The Front Lines of Patent Law


When I decided to be an intellectual property lawyer, I never expected to be standing in my high heels in a dirt field in the prairies, cell phone in hand, supervising an early morning raid on infringers of intellectual property rights. However, there I was, the coordinator of several teams of lawyers and former police officers, with a court order in hand, demanding to search the premises. Much earlier that morning, I had left my hotel and driven for hours to meet my teams at a local coffee shop to finalize our plan. We synchronized our watches, grabbed our two-way radios, and headed to our assigned location, where we suspected we would find incriminating documents as well as inventory that infringed my client's intellectual property rights.

At the appointed time, our teams entered each property and displayed our court order. We had the element of surprise on our side, and were not only successful in finding many infringing items, but also uncovered several incriminating e-mails. These raids were the culmination of several months of covert investigations and building a legal case in secret. My client eventually won its legal battle and secured a significant amount of damages from the infringers.

My career in intellectual property law has been a rewarding one. Straddling the border between science and law, I am challenged and stimulated every day. I get to find out about breakthroughs before the public and even other scientists. I advise high-ranking individuals in industry and the public sector on their rights and obligations. I am able to interact with top scientists and challenge them on their views. And I don't have to wear a lab coat or write grant applications!

I currently practice law with the intellectual property group of the law firm Donahue Ernst & Young in Toronto. One of a team of nine intellectual property professionals, I represent clients before the Canadian Intellectual Property Office, the federal and provincial courts, and government bodies such as Health Canada. Intellectual property practice often has a significant international component, as we help our clients obtain, enforce, and commercialize their intellectual property assets worldwide.

Although I grew up watching the television show L.A. Law, like most intellectual property lawyers, I did not seriously consider law as a career until my early 20s. In high school, my career ambitions were to become a professional musician or a doctor. Once at university, I abandoned my medical dreams when I fainted watching surgery. I decided to focus instead on genetics and took summer and part-time jobs in research laboratories. I was well on my way to a life as a researcher when in my last year of my undergraduate program, a chance conversation with a fellow singer changed all of that. A law student with a genetics background, she advised me to consider intellectual property law. It seemed like the perfect way to keep involved in science, while addressing my interest in the business aspects of science and my increasing frustration with the narrow focus of research. In 1992, I entered law school.

Law school was a culture shock. My scientific training helped immeasurably with the clear writing style appreciated by my professors. However, my background did not prepare me to handle the complexities of legal philosophy. One of my first challenges in law school was to figure out the difference between carving a pencil and carving the leg of a squirrel. To a scientist, the answer was simple. However, to my classmates, this was a deep philosophical question. I eventually learned to think like a lawyer, although I never did develop a true appreciation for legal theory.

Upon graduation from law school in 1995, I joined Canada's largest law firm as an articling student for a 12-month apprenticing period. After writing my bar exams, I was called to the bar in 1997. I then moved to a firm that practised only intellectual property law. Focusing on patent litigation, I was involved in many of the battles between the innovators of a drug and the generic companies who wished to copy the drug. Qualification as a lawyer was relatively easy compared to qualification as a patent agent, which I achieved in 1998. In Canada, to represent clients before the Canadian patent office, even if you are a lawyer, you must become a patent agent. Anyone with a technical background may write patent agent exams after having worked for 12 months in the field. The exams are difficult, with a very low pass rate.

In my current position at Donahue Ernst & Young, I focus on the biotechnology and pharmaceutical industries, assisting clients throughout the entire life of an invention. Along with my colleagues, I help clients by assessing whether they can obtain a patent, searching patent and scientific databases, developing strategies for protecting intellectual property assets, drafting patent applications, coordinating worldwide prosecution of the application, preparing licensing agreements, obtaining financing, commercializing the invention, and enforcing its patents against its competitors. Not only do we act for patentees, but we also help clients deal with competitors' patents. No day is the same. For example, one day recently was spent meeting with a client to discuss how to deal with a competitor's patents. The next day, I reviewed patent families to assess the strengths and weaknesses of a possible licensing deal. I then switched gears and interviewed inventors and began to draft a patent application. Finally, I reviewed court documents in a legal proceeding involving regulatory approval for a new drug.

One of the challenges facing practitioners in the biotechnology field is that the basic concepts of patent law were formulated long before we knew about genes or DNA. Because biotechnology is a relatively new science, it has taken some time for patent law to catch up. This is especially true in Canada, which is often slow to deal with questions such as what biotechnological inventions are patentable. For example, although the United States issued a patent in 1988 for the transgenic "Harvard Oncomouse," this issue is as yet unresolved in Canada.

Another key issue for our clients is the fate of patents covering human genes. In the rush to profit from the human genome project, the patent offices of the world have been inundated with applications. However, the public takes a negative view of gene patents. Much media attention has focused on a company's ability to control all activities related to a patented gene. This issue is expected to remain at the forefront of patent law for the next few years.

I recommend that science graduates who are looking for an alternative to research, who have broad interests in many areas of technology, and who want to be at the forefront of an exciting area of law investigate a career in intellectual property law.

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