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Sterne, Kessler, Goldstein & Fox PLLC

The following is an excerpt from Practice Perspectives: Vault's Guide to Legal Practice Areas.

Daniel Choo, Associate—Biotechnology & Chemical (2022)

Daniel K. Choo, Ph.D., is an associate in Sterne Kessler's Biotechnology & Chemical Practice Group. He assists in the preparation and prosecution of U.S. and foreign patent applications. Daniel's professional expertise includes immunology, molecular biology, genetics, biochemistry, virology, and vaccines.

Daniel earned his Ph.D. in immunology from Emory University under Dr. Rafi Ahmed. There, he focused on elucidating the mechanisms involved in the generation and long-term maintenance of immunological memory cells after viral infection. Daniel discovered that CD4 T cell help is not necessary for the long-term survival of antigen-specific memory CD8 T cells. Upon the completion of his graduate work, Daniel worked as a postdoctoral researcher at the University of Pennsylvania, where he helped develop DNA vaccines against the human respiratory syncytial virus and the hepatitis B virus.

Daniel received his J.D., cum laude, from the University of North Carolina School of Law. During law school, Daniel was a member of the North Carolina Journal of Law & Technology and the Carolina Intellectual Property Law Association. He earned his B.A. in biology and classics from Franklin and Marshall College.

Describe your practice area and what it entails.

My practice area focuses largely on patent prosecution (both in the U.S. and in foreign jurisdictions). This generally involves drafting and filing of new utility applications, as well as strategizing and responding to Office Actions with the goal of getting claims allowed that best represent the client’s interests. Additionally, I work on other areas of patent law, including but not limited to patent invalidity and/or non-infringement opinions, freedom-to-operate and landscape searches, and post-grant proceedings (e.g., inter partes review and post grant review). 

What types of clients do you represent? 

The clients that I represent range from smaller U.S. and foreign biopharmaceutical companies (e.g., NeoImmuneTech, Neuracle Science, Codiak BioSciences, Lyell Pharmaceuticals, Seres Therapeutics) to Fortune 500 companies (e.g., Bristol-Myers Squibb). 

What types of cases/deals do you work on? 

The type of cases/deals that I work on primarily relate to securing effective patent protection (both in the U.S. and worldwide) in view of the client’s business interests. This often involves working closely with scientists to identify patentable subject matter, and drafting and filing applications directed to such inventions. It can also involve analyzing potential freedom-to-operate and/or patentability-related issues to help valuate patent portfolios for a potential license deal. 

How did you choose this practice area?

During the last year of my graduate program, I attended a career seminar, where I first really learned about patent law. Afterwards, I networked with a few patent attorneys to learn more about life as a patent attorney and to make sure that I wasn’t going to absolutely hate it. And, I’m happy to say that I made the right decision! 

What is a typical day like and/or what are some common tasks you perform?

My “typical” day can greatly vary. Some days are filled with meetings, both internal (e.g., discussing an Office Action with a supervising director) and external (e.g., having a call with a client to discuss whether to file a new application). Other days, I might be drafting an application or a response to an Office Action, or reviewing scientific literature to assess patentability.  

What training, classes, experience, or skills development would you recommend to someone who wishes to enter your practice area?

I believe an essential skill to have in patent law is the ability to write effectively, as this is relied on daily as a patent attorney. As a former scientist, sometimes the type of scientific writing skill that we grow accustomed to can be a bit too technical in patent law. Therefore, for those interested in patent law, my recommendation would be to work on persuasive writing as much as possible. 

I also highly recommend reaching out to patent attorneys and networking as much as possible. Not only would it be useful to see whether you would enjoy life as a patent attorney, but it could also possibly lead to potential job openings, such as patent agent or technical specialist position which do not require a law degree. 

What is the most challenging aspect of practicing in this area?

As a patent attorney, you will work with many different internal (e.g., directors/partners that assign you work) and external (e.g., in-house counsels) clients with needs and expectations that vary greatly. Trying to tailor your services to meet the individual needs and expectations of the different clients can be difficult at times. 

What do you like best about your practice area?

One of my favorite aspects of being a patent attorney is that I am rarely bored. Patent law is continually evolving (e.g., through judicial and/or Patent Trial and Appeal Board decisions), and the science that I am exposed to is generally very cutting-edge. Therefore, as a patent attorney, I feel like I am learning something new on a daily basis. 

What are some typical tasks that a junior lawyer would perform in this practice area? 

The type of tasks that junior attorneys might work on can vary greatly depending on their interests. For instance, they could work with a more senior attorney on drafting different sections of a patent application (e.g., drafting examples or the figures). They could also help research legal issues or review search results from a freedom-to-operate and/or patentability search. 

What advice do you have for lawyers without technical or science backgrounds who want to practice in IP?

Having a technical or science background is a valuable asset, particularly in patent prosecution. However, I do not think it is absolutely essential, as the area of science that I work on is not always related to my scientific/technical background. I think what is more important is a passion in the sciences and the ability to quickly grasp and understand new scientific or technical knowledge. Additionally, there are other areas of patent law (e.g., litigation) where technical or science backgrounds, while important, may play a significant role.