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Patent Attorney
Michael Best & Friedrich

 

I am an associate in the intellectual property legal practice area of Michael Best & Friedrich (MBF). As an associate, I primarily do work for clients of partners of the firm. My practice focuses on patent matters with an emphasis on securing patent protection for electro-mechanical, electrical, mechanical, biomedical and business method inventions. The types of projects I primarily work on include:

• conducting patent searches (search for prior art that may affect the patentability of our client's invention)
• conducting patentability analyses (analyze the results of a patent search we conducted or of the results of a patent search one of our searching services conducted to determine what scope of patent protection we believe our client can obtain)
• preparing patent applications (draft a document including text and drawings that fully and accurately describes the invention in sufficient detail to enable a person skilled in the art to which it pertains to make and use the invention.)
• prosecuting patent applications to allowance (communicating with the United States Patent and Trademark Office to obtain a patent from a patent application - this is often a negotiation process that either limits or extends the scope of patent protection available to our clients)
• conducting infringement analyses (analyze patents to determine if the claims read on a device or process of one of our clients or one of its competitors)
• preparing non-infringement and patent invalidity opinions (prepare legal opinions that identify reasons why our clients do not infringe patents of other entities, these opinions are utilized to show our client had a reason for believing it was able to make, use, or sell the item corresponding to the opinion)

A typical day includes working on any number of the above noted projects for any number of clients. I often spend time during each day working on several main projects and a several minor projects. However, the work of each day often depends on calls I receive or deadlines that are approaching. As a patent prosecutor, I generally know what I have to do and when it needs to be done, thereby allowing me to plan in advance. However, sometimes unexpected projects pop-up that need to be done quickly.

A majority of my firm's intellectual property clients are mid-to-large-sized companies that have established intellectual property programs, however, we do also work with some small companies and independent inventors. As illustrated by the types of projects I work on, we work with our clients often starting in the early stages of product development to determine what aspects of the design should and can be patented. The process continues through the commercialization of the invention and realization of patent protection. The type of patent protection our client's pursue often depends on the industry our client is in and how patent aggressive or passive that industry is. Once a patent is obtained, we work with the client when others are infringing the client's patent(s). If our client is worried about infringing another entity's patent, we work with them to design around the claims of the patent to avoid infringement concerns or obtain a license from the patent owner.

 

A law degree (JD) to become an attorney. Admission to the patent bar requires passing an examination. To qualify to sit for the examination one must have some type of technical background (e.g., an engineering or hard science degree).

 

Analytical thinking - be able to understand and attack problems based on rules and laws applicable to the problem. Technical writing - need to be able to understand and describe the technology of the inventions we are helping our clients patent. Good communication skills - for working with clients, other attorneys and staff in the firm, and corresponding with the Patent Office.

 

During my junior year at MSOE, I decided that I would most likely want to continue my education after receiving my B.S. in BE. I began to investigate options available including graduate engineering programs, medical school and law school. The possibility of law school was initially raised during a discussion with a classmate at MSOE whose brother was a lawyer. I communicated with others knowledgeable about law school and the legal profession, focussing primarily on areas of law that would allow me to utilize my engineering. Although I wasn't sure if I wanted to obtain a typical engineering type job, I was sure I wanted to utilize my engineering degree in some capacity. Thus, my search primarily focused on patent law and product liability law. After learning more, I decided that if I was to go to law school, I would go so I could practice patent law. I took the LSAT (i.e., the standardized test required to get into law school) and after completing the application process was accepted at the University of Wisconsin Law School (in Madison). I began law school in the fall of 1998.

While at law school I took elective classes in intellectual property law areas. These classes in combination with my summer associate experience at MBF confirmed my desires of becoming a patent attorney. I enjoy being a patent attorney because it give me an opportunity to utilize my engineering background to understand and describe our clients' inventions. Actually, in order to be admitted to the patent bar (i.e., be admitted to practice before the United States Patent and Trademark Office) a technical background is requirement.

I was a summer associate with MBF during the summer of 2000, worked part-time at MBF during my final semester of law school, and started full time at MBF in January of 2001. As I went directly to law school from MSOE, I never held a full-time engineering job, however, I was an engineering intern at Johnson Controls for approximately one and a half years while at MSOE.

 

Good - flexibility of my schedule: we have minimum billing requirements that we must meet, we can adjust our schedule to achieve those requirements as long as we are generally available to those individuals we are working with, thus I can work early in the week if I know I have something going on later in the week, make hours up over the weekend, or whatever. Good - ability to learn about new technologies and assist clients in protecting those technologies. Bad - billing in 0.1 hour increments and billing requirements.

 

One aspect of my job that I enjoy is that I do work on projects for different clients that utilize different technologies. I feel I have learned about many different technologies that I would not have necessarily learned about if I had obtained an engineering type job right after MSOE. Although I may have not learned about all the technologies I currently work on at MSOE, my MSOE education provided me the tools to learn and understand about new and interesting things.

 

 

As a patent attorney, I think BE is a great choice because it gives me a good foundation in both the mechanical and electrical art. Accordingly, I can work on projects that include either or both technologies and be confident in my technical background.

 

Yes, I enjoyed the small class sizes and the opportunities that were available across campus to focus not only on academics but also becoming a well-rounded graduate.

 

While attending Badger Boys State as a junior in high school I attended a presentation by the MSOE admission staff. Based on that presentation, MSOE seemed like it would be a perfect fit for me. I chose BE specifically because it was characterized as one of the most challenging at MSOE and because I though working with medical devices in the future sounded interesting.

 

I enjoyed the many labs and the evident emphasis placed on hands-on learning.

 

I enjoyed the diversification of mechanical, electrical and physiological classes.

 

I was pretty involved in student activities at MSOE (SUB, student government, resident assistant, BMES, etc.). I feel I learned a lot through my involvement in these activities. I think MSOE being a smaller school gives individuals a greater chance to become involved and make a difference.

 

Yes, although I obviously did not learn about all the technologies I am working with today while at MSOE, the classes I took at MSOE provided me the tools necessary to learn about and understand technologies as necessary.

For information about MSOE's B.S. in Biomedical Engineering program, contact interim program director Dr. Charles Tritt at (414) 277-7421.