BCLT's Careers in Tech Law Series

Law firms throw around the term “tech transactions.” But what does it really mean? Turns out, firms do things differently, and you need to ask for specifics. White & Case provides some concrete examples of what a tech transaction practice can look like.

Featuring Yish Gong and Erin Hanson, White and Case.

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

More on Rachna Ram and Joseph Snyder.

 

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

Patent prosecution and patent litigation are very different career paths that broadly fall under the heading of “patent attorney.” How do you know which one is right for you?

More on Neslihan Doran-Civan and Ruthleen Uy!

 

SPEAKERS

Ruthleen Uy, Wayne Stacy, Neslihan Doran-Civan

 

Wayne Stacy  00:00

Welcome, everyone to the Berkeley Center for Law and Technology's Careers in Tech Podcast. I'm your host Wayne Stacy, the Executive Director of BCLT. And today we'll be talking about the different paths for becoming a patent attorney, and what the actual work of a patent attorney day to day looks like. We have two experts from Kilpatrick, Townsend and Stockton. Joining us today to help us understand what these paths look like. We have Neslihan Doran-Civan. She's a partner at Kilpatrick and Ruthleen Uy, who is senior counsel at Kilpatrick. Townsend. Thank you both for joining us and welcome. And before we talk about patents, I wanted to actually set out some terms. We talked a little bit before the recording started about what the term patent attorney means to different people and in different firms. And what I wanted to remind any the students that are listening is you got to ask when people say patent attorney, are they referring to the license? That you just you're just been approved to practice before the USPTO? Or are they talking about a particular branch within the patent practice like patent prosecution, you always have to ask, because firms are different. So with that in mind, I think both Ruthleen and Neslihan would describe themselves as patent attorneys. And I was going to ask you to kick off this this discussion by telling us what what are your days looks like?

 

Neslihan Doran-Civan  01:32

Alright, so I'll go first, this is Neslihan, the typical day would include two main tasks, I would say. One would be drafting a patent application. And the second major task is responding to Office actions that you receive from the patent office. And when we open these two boxes, the patent application preparation will include, obviously this all of them may not happen in a single day, you will talk to the engineers about their ideas that they came up with this invention. So that's when your engineering side kicks in. Right. So you have the technical background, speak the language with the inventor. So when you get your details, then it's pretty much on your own, you draft your patent applications, you may start with the different sections. So I'm not going to go into the details of that there is usually a preferred way or you can develop your own preferred way. And once you have your application filed with the USPTO, and then you sit tight for a few years, and then you get your first office action. So at that point, that's our second box, second tasks, set of tasks when you this office action comes in, there are references cited in there, which requires you to kind of review them again, your engineering background comes into play. And then you identify the differences with your application and this references and prepare a response to the patent office. A part of that also may include interviews with the examiner's so you call up the examiner to discuss the case. And then it becomes a negotiation at the end of the day. And if both sides agree what is the distinction is that needs to be captured in your claims in your application. And hopefully your application that will proceed to allowance.

 

Wayne Stacy  03:26

So Ruthleen I'll get this question to you. And both of you are very senior and very expert level. In your practice. How does your practice day to day

Trademark and copyright are important areas of Intellectual Property. Career paths, however, are less obvious than in other areas of IP. How, or should, you pursue a career in trademark and copyright law?

More on Olivia Poppens and Dennis Wilson!

 

 

SPEAKERS

Olivia Poppens, Wayne Stacy, Dennis Wilson

 

Wayne Stacy  00:00

Welcome, everyone to the Berkeley Center for Law and Technology's Career in Tech podcast. I'm your host Wayne Stacy, the Executive Director for BCLT. And today we're talking about careers and trademark and copyright law. So often when people talk about IP, they immediately gravitate toward patents. Trademarks, copyrights, brand protection, content protection are incredibly important areas of the law, and they just don't often get the attention that they deserve. And to talk about these important areas of the law today, we have two experienced attorneys from Kilpatrick Townsend and Stockton joining us. We have Dennis Wilson. Dennis is a partner at Kilpatrick and Townson. And we have Olivia Poppens, who is a Berkeley alumni. So welcome to both of you.

 

Dennis Wilson  00:50

Thanks.

 

Olivia Poppens  00:51

Thanks so much for having us.

 

Wayne Stacy  00:52

So Dennis, what we'll start with you, maybe the best way to explain what a path in brand protection content protection looks like is to tell us what your typical day looks like, what kind of cases do you handle?

 

Dennis Wilson  01:05

So I think goes back to understanding that area of the law a little bit. Copyright law, for example, protects artists expressions. And so the idea is that if you create a song or a video or a book, that we want to encourage that kind of creative output. And so we give those artists the chance to control how that content is distributed. And so you want to, as a society, protect those artists rights. And then at the same time, most of the people listening want to be able to take a clip of the TV show they're watching and text it to their friend or post it online, and they don't want to pay for it. And they want immediate access to everything. And so we have this, this constant balancing of artists rights and users rights. And we see that play out all the time in our clients work. So we look at a filter that's going to be pushed out and developed for a social media platform. And we think about the balancing of does this infringe anyone else's rights? Or does it parody anyone? And is that okay, from a First Amendment protection kind of standpoint. Daily process that we go through is looking at the underlying rights that may be implicated by a new product or service that's being offered, or a new name, or title of a, of a product or movie, and trying to decide whether or not it's fair to use it, or whether it impinges the rights of others. And so it's a constant balancing. And that could be just in advice and counseling and giving people a gut check on whether or not something should go through, or it could be a full kind of litigation analysis. And sometimes that those are the kinds of disputes that we end up litigating, but at their core, it can be, you know, five minute phone calls, two years long litigation, but it all kind of comes down to the same thing.

 

Wayne Stacy  03:09

Did I say I'd love to hear a little bit more about that, that point that in your practice, you end up doing counseling, and a fair amount of counseling, in addition to litigation, where some people may think litigators are just litigato

How does M&A coursework translate into the day-to-day practice of M&A law? What does an M&A lawyer spend most of their day doing?  And can you actually specialize in international M&A or tech M&A?

 

More on Germaine Gurr and Neeta Sahadev!

 

SPEAKERS

Germaine Gurr, Neeta Sahadev, Wayne Stacy

 

Wayne Stacy  00:00

Welcome, everyone to the Berkeley Center for Law and Technology's Career in Technology podcast. I'm your host Wayne Stacey. And we're here today to talk about mergers and acquisitions. Every law school has an M&A class. But the question arises, what is M&A in practice? What is the first year, second year, third year lawyer end up doing with all of the the book learning that comes in that second or third year? So we're here today with two partners from the international law firm of White and Case. We have Germaine Gurr and Neeta Sahadev. So thank you both for joining us.  Law School teaches all about the concepts of M&A. But what is the actual practice look like for junior and mid-level attorneys?

 

Neeta Sahadev  00:49

From my experience, and I went to law school many, many years ago, truthfully, law schools didn't quite prepare me for actual practice of law. Most of the courses I took including the business courses I took and M&A related courses, very much focused on theoretical concepts, which is very different from when you're actually a practicing lawyer including as a junior and a mid-level attorney. Law school doesn't teach you what the deal is going to be like. An M&A transaction doesn't give you the insight into due diligence and transactional documents, how signing happens, closing occurs. And so I think the real experience that you get initial look into what M&A transactions are like is during your summer, when you're summering at a law firm, or in your first year, that's when you get to be on a transaction, actually see what documents means when someone says, Oh, do you know what a merger is? Or share purchase or an asset deal? You actually get to see what that all means. Like, what is that transaction? What does the resolution mean? What is a bring down certificate? What does due diligence even mean? A lot of people don't know that coming out of law school, right? Like what does due diligence actually mean? So I think the expectations that when you're coming out of law school, or whether you're a 2L or a 3L, we don't really expect you to know much about M&A in any sense, other than maybe what you read about maybe knowing what the difference between a corporation or a partnership is. Other than that, we're not expecting you to know anything, we just expect you to be eager to learn, have a genuine interest in M&A. And then the teaching will begin.

 

Germaine Gurr  02:19

On my end, I would add that because law school teaches through the Socratic method and the case study method, it is quite challenging for someone going into a transactional practice to understand how to translate those critical thinking and analytical skills from a case study Socratic method to the application of transactional work. And oftentimes, what we see is that Junior associates will start working, will hit the ground running, of course, and work on diligence and ancillary documentations on transactions. And they'll get comfortable with looking at precedents and kind of following forms. And will forget those key skills and how to apply them, the critical thinking and analytical skills, which are really important for transactional practice just as they are for litigation, bankruptcy or any other specific practice. And I

How can you best preserve the option of pursuing an academic career? What courses and jobs should students be thinking about? 

 

More on Peter Menell and Andrea Roth. 

 

SPEAKERS

Wayne Stacy, Peter Menell, Andrea Roth

 

Wayne Stacy 0:00 Welcome, everyone to the Berkeley Center for Law and Technology's Careers in Tech podcast. I'm your host, Wayne Stacy, the Executive Director for BCLT. Today, we're going to be able to talk about academic careers, and what you need to do to at least prepare for getting to an academic career at some point. We have two of the leading professors in the country with us today and two of the BCLT faculty co-directors, Andrea Roth, and Peter Menell. Thank you both for joining us.

Andrea Roth 0:31 Thanks for having us.

Wayne Stacy 0:32 First thing I wanted to talk to you about is really the full scope of your work. When people hear "professor" they think "teacher", and there's so much more to what you do then get up in the morning and teach a class. I know that's an important piece of what you do. But there's a whole lot more. So can you let people know kind of the full scope of your work?

Peter Menell 0:51 My career, I think is mostly about public policy that entails doing research, working with legislative and administrative agencies, and trying to prepare students who are going to go out in the world and work and hopefully promote better public policies. That was my goal. I never went to law school to be a lawyer, I was doing a multidisciplinary academic preparation. It's only after I became a professor that I got involved in consulting and expert work. And that exposed me a lot more to what lawyers do. I did clerk, which gave me a very good bird's eye view. But my real focus is trying to improve public policy.

Andrea Roth 1:37 And I would say my focus is, you know, I was a public defender for many years before going into academia. I'm not a practicing attorney with clients anymore. But I'm hoping to improve outcomes in the criminal system, especially as technology changes it every day. And so to answer your question directly, what do I do all day. And it's not just teaching, but it's consulting with lawyers on the ground and learning what's going on on the ground in real courtrooms. It's doing research, including historical research on how technological advances have been dealt with in the past by the legal system and learning from the lessons of the past. It's service, I serve on a legal task group of the National Institute of Standards and Technologies, organization of scientific area committees. So I actually work with scientists on the ground, to think of legal issues that are going to come up and how labs should be doing forensic work on the front end. Then everything in between. Service for the University Press inquiries, mentoring students who are interested in this work. It turns out to be a lot more than just prepping for class.

Wayne Stacy 2:50 The reason I was excited to have the two of you is because your careers to the academic or your past the academic world are very different. You know, Peter was dedicated to that path from day one. And Andrea, you went through a career and then came to the academic world. And both of them have been very, very successful. So I guess I would start that discussion for people that are thinking they might want to be a professor, or move into the academic world, is one path better than the other?

Peter Menell 3:21 I will say that, although I would have answered the question, what do you want to be doing 30 years later, when I was in law school to say that I would be sitting here at a university doing the kind o

Trademark and branding practices offer attorneys a unique blend of transactional and dispute-resolution work. What types and sizes of clients can an attorney in this practice area accept to work with? And how can attorneys get involved with both transactional and dispute-resolution work?

 

More on Charles Bahlert and Lisa Greenwald-Swire.

 

SPEAKERS

Wayne Stacy, Charles Bahlert, Lisa Greenwald-Swire

 

Wayne Stacy  00:00

Welcome, everyone to this week's Careers in Tech Law podcast series from the Berkeley Center for Law and Technology. I'm Wayne Stacy, the Executive Director for BCLT. And we're lucky today to have two of the nation's top trademark and branding experts here with us. We have Lisa Greenwald-Swire and Charles Bahlert, both from the law firm of Fish and Richardson. So I'm just going to throw the the first question out to you to help us understand what's going on. But it seems like when we talk about brand protection, there are really two parts to this story. You know, one of them is creating new brands, and the other is protecting existing brands. So at a high lawyer, what are sorry, at a high level can what our high end lawyers doing in this two part brand protection space?

 

Lisa Greenwald-Swire  00:55

Sure, I'll start and then Charles, you could dive in with anything that I've missed. Wayne, first of all, thank you very much for your time. It's a true honor for us to be here and be able to speak with you today. So what are brands doing to make sure that their new marks are being protected? Was that the question?

 

Wayne Stacy  01:15

Yeah, the new mark protection and then old mark protection.

 

Lisa Greenwald-Swire  01:22

Yeah. So I mean, the general answer, on a high level is clearance searching. So there are a lot of smaller firms out there that will say, Oh, yeah, we'll do this search for, you know, $95. And essentially, what they're doing is going to uspto.gov and Googling sort of doing a direct hit. A real trademark search really goes through all the likelihood of confusion factors goes through sort of similar equivalence, and meaning and commercial impressions, swapping out vowel sounds, really getting to the core of where there could be an issue, either in prosecution of the mark at the trademark office, in the US or globally. We're thinking of meaning, like the iconic Nova, no-go can't go for a car is not such a great brand. We're really thinking through all the issues and meaning and commercial impression and making sure that once we've cleared it, we're really filing it in all the countries where the client thinks they may have business in three to five years. And even defensively in some countries is sort of have this acronym of BRICK, which is Brazil, Russia, India, China, and Hong Kong. And we've seen a lot of enforcement infringement issues in those countries. So those are some key countries. Defensively, we're we're counseling clients to file as well. 

 

Wayne Stacy  02:50

Go ahead, Charles. 

 

Charles Ba

Tech impacts almost every major company. New types of disputes and problems are constantly arising—all of which present opportunities for general litigators with a broad understanding of the regulations and laws impacting tech. What can the new attorney expect, and how should they prepare?

 

More on Mike Whalen.

 

SPEAKERS

Wayne Stacy, Mike Whalen

 

Wayne Stacy  00:00

Welcome, everyone to the Careers and Technology podcast from the Berkeley Center of Technology. I'm your host, Wayne Stacy, the Executive Director for BCLT. And today, we're fortunate to have Mike Whalen from Paul Hastings with us. Mike is an attorney in the litigation department of Paul Hastings, specializing in general litigation with most of his clients in the tech space. So he gives us a really interesting view of how litigation is impacting tech companies and how to get ready for a career in that. So Mike, let me let me start with the idea about, you know, General litigation versus specialty litigation. You know, what should what should a student be thinking about?

 

Mike Whalen  00:49

So I think, for a student, and when it's great to be here, and to talk with you, and hopefully help students figure out what they potentially want out of their career, especially those looking at litigation, which is what I'm familiar with, and students thinking about, it should really think broadly, I think about, you know, what they enjoy what led them to go to law school. And what led me in particular down the path of general litigation is really the notion of problem solving, and being able to think through problems across different industries, across different procedural matrices, whether you're in court or out of court, and maybe a post judgment proceeding. And I think that's really the skill of a generalist litigator, the ability to see a lot of industries see a lot of problems and see a lot of areas of the law. And if that's something that interests students, then they should really think hard about being a general litigator, because I do think there's a general shift, in this day and age you're either hyper specialized, or there's a real emphasis in larger firms like Paul Hastings, on having a broad base of skills as a generalist.

 

Wayne Stacy  01:53

So that's a it's an interesting point about being hyper specialized. You know, I spent nearly all of my life doing patent litigation, which would be that hyper specialization, and not a lot of other things. 20 years ago, people said that, well, General litigation is dead. In big firms, you've got to be hyper specialized. But it seems to be drifting back towards the two specialization, you know, specialization and general litigation coexisting very, very well.

 

Mike Whalen  02:25

Yeah, I think that's right. And I think that's the nature of where legal practice, again, at firms like Paul Hastings and other firms that you've spoken with on the podcast, I think that's where it's headed, in that, in general, the practice is driven by our clients hardest problems. And for some of our clients, particularly say, in the biotech space or in the pharma space, those hardest problems will consistently recur in the IP space. And there's absolutely an area for that hyper specialization. And you do see that a lot. But in other situations, our clients hardest problems change day to day, week to week, month to month, and that really cries out for a generalist who both can react to those problems, but also know when it's time to collaborate and work with specialists. And I think more often than not our teams, particularly in traditional specialist fields, such as antitrust, you're r

Emerging companies typically need a combined legal and business advisor. Junior attorneys in emerging companies practice get access to clients early in their career and are often thrust into the critical advisor role.  What does a typical day look like, and how can you best prepare to support an emerging company?

 

More on Avi Emanuel and Lianna Whittleton.

 

SPEAKERS

Avi Emanuel, Wayne Stacy, Lianna Whittleton

 

Wayne Stacy  00:00

So welcome everyone to the Berkeley Center for Law and Technology's Careers in Technology podcasts. I'm Wayne Stacy, the Executive Director for BCLT. Today we are talking about how lawyers help with funding in managing early stage innovation companies. And I'm here with two attorneys from Wilson Sonsini, Wilson Sonsini handles a tremendous percentage of the emerging company work on the west coast, really among the great pioneers in this field. And we have two of the leading experts from Wilson. So this is a great podcast. We have Lianna Whittleton, she's the partner specializing in advising early stage companies, and in handling IPOs. And we have Avi Emanuel, a corporate attorney specializing in early and mid stage companies and equity financing. So before we talk about what the practice of law looks like, in the, in this emerging company space, tell us a little bit about what your practice looks like from day to day, week to week.

 

Lianna Whittleton  01:06

Sure, so I'll go ahead and take that first. As, as Wayne said, I have a bit of a broader practice, which has actually been very interesting to me. I think the core of what you think about when you are a corporate attorney is that you are a service provider to your clients. And your entire goal is to help these companies grow, build, develop and succeed. And so at Wilson, what that tends to mean is you get staff on a company, you develop a relationship, and then you support that company through their entire lifecycle. And what that often means is you are doing whatever it is your company needs you to do. And so depending on what clients are staffed on, when you start what's going on economically, that can actually change what your day to day client base looks like. In my case, I started over 10 years ago now. And I started working just with exclusively, early early stage companies two kids in a garage, right, your classic quintessential startup. And so what that meant is I was often doing board consents, right, a lot of the housekeeping in creating a corporate entity, and making sure that that functions from a legal perspective, forming the company. Doing the board and your stockholder approvals, granting equities, we did a fair amount of offer letters, because often new companies are hiring people as they get started and ramp up. And then over time, that starts to expand. Right. Um, one thing to understand as a student, that's always not clear is corporate attorneys tend to do the back office work. So what that means is we are more focused on the corporate structure and not the business itself. So we don't do licensing agreements, we don't do commercial arrangements, right, we do the fundraising, we do the the equity on the back side of how that company grows. And so I think it's contracts writ large, but often a very different type of contract. As your company grows, the types of things you're looking at on that back end, will start to change as well. And so you move from one on ones with your founders doing offer letters, doing board consents to more complicated transactions, that can mean your debt financing your bridge or your stakenotes, that it means seriously financing, it can mean the series A financing. And the longer

Life sciences legal work is generally booming. But what about life sciences patent litigation? And if you are interested in this career path, what type of technical background is required? The answers may surprise you and open up new opportunities.

 

More on Priya Patel and Derek Walter.

 

SPEAKERS

Derek Walter, Wayne Stacy, Priya Patel

 

Wayne Stacy  00:01

Welcome, everyone to the Berkeley Center for Law and Technology's Career Series podcast. I'm Wayne Stacy, the Executive Director for BCLT. Today, we are talking about the types of litigation work needed by Life Sciences companies, and in particular, talking about what patent litigation looks like for Life Sciences companies. So I'm here with two attorneys from Weil that are both leading experts in patent litigation, we have Derek Walter, he's a patent partner focusing on patent litigation in both the biological and chemical areas. And then we have Priya Patel. She's an attorney in the patent litigation practice also focusing on the life sciences areas. So thank you both for joining us today and describing a little bit about your practice.

 

Derek Walter  00:49

Thank you.

 

Wayne Stacy  00:51

So I want to start with, you know, the life sciences, patent litigation is a very specialized practice. Can you tell us a little bit about what you do day to day and what your practice would look like?

 

Derek Walter  01:04

Sure, I'll go ahead and start. day to day what you do as a patent litigator, it changes over the course of your career. When you start out as an early associate, you do a lot of case building, you do a lot of analyzing prior art that might relate to patents in the case, you do a lot of analysis of the products that are an issue in the case, you do spend some time looking at documents that might be relevant to the case, you draft a lot of briefs you do spend some time doing discovery, drafting, interrogatory, ease, responding to discovery requests, drafting requests for admissions, you do a lot of that fairly often. And as you get more senior, you know, the tasks change a little bit, you know, you end up being more of a manager, you spend a lot more time doing a lot more emails with clients and other associates that are part of your team, you take on some more executive advanced skills, you know, you might spend a lot more time doing depositions, you probably spend a lot more time arguing in court. You spend less time doing kind of the work that you did early on. But, you know, those are the main tasks that go on. And on a day to day basis for patent litigator Priya might have a slightly different take on it. But that's my take.

 

Priya Patel  02:26

No, I agree. I think it's coming from as I'm a mid level associate at this point. So I'm kind of seeing that transition happen slowly. So definitely, when I was more junior associate, it was more research assignments, building, the record generally as Derek's talking about and I continue to do that sort of thing. But now it's more drafting responsibilities. Specifically, I also, I started out Weil and then I left to go to a clerkship and then I returned to Weil and I think since my return, I've been used often to draft briefs and memos, things like that, which I thoroughly enjoy. So I hope that continues even as I get senior, but my day to day sounds a lot like what Derek described.

 

Derek Walter  03:07

One thing I think is worth adding on this point that I think is true of patent litigation, regardless of what stage you're at i