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Old 02-29-2012, 10:44 AM
Senior Member
Join Date: Jul 2009
Posts: 125

Originally Posted by Billable Hours View Post
Registered Patent Attorney with 13 years experience in top tier law firms
Licensed Professional Engineer
Degrees in Mechanical Engineering and Materials Science, PhD dropout in Biochemical Engineering
Generally handle all types of technologies (mechancal, electrical, electromechanical, computer software, business methods, etc.), except hardcore chemistry and biotechnology

Maybe sometime I will explain why I believe it may be better to have a Patent Attorney that is a quick study in any technology, rather than one who has particular experience but preconceived notions in the given field . . .
I would agree that a PA with preconceived notions, regardless of their field of expertise or experience is not a good thing....

I was going to add (but had to take off to make a school pickup) that the very best PA's I have worked with are those with an Engineering background, whose exposure is somewhat more broad than the PA's that specialize in niche areas like genetics, medicine and biotechnology. I have a background the Chemical Engineering(MS) and am considered an expert in my limited field at this point in my career. My original plan was to go to law school and become a PA. Life intervened however and law school was not to be but I have always had an interest the patent process. I hold a number of patents in my field.

As an expert consultant/witness, I was involved with a situation where a small group of individuals received a patent on a chemical process for water treatment. The patent application was prepared by a small firm with specialties in the medical field and specifically medical genetics due to a family relationship with the inventors. Their associates commonly held MD's or advanced degrees in biology or microbiology. The patent was later disputed and much of the case centered around the use of words that were unusual in the context of the patent. This was not a case of obfuscation, but rather differences in the vocabulary pertinent to the relatively different fields of art. A settlement was reached with the disputing party allow to practice under license in geographically restricted areas not competitive to the patent holder.

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