Time We Discuss: Patent Attorney, a Day in the Life (Laura Schneider)

Transcription

(Music)

Laura Schneider: You can use chat GPT even to do a lot of research. The program will tell you a lot of the steps that you need to take but it doesn't help you with …

Dan: Before we get started, I want to thank Tricia Copeland for introducing me to our next guest today on Time We Discuss I want to welcome Laura Schneider and it's time we discuss what it's like being a patent attorney. Laura, thank you for joining me today.

Laura Schneider: Thank you for having me.

Dan: Oh, absolutely. This is gonna be cool. So Tricia was a patent agent. You are a patent attorney. They're loosely related. So let's start there. Where does your job begin and a patent agent's job end. What are the differences?

Laura Schneider: So there's actually a lot of crossover. Both the patent agent and a patent attorney can prosecute patent applications before the USPTO. Where they diverge is that a patent attorney can also assist you in other aspects of intellectual property that are related to patents. So we talk about trademarks, copyright, trade secrets. So those are all of the things that a patent attorney would be involved in. And we also will manage our international portfolios. So we'll instruct, you know, attorneys around the world related to your project.

Dan: I want to hang on copyright for a second. I'm generally familiar with the copyright process more so than the patent process. Now, I spoke to Brian last year. He was an inventor. So we talked a little bit about the patent process. But specifically with copyright, are there different copyright attorneys that handle copyright specifically? Or is that also just you? Are they two different things? What is that like?

Laura Schneider: The funny thing about copyrights is one of those few things that you don't actually have to register or create, you know, some sort of, you know, a certificate with an office ahead of time in order to have rights. Copyrights are created at the time of creation. Even this conversation, this podcast is already copyright protected even without a registration. And the whole purpose of copyrights is just fairness. The whole point is for, you know, to prevent others from copying your creation that protects the artist.

Dan: If there's a copyright claim, would someone go to a … could you handle that as well? Or would I have to find a specific copyright attorney? How does that work?

Laura Schneider: I am a prosecutor in all of the actions that I take. So copyright trademark and patents. I'm a prosecutor, meaning I register those. There are different types of attorneys who will come in at different stages. So first is the prosecutor that's going to be the person who creates or helps you create the title to what you have. You know, and then the next step might be an attorney who is a transactional attorney. That's going to be somebody who helps with, let's say, licensing agreements, business contracts, those types of things. And those are more those attorneys. They deal with the property, but they're transferring title effectively. So that's a different attorney. And then the third type of attorney is going to be the litigator. They're the ones you see in the courtroom who go in and get those 200 million dollar settlements out of Samsung and all of that.

Dan: Interesting. I assume that would just be one person or one type of person, but they are distinct individuals.

Laura Schneider: and it's intentional, at least on the division between the prosecutor and the litigator. It's because you don't want to litigate your own patents because that can get into some issues with attorney-client privileges, because there might be some questions about what were you thinking when you wrote on page 48 of this patent. And that's problematic.

Dan: That makes sense. OK, so you talked about trademarks. You talked about copyrights, patents, trade secrets. Does a patent attorney typically deal with all of those or is it no, you kind of start to like you might specialize in patents and then slowly take on trademarks? What is that typically like if someone's looking for a patent attorney?

Laura Schneider: A lot of attorneys will focus solely on one aspect. I actually handle all four of those. And I'd like to say that the different aspects of intellectual property, they complement each other and they serve different purposes. So, for example, a patent is there to a patent is effectively a monopoly. It gives you a right to prevent others from making, using or selling your invention. A trademark is actually it's actually protection for the consumer. And this goes all the way back to the bread baking days of England and, you know, blacksmith. They actually had to mark their bread or mark their silver with the shop logo so that the public would know, OK, if I buy this bread, I know, you know, this is what I'm getting. So that's what we have today with trademarks is that if somebody buys something branded Coca-Cola in the store, they know exactly what they're getting. Copyrights we talked about, that's to that the intention of copyright is to protect, you know, prevent actual copy in the trade secrets or exactly like they sound. It's your secret. And so there are certain protocols to protect those secrets because once they get out, they're out and you can't do anything about it.

Dan: Alright. Let's let's jump to how about a typical day? What is it typical day like for you as a patent attorney?

Laura Schneider: I'll talk about my favorite type of day. And my favorite type of day is when I get a call, you know, first thing in the morning and, you know, say from a client who says, wow, I've been thinking, you know, and I'm like, oh, yeah, you've been thinking. That is great. And so, you know, give it to me. And so typically a client's discussion is going to be about, first of all, product idea that they've had, maybe some business marketing associated with that. We'll also talk about, you know, in many industries, it's, you know, competition is tough. And so there's going to be a conversation about what's the competition doing right now and what will they do once they see your invention out in the public? And so we go through all of that discussing our strategy. First of all, is a patent appropriate? And if so, is it appropriate at this time? There's a mirror window when it's ideal to submit a patent application. You don't want to jump the gun, but if you wait too long, then you've also lost some rights. So finding the right time to apply is a big deal. And as part of that conversation, we also discussed how, you know, any other related actions we need to take, you know, regarding the marketing of the product and go from there.

Dan: OK, so let's hang on this for a second. Very generally speaking, you talked about if you wait too long, you're at a disadvantage, if you act too quickly, you're at a disadvantage. What makes it like that, that perfect zone when you should be acting on it?

Laura Schneider: Yeah, and it's squishy divine. So there is, you know, there is no, you know, black and white point. But let's say applying too early. A lot of people, they want to submit that patent application right away the day they woke up with a thought. Well, the problem is, is that, you know, you're entitled to a patent once you have something that is new, useful and non-obvious and has utility. And then as you go through that, you know, whenever, you know, if you submit the application to early, you have just a broad little idea, but you may not know all of the details of how to implement your idea. And it happens more often than you would think that as your engineers on the team are getting down to the nuts and bolts of the idea and actually implementing it, they encounter other problems that they have to solve. Well, those problems that they solve are themselves patentable. And if you've applied, you've lost that opportunity. And conversely, sometimes that I did see this years ago, a company had submitted applications, multiple patent applications, far too early. Those applications were allowed and did issue into patents. The problem was they couldn't actually create the product, they couldn't build it. Well, 10 years later, they figured out how to build it. And they thought, okay, we'll submit an application on this product. Well, their own prior patents block them from getting patents on that, you know, what they actually were able to create. So that's what can happen if you file too early.

Dan: Awesome. That's a really good example. I love that. Okay. So during our conversation before we started recording, you mentioned that you actually became a patent attorney later in life, which I love stories like this. So let's focus on that. Very briefly, what did you do before? And then how did you transition into this career?

Laura Schneider: It's actually very common what I did a lot of, especially a lot of patent attorneys start off their careers as engineers, I was a design engineer in mechanical engineering with an undergrad in mechanical engineering. I didn't really enjoy it, to be honest. It was good work I was treated well by my employer, but I really just, I didn't enjoy spending a year thinking about whether the angle, you know, between two pieces should be point 487 or point 486. I didn't care. So that's when I started thinking about changing careers and came to this. So, switching, it was tough. You know, it was tough to switch, switch gears later in life and especially at the time, I was a single parent, I went to law school with toddlers in tow. I don't recommend it. I do not recommend law school if you are a single parent did, you know, going to have a lot of family support. That being said, once you're finished with law school, then in our career as a patent attorney can be suitable for single parents. It can work and it's actually very rewarding and can work, you can work your schedule around your family needs. But I will say making the switch is hard.

Dan: That is good to know. Okay, I love that story. I was speaking with Christopher Stockwell, he was a prosecutor, and his story was really cool. He dropped out of high school, kind of bounced around a little bit, ultimately went back, got his I guess got his GED I guess is what it was, and went to law and he talked about what it was like being in law school later in life. Really, really cool story. So it's nice to hear his perspective and hear your perspective as well. Similar and different. I absolutely love that. So you finish law school, you pass the bar. What did you do after that? Did you go to work? I'm assuming they have different firms, you started your own firm. What did you do immediately afterwards to get started as a patent attorney?

Laura Schneider: I initially went to a boutique, a small law firm near my law school in Boulder, and I spent about four years with that firm before opening my own practice.

Dan: Going back to family balance. Okay, you talked about being in law school as a single parent. Recently, an episode just dropped with Russell Little. He was a divorce attorney, and for a period of his life he was also a trial attorney. And he talked about when he was a trial attorney being in court, and how it was very encompassing that it makes life outside of work very, very challenging. So that leads me to this question for you as a patent attorney. What is the work-life balance like? I assume it's drastically different based on what you said about being a single parent post law school. But generally speaking, what is the work-life balance like for you?

Laura Schneider: The work-life balance for a patent prosecutor or intellectual property prosecutor, all of this is actually very nice. It's very comfortable. You know, again, once you're finished with law school. Every deadline that I receive is at least three months out. So I've got three months to prepare my work schedule and work around it. It's very rare that I have something come up that's going to be, you know, the last minute, drop everything and work right into the day. And the only time that happens really is when I've got a client to, you know, they are, it's going to be somebody who's in conversation with you. They're going to be in conversations potentially with licensing or something like that. And they need something on file quickly with the USPTO to establish priority dates and things like that before they have a meeting. So it's possible that somebody might say, you know, we've got a meeting on Friday, can you get those filed beforehand? We can do that. But, you know, typically I've got three months notice.

Dan: Okay, that sounds pretty good. Talking about your engineering background. Okay. When I spoke to Tricia, she talked about her background, I believe was in microbiology, chemistry, I think, absorbed a little bit of physics through her work as a patent agent. But she said, you know, if she were doing anything engineering, for instance, that's outside of her realm, she wouldn't be able to do that. She'd have to pass that on to someone else, probably someone like you actually. So being a patent attorney, I'm assuming you have those same limitations where it's like you're focusing probably on engineering, may have like delved out a little bit. What's that like from your perspective?

Laura Schneider: Every patent attorney and also patent agent has to have an undergraduate degree in engineering or one of the life sciences and things like that. And typically, we will specialize in our area. I, for example, my undergraduate degree is in mechanical engineering. So I take on work that is anything mechanical or electro mechanical related and also software patents. But I will not, you know, I will not handle chemistry or biochemistry and that's all, you know, Tricia and I really refer to each other. But that's some of these, you know, when you've got type of application, then I'll refer them back to her.

Dan: I don't know if you can answer this, but how common is it for a patent attorney to have their own firm to just they finish law school, they want to start their own firm, they want to work with inventors or, you know, working with, you know, copyrights, trademarks, trade secrets, that sort of thing, intellectual property. How common is that or how difficult would be to get started and have to build up a clientele? Is there is there enough out there? What's what's your opinion on that?

Laura Schneider: I'm not exactly sure on statistics for that. I do know it takes about five years, five years to really establish your client base in order to be able to open your own practice. And in any case, I would still recommend being with a law firm in the beginning because law school doesn't actually prepare you to be a lawyer. So you still need a few years to figure all of that out. Once you decide to make the job and go solo, opening your own practice is a matter of filing a few documents with a state and with the USPTO and if you're in business.

Dan: It's funny, Russell, again, Russell Little said the exact same thing that law school doesn't prepare you to be a lawyer. So I don't know if you watched that one or just the same sentiment.

Laura Schneider: No, it's exactly spot on.

Dan: You said something that made me think of this. I don't know if you specifically talked about working nationally or not, but but that's this is where my thought is going now. So the type of law that you practice, I know typically, you know, lawyers, they practice within their state. If they want to work in a different state, they have to pass the bar for that specific state. How does that work for you as a lawyer of intellectual property? Can someone in a different state call you and you represent them as the patent attorney or no, they have to be within the state or wherever they're calling from, you have to be licensed in that state. How does that work for you?

Laura Schneider: I can and do represent clients from across the US or internationally, you know, because I'm licensed to practice before the USPTO. That's national in nature. So the patents, copyrights and trademark are all national in nature. Where it can, you know, and I think some attorneys can get in trouble with this is that say they've got a client and they've represented them in prosecuting the patent application, but then that same client wants to open a business in another state. That is where, you know, that's where they get into trouble. So you have to secure local representation or let's say if there is a conflict, which I'm not a litigator. So I don't do this anyway. But if there was a situation where there's litigation between multiple parties, you know, the attorney has to be in that state.

Dan: Changing topics completely. If I have an invention and I want to get a patent for it, do I need a patent attorney or a patent agent? Can I do it myself? What resources are out there for the average person if they want to try to just do it on their own, maybe save a couple bucks?

Laura Schneider: That's a big conversation right now is that, you know, it's AI. You can use AI, you can do a lot of research and it will get you, you know, these days, you know, you can use chat GPT events do a lot of research before submitting a patent application. They will tell you and I've tested it out. The program will tell you a lot of the steps that you need to take. But it doesn't help you with the strategic decisions. And so I see the future of patent attorneys and intellectual property attorneys. We're going to move away from all of that nuts and bolts kind of stuff, the mechanics of submitting with that application. And our conversations are going to focus more on the strategics of what you're going to do because that's something that AI they can't replace. Only you know what, say, what your competitor is really thinking what they're going to do based on the last 20 years of what this competitor is doing, like where their mind is stuck. So attorneys need to be ready for that. For, you know, pretty soon people will be able to submit their own patent applications and they'll be pretty decent. But we need to be involved with the strategic aspects.

Dan: Interesting. Okay, so hang on AI for a second. How much are you able to leverage that in your current role? I think you said before you can see like other people using it in the future. But how about in your current role? Are you able to do much of anything with it or it's not very helpful for you?

Laura Schneider: I do not use AI, you know, in the space of say writing patent applications and things like that. I write all of my work from scratch where I use AI as a research tool. So it's very helpful to me, which comes down to also helping clients because it's reducing my time and how much I'm going for it. Whenever I'm researching, whether it's other, you know, sometimes I research other companies or sometimes researching laws in other countries because, you know, we're managing patents in every country. And so, you know, I don't know what the law in Japan is for something. So I'll look that up.

Dan: How much time do you have to invest in? How much time are you investing in researching? How difficult is that? And it probably varies wildly, I assume. But generally speaking, how much time are you investing in that?

Laura Schneider: It's a lot. So and especially, you know, the more complex the invention is and or the, you know, the more competition there is in the industry, there's going to be more research done for that. So it's all over the place. Sometimes we submit patent applications without even doing a prior search, you know, because of the client. So the point of doing, let's say, a freedom to operate search before submitting a patent application is, the point of doing that is to avoid a huge expenditure on manufacturing or, you know, ordering all of your product. So we want to do a search before you spend a million dollars on that. But if you're a small business and you know you're not going to spend a lot on your building or manufacturing facility, all file applications without even doing any prior search and just let the USPTO do the search for us.

Dan: When you finish law school and you pass the bar, are you set and ready to do what you need to do? Or do you also have to get any kind of any kind of certification with the USPTO? I think was the acronym. What is that like?

Laura Schneider: Well, it's a two-step process. I like to say the patent attorneys are a special kind of crazy because not only do we have to have a pass the bar exam, we also have to pass the patent bar exam. So that's two of those there. Not fun. But once you pass both of those and obtain your registration, you can practice.

Dan: How often are both those offered? I know at one point in time, the bar was, I don't know if it was like quarterly or every other month or something, but that's depending on the state. Can you take them fairly … If you take it once and you don't pass, can you take it again pretty quickly or they're spread out, which might make it difficult?

Laura Schneider: I'm not sure anymore on the patent bar exam because I actually was a patent agent before I went to law school. So I took the patent bar back in 2010. I haven't paid attention since to how often that's shared. I think that's going to be, I think the patent bar is available anytime or very frequently in the patent and the bar exam is different in every state, in Colorado it'stwice a year.

Dan: One question I like to ask different people I'm talking to, there are different attributes of different jobs that could be deal breakers for certain people. And the example I like to use, if you don't like sitting in front of a computer for eight hours a day, computer programming is probably not for you. So I want you to think about your job and different attributes and think about if someone doesn't like this one thing, then being a patent attorney, that is not for them.

Laura Schneider: Two things being in front of a computer all day, that is a lot of it. But in addition to that is attention to detail. If you do not like paying attention to detail and do not care about the long term stress or chess strategy with the USPTO, I've been being a patent attorney is not for you. Because you will be talking about a single word that you use one time on page 28 of an application, and you need to know why you chose that word.

Dan: Laura, this is really, really good information. I am running short on time though. One thing I'd like to do whenever I'm speaking with someone is it is to give them the opportunity to talk about a project they're working on a cause they believe in, about their business. So if there's something specific you'd like to talk about the floor is yours.

Laura Schneider: I was a small business owner. I am with Rogue.Law, R-O-G-U-E dot law. I'd be happy to talk to anybody if they want to reach out and talk about say having questions about what just it's like being a patent attorney. I'd be happy to do that.

Dan: That is awesome. Thank you for that. I'll put that link in the show notes will be on the website will be in the description, it'll be all over the place so when people are trying to find you they can easily find you.

Laura Schneider: Thanks a lot.

Dan: Absolutely. Laura it's been awesome having you on time we discussed and we learned what it's like to be a patent attorney.

Laura Schneider: Thanks for having me.