|A life science entrepreneur, executive, and registered patent attorney, James Cullem often fields questions about patent attorneys and the implementation of their services in today’s biotech companies.
ZRYLW: Good morning and welcome – how are you?
James Cullem: Doing great. I’m happy to be here!
ZRYLW: Jumping right in, and to simplify matters for
our readers, what exactly do patent attorneys general focus on and accomplish?
James Cullem: Patents are a fundamental, competitive building block for most technology-focused companies, as they provide commercial exclusivity on claimed inventions for a substantial period of time. They are a legal right and document, and as such, patent attorneys (who are specialists) are focused on preparing and filing patent applications, arguing for their issuance/grant, and maintaining and leveraging them post-issuance/grant.
ZRYLW: What are the requirements for being credentialed as a patent attorney?
James Cullem: Like all attorneys here in the U.S., patent attorneys must first hold a Juris Doctorate (JD) degree from an accredited law school, and then sit for and pass the Bar exam in at least one state in ordered to be licensed to practice law. On top of that, in order to be credentialed as a Registered Patent Attorney who is recognized before the U.S. Patent & Trademark Office, the attorney must have technical training, education, and expertise in their desired area of technology focus (e.g. biochemistry, chemistry, mechanical engineering, etc.) in order to sit for and pass the difficult and specialized Patent Bar Exam.
ZRYLW: How does the Patent Bar compare to other tests?
James Cullem: It is widely regarded in the legal community as one of the most difficult examinations. As a result, the number of U.S. patent attorneys is quite miniscule when judged against other disciplines of law.
ZRYLW: When a company begins to seek the services of a patent attorney, how does management take that first step?
James Cullem: It’s increasingly important for businesses and corporations to be aware of the different characteristics that make a great patent attorney. In the early stages, it’s advisable to check with the U.S. Patent Office to confirm an attorney’s Registration and qualifications. Management must consider the patent attorney’s area of technical focus and expertise to ensure it matches the company’s product development and R&D focuses. If the attorney’s background is a suitable fit, he or she could prove to be a valuable resource, provided they have the requisite years of experience. It is always a good idea to ask other patent attorneys in the local community about their experience with the attorney the company is considering hiring. A patent attorney that is not only sharp and well qualified, but is recognized as providing great client service and communication, is the one management should seek.
ZRYLW: What’s a prime example of matching a patent attorney to the company?
James Cullem: A biotechnology company that creates and maintains novel diagnostic tests is best served by a patent attorney that understands biochemistry or molecular biology, as opposed to one that is focused on medical devices or therapeutics.
ZRYLW: Tell us about some of the red flags that might indicate trouble ahead…
James Cullem: A patent attorney who claims to be competent across divergent technology areas may not be the right choice, as it is difficult to stay competent and up-to-speed in more than one or two areas. For example, be wary of a practitioner that claims to be skilled in medical devices, therapeutics, biologics, research reagents, diagnostic, and more. Instead, look for a patent attorney that focuses in one specific area, such as genomic and proteomic diagnostic tests.
ZRYLW: How would you summarize the most valuable assets of a patent attorney?
James Cullem: Obtaining and managing patents is complicated work and requires the deft touch of an expert professional who knows the field inside and out. Still, most Registered Patent Attorneys are highly qualified professionals and the standard of work in this specialist community is high. It is easy to lose sight of the forest-through-the-trees in diving into this complicated legal work, day in and day out. The most valuable asset a patent attorney can bring to a company/client is, therefore, the additional ability to see the company’s big picture and work collaboratively with its senior management team, in order to ensure that patent activities are aligning with and serving the overarching corporate vision, mission and objectives.
ZRYLW: In closing, where can company management learn further details about the patent process?
James Cullem: By visiting the U.S. Patent & Trademark Office online at uspto.gov, where it is also possible to search for patents and obtain a full listing of certified attorneys. There are other inventor resources on the Web that explain the patenting process. And of course, a short conversation with a local Registered Patent Attorney is also helpful.
James Cullem has founded three biotechnology companies, including Paradigm Oncology, is a two-time former Chief Counsel at leading biotechnology companies, and has served as Of Counsel to a number of top patent law firms.