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