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Patent counsels and scientists work together to further understanding of science and increase corporate financial gain WASHINGTON - Corporate patent lawyers just don't see science the way researchers do. "Scientists spend their entire careers creating intellectual property," says Auzville Jackson, Jr., a partner in the Washington firm of Staas and Halsey, which specializes in intellectual property law. "Yet they never think about property values and how to protect their property, which is often worth a huge amount of money." It is those property values that patent counsels think about most. And it is their job to try to get scientists to think about them too. William Duffey, general patent consul to Monsanto Co., expects the 34 lawyers working under him at the St. Louis agrichemical and pharmaceuticals firm to devote themselves to hectoring the company biochemists and engineers in this regard. It is a process that he believes leads the researchers to a greater understanding of corporate science - and the company to greater profits. "The culture of the independent scientist is antithetical to ours," says Duffey. "They're free thinkers. They want instant publication. We look for cautious publication." If he had his way, Duffey says, researchers would keep more extensive records of their work and publish as little of it as possible. Earlier this month, Duffey, Jackson, and other patent counsels gathered at a symposium sponsored by the Industrial Research Institute to discuss the role of patents in industrial and scientific progress. Both Duffey's appearance - his distinguished silver hair and tailored gray suit - and the dignified atmosphere of the meeting stood in stark contrast to the comparatively scruffy, informal world of the laboratory. Jackson, as master of ceremonies, promised the assembly of men in dark pinstriped suits, incongruously sipping Diet Pepsi, not to tell them the jokes he'd repeated too often at similar discussions on the management of industrial research and development. But Duffey managed to get one in that expresses the beleaguered scientist's point of view: What's brown and black and looks good on a patent lawyer? A Doberman pinscher. Yet despite the clubbish atmosphere, the purpose of the meeting was in part to get a message out to scientists. Patent lawyers believe that researchers too often don't understand the important role of counsels. Duffey and the other speakers say they would like scientists to see things from their point of view. Rarely does the scientist get even a secondhand peek inside "the secret files of the patent attorney," as Jackson puts it. Yet it is often the flannel-suited men and women in the office of a corporation's patent counsel who determine the direction of the science done by the person in a rumpled lab coat. "Patents provide the incentive to industry to do science," says Duffey. "Why would a company risk enormous amounts of money?" According to Duffey, the U.S. research-based pharmaceutical industry has been the world leader in developing new medicines because of its investment in research and development. That investment has doubled every five years since 1970, reaching $17.3 billion in 1989. The bloody, yet necessary, job of defending this investment is left to the patent lawyers. When exclusivity is threatened, they can't be afraid to litigate. "Scientific discoveries are the intellectual property of the company," says Duffey. "If you're not going to enforce your property rights why get a patent in the first place?" Although the bottom line for Duffey is clearly corporate profits, he sees patent lawyers as being more like scientists than like other attorneys or corporate executives. "The patent lawyer is different from the labor or constitutional lawyer by training and in his culture," says Duffey, who received an undergraduate degree in mechanical engineering and later took two semesters of organic chemistry in night school. Unlike many corporate executives, he spends a good deal of time in the laboratory. "We have to become conversant with the invention and it begins out in the lab," he adds. The patent attorney straddles two worlds, living in the realms of both unique biochemical formulas and complex legal jargon. On one hand, he must work closely with the scientist and try to see the work from inside the test tube. On the other hand, he must bring his own perspective as a legal adviser concerned with a company's financial health. In many ways, the perspectives are similar. Both lawyer and scientist are interested in spelling out the convoluted - but rational - logic of a case to come up with a solution. The patent lawyer is more thoughtful than other lawyers, Duffey suggests, and has a genuine interest in science. In fact, the patent lawyer eats and sleeps with the science, and is perhaps as consumed by each new development as the scientist himself. At Monsanto, for instance, each lawyer becomes a specialist in a particular field. "Most of the patent lawyers here have stayed for their entire careers in the same area of science," says Duffey. "There is one lady here who has a Ph.D. in microbiology. It's hard to come by the kind of [legal and scientific] expertise she has. But I wouldn't in a million years ask her to do an electrical case. That would be cruel and inhuman treatment." These lawyers also bring to the enterprise their own legal turns of mind. One fundamental principle, Duffey says, is to develop a company's intellectual assets. That, of course, begins with hiring good scientists. Another principle is to provide marketing exclusivity for a product line. It's here that the lawyer and scientist work side by side. "The [patent lawyers] down the hall, for instance, are working on agrichemicals," says Duffey. "Their entire job is to work on herbicides with the scientists. A scientist might come to one of them and say, `I think I have a new herbicide, and it may turn out to be really powerful.' "But what we do better than the scientist is to overlay the invention against the entire art. We raise broad questions. Is the chemical new? It's a philosophical perspective we bring to it. The scientists tend to have tunnel or myopic vision. Our job is to ask questions, to lead the scientist to new heights." Ultimately, the goal of patent lawyers is to increase the scope of the invention or discovery until they are convinced that there are no other related but undiscovered compounds that would be useful to a competitor. "A good patent lawyer can present new [scientific] ideas by his questions, which then advances the science," says Duffey, adding, "It's not uncommon for a patent attorney to be named as a co-inventor in a patent."

Corporate Patent Lawyer Marries Scientific Process To Profits

May 27, 1990

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