Snyder focuses on the patent prosecution and counseling in the life sciences, chemical biotech fields. And with him, we have one of the newer people to join Kilpatrick. And that is Dr. Rachna Ram. She’s an associate attorney at Kilpatrick, focusing on chemistry and life sciences. But we have to tell the whole story. Before turning to the law, she got her PhD from MIT which, okay, more importantly, she got her bachelor’s from UC Berkeley. That’s what you need to take away from this entire conversation. So with that introduction, thank you both for taking a few few minutes to help today.

 

Joe Snyder  

Thank you Wayne. 

 

Wayne Stacy  

And Joe, I notice I didn’t, I didn’t give your academic background because I didn’t see a bear anywhere in your background. But- but rest assured everyone, Joe’s background is just as good. Just not quite as Berkeley focused. So with all of that in mind, Joe, you want to tell us a little bit about your practice and the kind of clients you you ended up managing? 

 

Joe Snyder  

Yes, thanks, Wayne. So I’m primarily a patent prosecutor, which means basically, I’m drafting patent applications and responding to office actions from those patent applications. I also spend a fair amount of my time drafting opinions, which include both non infringement opinions as well as freedom to operate opinions. And so that that probably takes up the bulk of my, my time. And, and managing chemistry and life science clients, takes a little bit of time, I mean, you know, we begin this career, you know, as an associate with with client communications. But as we go on and develop our careers, there’s more and more client management. And it’s interesting, because our clients are, you know, startup clients, kind of, in addition, to start up clients, we also have kind of mid level clients, as well as large clients, each one of those bring different issues to the table. You know, a startup client, although we may be doing patent prosecution, etc., they also bring licensing and tech transaction issues, as well as maybe trade secrets. And so it really gives you sort of all types of experiences. The medium sized clients might bring employment issues, right, so we’re able to bring in some employment lawyers to help them out with those sorts of with those sorts of issues. A larger client probably kind of stays in their lane a little bit more with respect to patent prosecution, but they too, can bring you know, litigation issues to us. So knowing when to you know, answer the question with our experience is good. But do we have to bring in another practitioner who has maybe more experience in that particular area for that for that client? Right. 

 

Wayne Stacy  

So I was gonna expand on one of the, the projects that you mentioned here, and that’s opinions you talked about freedom to operate and non infringement. Now in the high tech world, those are, those are rare to see. It’s a special day when you find a freedom to operate opinion in the computer science world. Tell us a little bit about what that practice looks like in your world because I think that’s really, really different. 

 

Joe Snyder  

Yeah, so you have clients, CLS clients chemistry and life science clients,  pharmaceutical clients are developing products. And these products, of course, take a long time and to develop, and they have a long shelf life, right. So they have to make sure that, you know, they have clearance with respect to this product, because they’re going to be investing millions of dollars, both in the development and the clinical trials, which are associated with that product, they have to make sure that there’s no third parties out there with patent claims that read on their their product. So it’s up to us do the searching, once we have the landscape of that particular product, how do we distinguish our client’s product from what’s out there? And it’s, you know, it should be done fairly early in the development of the product, because they, they may need to bob and weave. You know, with respect, like, let’s say it’s a pharmaceutical formulation, is there a way to kind of swap out various ingredients or components of the formulation, in order to avoid the third party patents? 

 

Wayne Stacy  

Well, Joe, you’re kind of at the pinnacle of your career, what kind of projects can an associate expect in in this, this area? 

 

Joe Snyder  

We expect that the associate comes in and you know, get on the ground running. Most of our associates when they began have already summered with us, so they get a pretty good flavor of what, you know, what law firms are all about, and what kind of projects but basically, kind of start them off with, you know, responding to office actions, many times the office action has been prepared, let’s say, you know, in a larger jurisdictions, such as the US, or Europe, and then they can use that as a, as a roadmap, if you will, for smaller jurisdictions, and, and, and so they can, they can learn how to do office actions, responses to these other jurisdictions, as well, as, you know, drafting patents, that’s kind of our bread and butter, drafting patent applications. Many of our clients will file these patent applications and 567 different jurisdictions. And so you know, that that will be then prepared. So that those are the those are the bread and butter of our patent, patent practice. And that’s what they can expect it to do early on. 

 

Wayne Stacy  

One question that often comes up is interaction with clients, you know, in some practices, you may be 10 years into your career before you ever get to talk to a client unsupervised or unchaperoned. How does this field work? And how does it vary by client size? 

 

Joe Snyder  

Yeah, we like to get our associates, you know, right in there with the clients, as soon as possible. Now, over the last couple years, with COVID, there hasn’t been that much. Of course, in person communications, face to face, but of course, we’re using zoom and, you know, telephone, and, and, you know, and the associate needs to learn to, to talk to the client, and client communications are very important. And so we try to do it very early in their career, there’s no reason to kind of wait and, and, and learn to talk to the clients. You know, so we press them in. And, you know, just the importance way of client communication can’t be overstressed. Right. You know, the client is basically allowing us, you know, to, you know, to, to protect their most prized assets. And so, you know, timely communications are important and frequent communications are important. And, you know, and not, you know, most of the time, you get a very good relationship, working relationship with your client. And, and so, you know, you pick up the phone, you tell them what’s going on, there may be issues, there’s prior issues that have to be discussed, they then may talk to their, their scientists , you know, those folks in the lab who are who are down there doing the work, they may have seen the references are ready, and so they know what the distinguishing aspects are with respect to those references. So, so it’s important that that the that the associate learns how to communicate with the, with the client early on in their career. 

 

Wayne Stacy  

Rachna couple of questions for you. We’ve got students with a PhD in the life sciences and they’re looking at career options. What questions would you recommend that they they ask?

 

Joe Snyder  

Once, you’re talking about specifically the law students that are already in your program. Yeah. So they’ve made the decision, obviously to become attorneys. So when I was trying to decide which law firm to join, for example, I was very much in the same position. I don’t have any attorneys in my family. They’re mostly doctors and scientists. And so I did ask around for advice. And I think some of the best advice that I received, which actually led me to joining Kilpatrick Townsend came from one of the adjunct professors for one of my antitrust and IP classes. And he said, to think about two different factors, which seemed pretty important one was, pick a place on a very practical level with offices that are close to where you want to live. And for me, I was living in Albany, I have kids there, and I have a house there. So one of the advantages of Kilpatrick Townsend is it has both the Walnut Creek office where Joe is working, and that’s a reverse commute by car. And then it also has the San Francisco office, which you can get to by ferry by Bart, by the Transbay bus. So it was very convenient in that sense. But then also, the second factor was to pick a place where you get the best training. And I think for me, you know, even when I was doing my postdoc, which, incidentally, was also at UC Berkeley, I, I knew about Townsend, Townsend and crew, it had been a pretty well known patent prosecution, life sciences practice, even back then. And once you know, it merged to form Kilpatrick, Townsend and Stockton, I knew that a lot of the partners had been there for a very long time. So it would be a great place to get trained by people that have been doing this work for a very long time. 

 

Wayne Stacy  

That is, that’s great advice that’s often overlooked. The first, I don’t know, five years of your practice, are really an extension of your education. And the most important thing is extending your education you need to learn that means good work. And that means good mentors. So that’s that’s great advice on that front. A little more basic question is, you know, some students struggle with how do they understand the difference between a life in patent litigation, life sciences, patent litigation, and life sciences, patent prosecution? And is there a good way for for students to try to understand the differences in those career paths? Because it’s it start for those of those that know what it looks like. But when you’re starting this journey, they don’t look that different? So how do you? How do you help them ask the right questions?

 

Rachna Ram  

Let Joe answer. I always knew I wanted to do prosecution.  Yeah. Yeah.  

 

Joe Snyder  

So so there are there is a big difference between patent prosecution and patent litigation, right. So, you know, so, so a client life science client has, you know, patent portfolio. And that patent portfolio, you know, is, comes about by drafting patent applications and prosecuting those patent applications around the world, right. And it’s, they’re very discreet projects, drafting a patent application for an associate may take, like, you know, 30 to 35 hours to draft, right. And it’s, you know, it’s very concrete, that 30 or 35 hours might come over a weekend, possibly, if there’s going to be a presentation or something like that. But typically, you know, it’s, it’s done during normal work hours, and, and, and very discreet projects, whereas, patent litigation comes out of the blue. And, you know, many times, it’s like, that things need to get done on a very, very rapid pace. So it’s like, you know, working, you know, very rapidly to get the answers complete, and the briefs done, there’s these very tight time lines that need to be complete. So so it’s, it’s, it’s different in that, you know, that that the, the timelines for the for the work product are very different. You know, but some folks like the very rapid pace of patent litigation and some folks like more of a very discreet projects of patent prosecution right. So those those the main differences with respect to that those two, they’re very, they’re complementary, but they’re, they’re very different. 

 

Wayne Stacy  

So I’ll tell you, if you listen to these podcasts, you’ll figure out my entire background. But the little nugget for today is I started my career, I was assigned to the Patent Prosecution Group. And after about 18 months, they kicked me out and told me I was too disagreeable to be a prosecutor, I needed to go work with a litigators. And I spent the next 20 years being a trial lawyer. So at the time, I thought that was terribly offensive. My wife’s like, Yeah, we all knew that. So there you go. That’s a big difference. I, I didn’t understand that the two paths going in, and there were just different, they match different personalities. 

 

Joe Snyder  

So in addition to that weighing on, you know, the patent prosecutors in front of the USPTO, the examiner, and possibly, you know, the P tab, whereas the, the patent litigator, of course, is in is in federal court, sometimes in the state court, but most of the time in federal court, so that that also, you know, where that where what forum is, you know, the, between the two different disciplines are much different as well.

 

Wayne Stacy  

Well, if you’re a patent litigator, and you’ve wound up in state courts, you’re probably going to get fired pretty quickly. You always made a mistake. 

 

Joe Snyder  

I was thinking more maybe for ownership–  

 

Wayne Stacy  

Right. 

 

Joe Snyder  

it up. Yeah. 

 

Wayne Stacy  

Well, Rachna I want to give you the last question. And in this life sciences world, there’s kind of this unique group of scientists out there that are either looking at law school, or looking at becoming patent agents to bring that expertise into the patent world. What would you what would you tell that group of individuals as they start exploring a career in patent prosecution?

 

Rachna Ram  

So, again, we’re talking about people that have already there, they have science backgrounds, and they’re trying to decide whether to become patent agents or attorneys.

 

Wayne Stacy  

Yes, that’s right.

 

Rachna Ram  

Okay. So, I mean, it’s definitely helpful to have some experience working, I’d say, either in a company or with some tech transfer office, you have a feel for the type of work that you might wind up doing, because as most law students, no law school is very fast. You know, pretty much after the first year, you’re starting to make decisions about law firms that you want to join or specialties that you want to be in. So, you know, having the time to actually talk to people or understand what you’re going to do is definitely an advantage. I think there are some fundamental differences between the science world and the law world. Both things that would appeal to scientists as well as would just be an adjustment for scientists. One big factor is I think, when you’re doing science research, you focus very much on one project or one area, whereas in patent prosecution, you do do deep dives in a lot of different projects. So you might be working on many different areas. And that can be an advantage because you’re getting this bird’s eye view of everything that’s going on in the science community, which is pretty cool, and especially from a global level. But you also have to learn to manage different types of projects. And I think that’s where you know, your writing abilities and your communication abilities really become very important because you realize, not only you are dealing with multiple projects where you’re, you know, you might be debating something very precise like, like, you know, figure two lane x, you know, you show this and therefore, our claim can be broader, or, you know, there’s this very specific definition and some materials and methods of some prior art document that helps you teach away from what you’re trying to patent. And so being able to do that with multiple projects and juggle that is, it’s a skill that you need to develop. And, and so I think that’s why you you spend a lot of the time at the beginning, editing and revising, and what you’re doing because you have to be able to convey information very concisely yet completely. And you realize that all of your clients are dealing with the same problem too, because the tech transfer people, the GCS, all of these folks are also dealing with lots of complicated issues coming in. But you know, it at the same time, you do get this very interesting perspective on what’s happening in the science community that you don’t get when you’re just working on one specific area. So it’s an interesting area to go into for sure.

 

Wayne Stacy  

Well, wonderful, thank you. Thank you both for trying to help young attorneys and students and those considering becoming lawyers. Navigate this path. There’s just not a lot of information out there about the life sciences field the tech tech world kind of sucks the oxygen out of the out of the room sometimes and that’s just can’t be so thank you.

 

Joe Snyder  

Thank you Wayne.

 

Rachna Ram  

Yeah thank you Wayne.