Tech companies seeking science-minded lawyers


Startup businesses in the biotech and medical field, as well as giants in the industry, all want the same thing – attorneys who know what they are talking about when it comes to filing a patent and fighting to protect one in court.



Business owners are searching for the best attorneys who know the industry, while law firms are beefing up the number of attorneys with scientific backgrounds.



Afferent Corp., a Providence-based medical device company, which has licensed two patents from Boston University and has filed a provision on another two patents, has gone through three law firms to handle its patent issues.



“The issue was finding someone who could speak the language,” said James Niemi, director of engineering at Afferent. “We almost wanted to have an engineer at the law firm to get the technology and technological descriptions correct.”



After his experience with one law firm, which failed in Niemi’s eyes because the application was techno-babble because of the attorneys’ lack of understanding of the technology, Afferent went on to the next and then the next law firm before hiring Nixon Peabody LLP in Providence.



“We actually brought to a law firm, that we didn’t go with, a team of engineers and did a full presentation,” Niemi said. “It was a big effort.”



The firm that they originally went with “showed a clear lack of understanding.”



In initial meetings we’d spend an hour, any more than that and you get the deer-in-the-headlights look.



David Enscore, president at Spherics, a Lincoln-based developer of bioadhesive-based drug-delivery technologies, said finding the right attorney “is not necessarily a difficult thing, but an important thing to do.



“The whole IP (intellectual property) world out there is extremely complex and you need to know someone who’s extremely knowledgeable in that area.”



To make the process easier, Spherics has hired an internal patent agent, who can file patents and can work with patent agencies, but can only act as advisor to the attorney in cases that go to court.



“They know the whole process, which is really good because you have someone internally that you can work with,” Enscore said.



Patrea Pabst, a partner with Holland & Knight who practices in the area of intellectual property and patent issues relating to biotechnology, medical, pharmaceutical, and chemical technology, said things have changed dramatically since she got into the business two decades ago.



Pabst, who represents Spherics, a Brown University spinoff, said when she went to a law firm in Boston to get a job in the early 1980s they asked what she could do that is useful.



“I said I knew chemistry,” she said. That was enough, and Pabst got the job.



“Things have changed drastically and now you have huge amounts of people with a scientific background.”



Pabst spent eight years in medical research before starting her practice.



Companies want to hire bright people who know what they are talking about, she said, and they should for the money they spend on attorneys.



“My billing rate (when I started) was $25 an hour and well, the world has changed; people are getting $125,000 (a year) out of law school,” she said.



Spherics, she said, expects her group to help them to know what else is out there in the field and expects to get a significant contribution from attorneys.



“People who do startups are people who are extremely smart and expect lawyers to be too,” she said.



Companies need to hire someone who not only understands the technology but who understands the business, she explains.



“If you have no patents or poorly drafted patents it is very hard to raise money and get corporate partnerships,” she said. “You have to combine the understanding of technology and patent law with the understanding of what is this company trying to do.”



Enscore agreed.



“If (it’s someone without) a science background then someone with an IP background,” he said. “You try to find someone who understands what you are doing.” Pabst’s group, which operates out of Holland & Knight’s Atlanta office, has three patent attorneys, three patent agents and three paralegals that do nothing but patent prosecution.



Of that group, there are two attorneys with Ph.Ds in molecular biology, one with a Ph.D in organic chemistry, and another two chemical engineers.



This is a must, according to Pabst, who said a law firm must hire experienced attorneys with a scientific background, not great attorneys that they can then train in medical research.



“You can’t,” she said. “You have to hire someone with a technological background and put them through law school, but you can’t train them on the technical side.”


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