The following is an excerpt from Practice Perspectives: Vault's Guide to Legal Practice Areas.
Emily Tkac is an associate in the biotechnology and chemical practice group, where she prepares and prosecutes U.S. and foreign patent applications and prepares opinions of counsel on patentability, non-infringement, invalidity, and freedom-to-operate, among other analyses. Her areas of technical expertise include molecular biology, biochemistry, genetics, cancer biology, and therapeutic antibodies. Emily received her J.D. from the University of Connecticut School of Law and her M.S. in medical science from Boston University. Emily received bachelor’s degrees in molecular and cellular biology and history from the University of Connecticut.
Wenhao Xiong, Ph.D. is an associate in Sterne Kessler’s electronics practice group. His practice includes preparation and prosecution of patent applications in the United States and abroad, post-grant proceedings before the U.S. Patent and Trademark Office (USPTO) Patent Trial and Appeal Board (PTAB), patent litigation in U.S. District Courts, and Section 337 investigations at the U.S. International Trade Commission (ITC). His technical areas of expertise include wireless communications, digital signal processing, computer networking, software, analog/digital circuits, and AI. Wenhao received his J.D. from The George Washington University Law School and his Ph.D. and master’s degrees in electrical engineering from Wichita State University.
Describe your practice area and what it entails.
Emily: My practice is primarily centered on biotechnology patent prosecution, focusing on securing patent protection for biotechnology inventions in the United States and globally. Additionally, I work on patentability, invalidity, and non-infringement analyses and occasionally assist with post-grant proceedings, including inter partes review.
Wenhao: My practice includes patent preparation and prosecution both in the United States and in foreign countries. I draft and file new patent applications and respond to office actions issued by the USPTO. In addition, I work on patent litigation projects including post-grant proceedings before the PTAB, patent litigation in U.S. district courts, and Section 337 investigations at the ITC.
What types of clients do you represent?
Emily: I represent a variety of clients—both big and small—in the biotechnology field. For example, I represent pharmaceutical companies, cell therapy companies, biotechnology companies, and universities, as well as newer companies that are not yet public.
Wenhao: I work with clients from different parts of the world. For example, I represent companies in the wireless communication, software, and media streaming industries.
What types of cases/deals do you work on?
Emily: I primarily focus on prosecuting patents both in the United States and internationally. This focus involves closely collaborating with inventors to strategically draft both patent applications and responses to office actions from patent examiners worldwide. It also involves managing patent portfolios and working with clients to carefully develop global patent strategy.
Wenhao: I work on patent applications, discussing the innovation with the inventors in a disclosure call. I then convert the innovation into a new patent application with text descriptions and drawings to be submitted to the USPTO. I also work on patent litigation projects on both the plaintiff side enforcing patent rights and the defendant side advocating for patent invalidity and non-infringement.
How did you choose this practice area?
Emily: I knew that clinical medicine and laboratory work weren’t the right fit for me, but I wanted a career that would allow me to pursue my passion for science. Patent law proved to be the perfect fit as it offers the opportunity to work in an innovative and rapidly growing field and engage with cutting-edge technologies. I also find it rewarding to contribute to the commercialization of life-changing technologies, playing a key role in bringing groundbreaking innovations to the market.
Wenhao: My first job after receiving my engineering degree was a research position. My four-year career as a research scientist led to an increasingly specialized field, but I wanted to explore a broader range of science and technology. A friend told me that is exactly what his job does—he was a patent lawyer.
What is a “typical” day like and/or what are some common tasks you perform?
Emily: Every day is different, but a typical day can involve meeting with scientists to discuss a new invention for a patent application, collaborating with foreign counsel to respond to an office action from a foreign examiner, meeting with clients to discuss patent portfolio management strategies, conducting freedom-to-operate searches, and drafting patentability analyses.
Wenhao: I would start my day by deciding the tasks to do for the day, which involves going through a list of matters and picking up ones with closer deadlines. The tasks include drafting patent applications, investigating strategy, drafting responses to office actions, and filing documents with the USPTO. Throughout the day, I also monitor emails and act accordingly when receiving urgent requests from clients or colleagues.
What training, classes, experience, or skills development would you recommend to someone who wishes to enter your practice area?
Emily: A strong foundation in science is essential. I recommend taking a broad range of science courses across various fields. For example, my work has involved microbiology, cell biology, gene-editing technologies, pharmacology, immunology, sequencing technologies, and devices. Having a comprehensive and deep understanding of different fields within biotechnology is incredibly beneficial. Additionally, staying current with emerging technologies by reading scientific journals, attending conferences, and networking with scientists will enhance your knowledge and keep you informed about the latest developments.
Wenhao: Practicing patent law requires both a technical background and a legal background. Thus, it would be essential to first obtain a technical degree, such as a STEM degree, to be able to take the patent bar and understand the client’s technology. I would also recommend taking any Patent Law class in law school to get familiar with the area because the learning curve can be steep.
What misconceptions exist about your practice area?
Emily: In law school, I was often told that I would be reading and writing all day as a lawyer. While there is certainly a lot of both, patent law is much more dynamic than that. It requires constant collaboration with attorneys, scientists, and business leaders. A large part of my day is spent learning about new technologies, strategizing internally and with clients, and engaging in creative problem-solving to find the best solutions for patent protection and commercialization.
What is unique about your practice area at your firm?
Wenhao: At Sterne Kessler, there are opportunities to do both patent prosecution and patent litigation. People can do both at the same time or switch gears between the two according to their interests and situations. Here, we have various types of work, and the firm encourages people to work on things that interest them. I personally found it to be beneficial because skills in one practice can benefit the other. In addition, a combination of both patent prosecution and patent litigation can provide a steady workflow.
What are some typical career paths for lawyers in this practice area?
Wenhao: My path, like many other colleagues here, includes transitions in the order of (1) technical specialist, (2) patent agent, (3) student associate, and (4) associate. I joined as a technical specialist, which is a starting position for people who have technical backgrounds but no legal experience. When passing the patent bar, I became a patent agent, after which I applied and attended law school as a part-time law student while working full-time as a student associate. I became an associate after graduating law school and passing the bar. This path is desirable for people with advanced degrees and/or working experience. When I started law school, I transitioned into a student associate role, alleviating my concerns about job hunting and tuition, as I was already employed at the firm.
What advice do you have for lawyers without technical or science backgrounds who want to practice in IP?
Emily: I recommend immersing yourself in relevant technologies and developing the ability to quickly understand complex concepts as this skill is crucial in intellectual property (IP) law, regardless of having a technical background. It also may be beneficial to explore other areas of IP law, such as trademark, copyright, and design patent law, which may be more accessible without a technical background. Alternatively, you could focus on developing a niche within IP law, such as licensing agreements and negotiations.