The Laws of Invention

Wednesday, April 1, 2009

Engineers Trace Careers in Patent and Intellectual Property Law

Text by Jean Florman

During the summer before his senior year at Iowa, engineering student Roger Norman Coe (B.S. 1957 in chemical engineering) was employed by Owens-Illinois Glass Co. As he worked with asbestos fiber pipe insulation, it occurred to him that centrifugal force could align the wet fibers, thereby increasing the strength of the insulation. Company executives agreed and decided to apply for a patent.

"That fall I returned to school looking forward to receiving $50 for coming up with a patentable idea," Coe says. "But then the pipe insulation business was sold, and the new company didn't move forward with my idea."

Despite losing his bonus, Coe profited from the experience in a much more important way: He developed a life-long fascination with the intellectual marriage of engineering and law. Some 125 College of Engineering alumni share that interest and have earned both law and engineering degrees. Given the clear need for technical expertise in patent law, it's not surprising that most of them landed in that specialty.

While earning a J.D. degree from Georgetown University, Coe worked as a patent examiner for the United States Patent & Trademark Office in Washington, D.C., practical experience that also benefited other Iowa alumni. David Smith (B.S. 1970 in mechanical engineering) used his patent examiner experience as a springboard to enter private practice in Milwaukee. In 1978, he moved to Michael Best & Friedrich LLP, a large firm with a substantial intellectual property practice.

"When I was in school," Smith says, "not many people became patent lawyers. But globalization has meant engineering companies must vigorously protect their intellectual property and also ensure that the people they represent don't infringe on the patents of others."

Smith and other patent attorneys also work with clients to develop new products. An engineering degree provides the "street cred" for patent attorneys whose clients are in the development trenches. In general, Smith says, "engineers want to talk to other engineers."

Matthew McNutt (B.S. in mechanical engineering 1990, J.D. 1993) adds that an understanding for the business side of intellectual property development also benefits clients.

"It's important to proactively understand the intellectual property portfolios and strategies of clients and make certain those fit with their business strategies," says McNutt, who interned at Johnson Space Center as an Iowa engineering student. Although he enjoyed representing many different clients when he worked in private practice, McNutt says he prefers his current position as inhouse counsel for the upstate New York company Corning Incorporated, a role that allows him to be part of a long-term corporate team that develops and protects environmental technologies.

And regardless of whether a patent attorney works in-house for a multinational R&D firm or privately represents a single inventor, there's a lot at stake.

"Many companies invest millions of dollars in research upfront before ever arriving at a product that needs to be patented, licensed, or copyrighted," says Margaret Begalle (B.S. 1999 in civil engineering), associate at the Chicago firm of Marshall, Gerstein & Borun. "And there can be just as much at stake with small companies, where protecting intellectual property can make or break the livelihood of the entire company. Representing either type of client can be demanding, but also extremely rewarding."

Allison Green (B.S. 2002 in chemical engineering, J.D. 2005) says her engineering education at Iowa prepared her well for the demands of a profession that bridges two intellectually challenging fields.

"In addition to providing a solid technical foundation," says Green, who as a student interned with Proctor & Gamble, "my engineering education also provided a framework for approaching complicated issues such as those attorneys face."

Green has particularly enjoyed observing oral arguments for cases that may change the landscape of patent law, an opportunity presented through her current position as a clerk to the Honorable Randall R. Rader at the U.S. Court of Appeals for the Federal Circuit—the appellate court for all patent cases.

The ability to identify and tackle problems and articulate complicated ideas characterizes the practice of both engineering and law.

"They also require attention to detail and excellent writing skills," says Coe, who has published almost 70 short stories, many inspired by his 26 years of experience and travels as in-house counsel for Bayer Corporation. Coe's wideranging practice has provided plenty of interesting "material," including professional involvement with a well-known St. Louis restaurateur-pilot who once transported a life-sized fiberglass elephant to one of his establishments by helicopter and lured patrons by advertising that Dumbo was going to fly over the city.

Like many patent attorneys, Coe also has interacted with clients, counselors, judges, and engineers from around the world. One of his international trials, for instance, involved a Swedish attorney, a German witness, a Japanese partner, and an array of simultaneous translators in the patent law equivalent of a mini-United Nations.

Good patent lawyers and good engineers share this ability to adapt to the demands of real-world problems involving global actors. Begalle adds that both disciplines also demand intellectual rigor, logical thinking, and discipline.

Nevertheless, technical training as engineers does not necessarily make patent attorneys entirely conversant with their clients.

"Our clients are at the very forefront of their technologies," Smith says, "and they therefore are taking us to school to teach us what they are doing. An engineering degree provides a critical platform that enables us to understand what our clients need to teach us."

And that, notes McNutt, makes practicing intellectual property law especially fascinating. "The more I practice in this field," he says, "the more I learn what I don't know."

The other Iowa engineers echo his enthusiasm for the practice of this specialized field. But when asked if they are working on any particularly interesting patents, these good lawyers will say, "Yes, but nothing I can tell you about."