The following is an excerpt from Practice Perspectives: Vault's Guide to Legal Practice Areas.
Nishla Keiser’s current practice focuses on patent strategy, prosecution, and transactions in life sciences, including both biotechnology and pharmaceuticals. After graduate school and before joining Finnegan as a technical specialist in 2007, Nishla worked at a patent search and consulting firm. She attended law school while at Finnegan, developing a mixed litigation and counseling practice. In 2015, Nishla moved to a biotech startup, starting out in intellectual property (IP) and eventually moving into the chief legal officer role at a second startup company. In 2023, she returned to Finnegan’s Boston office.
Patrick Rodgers attended the University of Miami, receiving a B.B.A. in 2015, and the Georgetown University Law Center, graduating in 2018. Patrick is a member of both the Florida and DC bars. Since graduating law school, Patrick has focused his practice on IP, specifically, federal trademark and false advertising litigation. Patrick’s practice includes both trial and appellate work, as well as work before the Trademark Trial and Appeal Board (TTAB) of the U.S. Patent and Trademark Office (USPTO).
Describe your practice area and what it entails.
Nishla: I focus on patent strategy, prosecution, and transactions in the life sciences space. I work with biotech and pharmaceutical companies to develop their patent portfolios, conduct diligence analyses to support business decisions and various types of transactions, assess third party portfolios for litigation risks, and prepare IP-related contracts.
Patrick: My practice is primarily litigation-focused, with the bulk of my work on federal trademark, trade dress, and false advertising litigation. I litigate in federal district courts around the country, as well as before the TTAB of the USPTO. My litigation practice entails both trial and appellate work. In addition to litigation, I also assist with trademark prosecution and manage the trademark portfolios for several international brands.
What types of clients do you represent?
Nishla: I represent companies from startups to global pharmaceutical companies. Most of my clients focus on developing human therapeutics and have large, complex patent portfolios. I also work with some nontherapeutic companies involved in life sciences research, including consumer products, agriculture, and analytics.
Patrick: I represent a wide array of clients in a broad range of industries, including sports and fitness (e.g., Under Armour and Bauer Hockey), health and wellness (e.g., GOLO), transportation (e.g., Subaru), heavy machinery (e.g., Caterpillar), food and beverage (e.g., Sweet Grace Distilling), firearms (e.g., Ruger), and hospitality (e.g., Marriott).
What types of cases/deals do you work on?
Nishla: For transactions and diligence, I work on license agreements, collaboration agreements, and M&A. On the patent side, I represent clients before the USPTO and also work with counsel worldwide to develop patent portfolios globally. When I litigated, I primarily focused on abbreviated new drug application (ANDA) litigation for branded pharmaceutical companies.
Patrick: Most of my work is on federal trademark litigation, both for the plaintiff and defendant, involving federal and state claims of trademark infringement, trademark dilution, and unfair competition. For example, I currently represent Ruger in a federal trademark infringement litigation brought by FN Herstal over Ruger’s use of the mark “SFAR” based on FN’s asserted rights to the trademark “SCAR.” I also currently represent GOLO in federal trademark infringement and false advertising litigation against Amazon over the sale of unauthorized GOLO-branded books on Amazon, among other things. I also currently represent Under Armour in two proceedings before the TTAB that have proceeded to trial: One involves a petition to cancel the trademark “KINGS ARMOR,” and the other opposes an application to register “OUTERARMOUR.”
How did you choose this practice area?
Nishla: I started out in the sciences but knew I didn’t want to stay in academia or perform lab work long term. I considered venture capital or business development paths in biotech, but one of my professors suggested I look into patent law because I particularly enjoyed writing and learning about new scientific developments. I worked with patents as a searcher and technical consultant before going to law school, which was a great way to test the field before committing to becoming an attorney.
Patrick: During my undergraduate studies, I was required to take various business law courses as part of my work in the business school. One of those courses was an IP survey course covering trademarks, patents, and copyrights. From that course, I became interested in pursuing a career in IP. After beginning law school, I realized that I was better suited for a career focusing on trademark and copyright law because I had no technical or science background. From there, I focused my courseload on trademarks and copyrights, which reaffirmed my interest in those subject areas.
What is a “typical” day like and/or what are some common tasks you perform?
Nishla: I have very few “typical” days. Because I have a mix of work, some days, I’m knee-deep in a diligence project for an M&A transaction, and the next day, I’m catching up on patent prosecution deadlines. On the prosecution side, I’m in a review role, so I’m often discussing strategy with my team or clients, providing training, or reviewing work product. I do more hands-on analysis on diligence and transactions projects, where I read a lot of patents, literature, and business documents. As part of the projects, I prepare a lot of slide decks or reports to help clients present our advice to their management.
Patrick: A typical day for me varies depending on the stages of my cases. For example, if a case is in its infancy, I could be working on drafting a complaint or preparing an answer, affirmative defenses, and counterclaims. I could also be drafting a motion to dismiss or an opposition to the same. If the case is entering discovery, tasks include preparing and responding to discovery, taking and defending depositions, drafting discovery deficiency letters, leading discovery meet-and-confers, and drafting motions to compel. In addition, I regularly communicate with clients on all aspects of a case to align on strategy.
What training, classes, experience, or skills development would you recommend to someone who wishes to enter your practice area?
Nishla: Besides technical courses and traditional IP courses, regulatory and administrative law classes are particularly helpful. For any IP area, learning about how businesses operate, make money, and compete with each other is extremely important, as these directly impact the value of IP. For example, pharmaceutical companies handle IP very differently than software companies because their business models are not the same.
Patrick: Seek out courses on the topics you are most interested in. If you are interested in trademarks, take as many trademark courses as your school offers. The same goes for those interested in patents and copyrights. Get involved in your school’s IP society and, if possible, take a leadership role. Seek out practicum courses, clinics, or other hands-on opportunities in your topic of interest. And attend as many events related to your area of interest as you can. Networking with those with the same interests goes a long way.
What do you like best about your practice area?
Nishla: I like working with a lot of different technologies, as well as having clients at different stages of their business. I’m constantly learning new aspects of science, business, and law.
Patrick: I enjoy the variety in my practice. Representing so many different clients in such a broad range of industries makes for fresh work every day that challenges me to apply the same legal concepts in new ways for each client.
What is unique about your practice area at your firm?
Patrick: My practice area is unique because I am part of a niche focus on trademark and false advertising litigation, something that not many do. Our group is also very collegial and collaborative, something that can also be difficult to find in BigLaw.
What are some typical tasks that a junior lawyer would perform in this practice area?
Nishla: A new associate might manage a patent prosecution docket where they take the first pass at reviewing communications from the patent office and developing a strategy for responding. They will typically review a lot of literature or patents for relevance to a client’s technology. When necessary, they perform legal research and prepare summaries or memos for the client.
Patrick: A junior lawyer could perform a multitude of tasks in this practice area. Most common is case law and other research as needed for various cases. Junior lawyers are also likely to be asked to prepare discovery objections and responses, review documents, and be familiar with all of the discovery served by both parties, often making the junior lawyer the most knowledgeable about various facts of the case. Depending on the size of the team, junior lawyers could also be asked to assist with writing first drafts of briefs, assisting with deposition preparation, and drafting correspondence to clients.
What are some typical career paths for lawyers in this practice area?
Nishla: Most IP lawyers in the life sciences space have some type of science background, and many did not plan to be lawyers! While many life science lawyers have long, successful careers at law firms, there are a lot of in-house opportunities for patent attorneys. Sometimes lawyers go directly into in-house roles, but most often, they spend at least several years at a firm learning the details of patent prosecution or litigation before they are capable of advising business colleagues effectively. There is so much to learn as a life sciences lawyer, it takes many years of training even after law school.