Name: Matthew Zisk
Occupation: Retired Partner at Skadden, Arps, Slate, Meagher & Flom LLP and Affiliates
About Me: I was raised outside of Boston, Massachusetts in an academic family (both parents and one grandparent were professors), but came relatively late to my love of chemistry. I was more interested in music and arts than science all the way through my teens and early twenties, until I decided at the age of twenty two to stop complaining about the state of the world and (instead) to try to work toward its betterment. To that end, I went back to school to study marine biology at Boston University, where my mother was a Professor of Political Science.
I took first-year biology and first-year chemistry (together with calculus and intensive statistics) my first semester back, and had truly dedicated and gifted professors in all subjects; I quickly learned that, for me, chemistry was a greater challenge than biology, but also held a greater fascination. I spent a lot of time in office hours with my first-year chemistry professor (Dr. Klaas Eriks) who encouraged and led me to go beyond the scope of the class material in order to understand some of the physics that is implicit in first-year chemistry, but that is held back until physical chemistry; I was fascinated. Toward the end of my second semester, I sheepishly approached my biology professor for advice on changing majors. To his credit, he stated that he and many biologists of that era wished that they’d studied chemistry as undergraduates, because it was central to what they did, and very difficult to pick up on their own; he encouraged me to switch majors (which I did).
My organic chemistry professor the next year, Dr. Guilford Jones II (a physical organic chemist), was equally gifted as Dr. Eriks (and equally enamored of the application of quantum mechanics to the study of chemistry), and invited me to begin research in his lab during the second semester of my second year. I joined his lab and continued to do research under his guidance through the rest of my undergraduate studies (including two full-time summers). That I would go on for a PhD in chemistry was an inevitable outcome from those early experiences, so off to Stanford I went following my days an undergraduate.
My experience in the PhD program at Stanford convinced me of several things – that I was not overly interested in lab work after all (thus, I did a fair amount of work in silico), and that the changes in funding for big-time academic research ongoing in the late 1980s made that path really unpalatable to me. My then wife, however, was a hot-shot political scientist (feel free to hit me with your best Freudian references . . . ) and I decided to follow her to wherever she landed, which turned out to be in Columbus, Ohio at Ohio State. After a year with me as a visiting professor at Wittenberg University, we wound up with the holy-grail for academic couples – tenure-track positions in the same metro area (hers at Ohio State, mine at Otterbein University). They were less than ideal jobs, however (for reasons I will skip), and I concluded during my first year at Otterbein that being a small college professor would not make me happy in the long term.
Fortuitously, toward the end of my first year at Otterbein I was asked by a large agricultural chemistry company to assist as an expert on a patent-infringement claim against the company (based largely on differential scanning calorimetry – something with which I had worked extensively in my graduate work), and the experience of working with the team of attorneys and company scientists whetted my appetite to transition into patent law. (Sheepishly, again) I approached the department Chair at Otterbein, who was a friend and trusted advisor, and my PhD advisor (James P. Collman) about their thoughts. In the case of the Chair, he allowed that, had he had it to do over again earlier in his career, he might well have gone into patent law. In the case of Jim Collman, after hearing my proposal, he uttered the single word “perfect” (followed by a brief description of the lives of two other of his advisees who had gone into patent law). Bolstered by this encouragement, I applied to and attended law school full time at Ohio State starting the following year. I then moved to the New York City metro area where I have happily lived and worked in a variety of legal positions ever since.
About My Work: I did not know until that fateful first summer at Otterbein what patent attorneys do, so first and foremost, I want to give you an idea about that. I speak from broad and specific experience — short of being a judge, over the span of my legal career, I assumed (for significant periods of time in all cases) pretty much every role performed by patent attorneys – worked in a small law firm, worked in a large law firm; worked as an Associate, worked as a Partner; worked in-house on a corporate legal team; worked as a litigator, worked as a prosecutor, and worked on transactions on behalf of small medium and large companies, banks, and academic institutions owning or interested in technologies, acquiring technologies and businesses, and investing in or lending to (or being invested in or lent to) entities in whole or in part based on the value of technologies on or off patent. In most cases, I used my background in chemistry (and physics and computers) to gain a deep understanding of the technologies at issue in my clients’ or their targets’ businesses. This understanding enabled me to help foster investment in and development of ground-breaking, and in many cases life- or environment-saving technologies.
Patent attorneys can be roughly thrown into two buckets (although many of us occupied both buckets at the same time) – those who work with inventors and companies to help them obtain patents (so-called patent prosecutors), and those who are involved in administrative and court proceedings to enforce (or defend against enforcement of) patents, or to challenge their validity (so-called patent litigators). As a technical matter, only patent prosecutors are required to have formal scientific or engineering training (bachelor’s degrees are fine) and to take a specialized bar exam in order to practice, although most of the best litigators also started out as scientists or engineers.
Patent prosecutors spend a lot of time with inventors and company executives digging deeply into the technical elements of an invention. They do so in order to be able properly to draft patent applications and to work with patent examiners to negotiate the scope of an invention that will be allowed to issue as a patent in the US and elsewhere. Prosecutors must also understand the broader field of the invention (what’s already known, how scientists and engineers in the field think, what works and doesn’t work, etc.) and ideally, in analogous fields, in all cases to defend against an examiner denying a claim as legally obvious. Prosecutors must also know the history of federal court and administrative patent cases in order to be able to argue that a particular case supports the issuance of claims in an application undergoing prosecution. Patent prosecutors furthermore must understand the voluminous regulations surrounding the examination of patents (deadlines and procedures and other formalities that have been developed over more than a century and that make up the ground rules for the negotiations with examiners), and ideally, will, with time, develop a rapport and mutual trust with the examiners in the particular areas of specialty in which the prosecutors operate, so that the negotiations will run smoothly.
Patent litigators must know the patent case law and must understand, in depth, the history of the negotiations surrounding the issuance of a particular patent at issue in a litigation. They must have enough of an understanding of the invention and field of invention to be able to argue the merits of their side of a case, but will generally rely on experts to provide the deeper understanding of the nuances and context (field) of the invention. Litigators need also to understand the broader business context of an invention (litigation almost never ensues absent many millions of dollars on the line), and need to be able to argue the detailed value of a business using the invention claimed in a patent at issue. Litigators must muster their understanding of all of these elements and advocate on behalf of the position their client is taking in the litigation (that an invention is or is not properly patented, that a competitor product does or does not properly fall within the scope of an issued claim of a patent (i.e. that it does or does not infringe the patent claim), and that if it does infringe, the degree of harm caused by the infringement in monetary terms), and be prepared to advocate for that position irrespective of their personal views on the merits of their clients’ cases (as long as doing so does not cross a line into committing fraud). Litigators who are trial attorneys must be able to relate to jurors and judges on a human level, must be adept at public speaking, and must be quick on their feet in coming up with and countering arguments that arise in a case. Keep in mind that very few cases actually go to trial (and if they do, not all complete the trial), so much of a litigator’s job is to position the case in the minds of their clients and the opposing parties in a manner that will lead to an advantageous settlement of the case. Litigation, like prosecution, is subject to voluminous rules and regulations that must be understood and followed.
Both patent prosecutors and patent litigators can also become involved in business transactions beyond settling infringement claims. Whenever a pair of companies agrees to combine all or part of their efforts in a particular field for which one or both of them holds patent rights (for example, to form a collaboration, sell a business, or merge businesses), patent attorneys will be involved on both sides in structuring and negotiating the combination to take into account the value of the patent rights and how they will be used following the transaction. When a bank agrees to lend a company money or a company decides to issue stock (privately or with an IPO or otherwise), if the value of the business is determined to any significant degree by patent rights (held by the business or held by competitors) then patent attorneys will be needed on both sides to guide the structuring and negotiation of the loan or issuance documents to account for the patent rights.
Much of this transactional work involves planning for the mess that might arise if the business, following the transaction, doesn’t do well, so a lot of a patent attorney’s time is spent coming up with potential risks and downside scenarios, and then arguing about how they should be handled (lawyers are thus often seen as an impediment to a deal– the “brakes” – worrying about doomsdays and bad actors while those same actors may be sitting with them in a conference room feeling impugned; but that is properly part of the job!) Complex work can also be needed where some, but not all rights in a technology are transferred as part of the transaction, how the remainder is to be handled. In all cases, a relatively deep understanding of the technologies involved is critical, or at least extremely helpful.
Day to day, patent attorneys spend a great deal of time reading (opinions from court and administrative cases, scientific literature, correspondence from other attorneys and examiners and courts, and documents related to transactions), in meetings with clients and other lawyers, and drafting and re-drafting documents (letters, briefs, contracts, responses, etc.) as part of prosecution, litigation or transactional work. They work as part of teams, for the most part, and so also spend a lot of time in professional gatherings with colleagues and clients.
Advice About Entering the Field: I loved working as a patent attorney. The combination of being able to dig into cutting-edge science and contributing to development of new and important technologies was very rewarding for me. I also love reading, and especially writing, which are huge parts of the job.
That said, while it can be incredibly rewarding, it can (and for scientists often is) incredibly frustrating to transition from working in science to working as an attorney. Why? As scientists, we are taught to seek out the single best answer, which we expect to lay out in black and white terms when finally discerned. As an attorney, it is critical to be able to see the shades of gray and to be able to advocate for a position whose correctness may not be clear to you (I stopped litigating after about 8 years in part because I was never comfortable advocating for a client I believed was in the wrong, but even in prosecution and transactional work, it is an attorney’s job to take the client’s strongest reasonable position permitted by the circumstances). If you are not comfortable in this gray world or advocating for positions in which you may have some doubts, you may not be comfortable working as an attorney.
Also, the practice law is a social endeavor. If you prefer to be a loner, you may not enjoy, and may not be able to generate the necessary business required for success in law (there are exceptions to this last observation, but the work tends not to be very interesting). If you enjoy spending long hours hard at work and socializing with other people (and golf outings and business lunches, drinks and dinners) then you may love being, and find yourself successful as, an attorney.
I would also caution you that law school is expensive (both in tuition and in lost income from being out of the workforce), and should be viewed and tested as an investment. If you are able to attend a really good law school (top tier) and do very well (near the top of your class in law school), your prospects of getting an interesting and well-paying job are reasonably good so the investment will likely pay off, but if you attend a lower-tier law school or place out of the top of your class (or top quarter of your class if you go to a top-fourteen law school), then those payoff prospects are much dimmer, although with a bachelor’s degree in chemistry or another science or engineering, your chances are somewhat better than they would be without that degree, as long as you want to be a patent prosecutor and are willing to move to certain cities around the U.S.
Finally, I would advise you (whether in becoming a patent attorney or in other areas of your lives) to keep your head up at all times and look out for and take new and interesting opportunities that will almost certainly arise. My getting into law, my moving to (and later back to) what is arguably the top law firm in the world, my move in-house to a Fortune 50 company – all arose somewhat as a result of happenstance, but mostly as a result of observation, deep consideration, careful planning, keeping track of my values, and seeking out and listening to the advice of people whom I trusted and who could provide some perspective on current and possible future directions.