Chemical Transformations: From Prof to Patent Law


As a chemist, Paul Dietze was an expert on the chemical transformations of certain simple organic molecules. During his years as an assistant professor of chemistry at University of Maryland, Baltimore County, Dietze asked fundamental questions about mechanisms of basic organic chemical reactions, questions he recounted in a recent telephone interview: "How does A go to B? Are there intermediate states? What are they? How are reactions catalyzed?" His musings were fruitful: Over the 12 years after he received his Ph.D. from New York University (NYU) in 1983, Dietze published 15 articles in peer-reviewed journals, as well as one book chapter.

But when his tenure decision came in, it wasn't enough: Dietze was denied tenure in what he describes as "a very controversial decision." It was an event that taught him much about transitions of another sort--career transitions. "Almost the whole department supported me," he says, "except the department chair." When the administration sided with the chair, Dietze chose not to fight--"I decided that if the chairman didn't want me there, I didn't want to work there"--so he quit UMBC in 1995 and took a job at the Food and Drug Administration (FDA). There, he participated in the review of oncology drugs and began to think about law school, not for the first time. "As an undergraduate," Dietze recalled, "I had considered going to law school, but I decided to do science instead." Ultimately, he decided to give it a try: "I decided I'd do it for a year at night and if I liked it I'd continue."

Dietze never looked back. "I absolutely loved law school," he says of his time at the University of Maryland. "The work was interesting and challenging, and I met a varied and fantastic group of people." He received his J.D.--with honors--in 1998, was admitted to the Virginia Bar, and began work immediately with Pennie and Edmonds, a large intellectual property law firm with offices in New York, Washington, D.C., and Palo Alto, California. He is now in his fourth year as an associate at P&E's D.C. office.

Dietze's main responsibility is "prosecuting" patents: preparing applications for clients, submitting them to the patent office, negotiating with patent examiners, and, when necessary, filing appeals. He explained the patent application process, and his daily responsibilities, this way: A client approaches the firm with an idea. The firm does a search of the patent databases to locate related patents. He and his colleagues study the "prior art" to determine what is new about the new invention--does it result in a higher yield? Is it more pure? Is it less expensive to produce?--and make a recommendation: Either it is or it isn't patentable. If it is, they write claims and submit them to the patent office(s). There's give and take; claims may need to be rewritten. In most cases, ultimately, the patent is issued.

Dietze rarely has to go to court; indeed, we spoke the same day he had his first court hearing. It went well: "I had most of my motion granted," he says.

Has a scientific background helped him with his legal work? It has. "Law is very different from science," he notes. "In science, you have rules. It's either A or B or C. In the law, you may have A, B, C, and G. But I have found that the rigorous approach of science is a big asset."

As a patent attorney, Dietze's job is to identify aspects of a new invention or process that are novel or new. This requires that he be able to understand in detail not only how his client's invention works, but also the "prior art"--similar, prior inventions, "other things that are already out there."

"I don't think they [patent officers and other attorneys] understand the problem without the technical background."

But understanding the technical detail is just part of the job. You also have to simplify and explain, to distill fundamentals from an often complex technological mixture. These tasks require concision and clarity, and here the other part of Dietze's academic science background comes into play: "I think my teaching experience helped me with that."

The idea of a former scientist doing patent law is hardly patentable; there's plenty of "prior art." Most of Dietze's colleagues at Pennie and Edmonds have some science, from bachelor's degrees to Ph.D.'s from elite universities. But few have previously held faculty positions in the sciences.

That's no great loss for them, according to Dietze. He does, sometimes, miss teaching, but feels that patent law offers him the best of both worlds: "I get to use my legal skills and my scientific skills. The work is very rewarding, and the pay is a lot better."

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