In this new series, we are profiling legal professionals and J.D.s and asking them the hard questions that don’t always get answered in law school. For example, how did they find their job? What do they do on a day-to-day basis? And, was law school a worthwhile investment?
Kevin Noonan, Ph.D., is a partner at McDonnell Boehnen Hulbert & Berghoff LLP, an intellectual property boutique with offices in Chicago and Washington State. With a PhD in Molecular Biology from Princeton University, Kevin specializes on biotechnology clients, including hot topics such as gene cloning and gene patenting. Kevin also co-founded the blog Patent Docs, which he manages with Donald Zuhn, Jr. Ph.D., his colleague at MBHB. Kevin talks to us about how a cab driver in New York City decides to become a patent attorney and how teaching and blogging about biotechnology patent law keeps him updated with the current issues affecting his clients.
RecruiterEsq: Thank you for speaking to us today!
I always wonder how scientists – especially scientists who’ve already achieved their PhD and spent a million years in school – segue over to law. How did you decide to go to law school?
One of the joys of being a scientist is actually doing it – designing experiments, setting up the reactions, doing whatever analysis is appropriate and then interpreting the results. As with many things, that is also one of the problems with science, since it doesn’t always work out the way you expect, and it can be very frustrating when an experiment doesn’t “work” and you can’t figure out why.
But as you progress from graduate student to post-doc to assistant professor, your role changes – professors write grant applications and teach, and because of that you have fewer and fewer opportunities to actually do what drew you into the profession in the first place. For me, I was ready to make that transition in 1990, and the job market was not good, I didn’t get the opportunities I wanted (and I wasn’t the world’s greatest scientist), and the future looked like it wouldn’t be much fun.
I had a friend who had preceded me from the lab into patent law, and I thought it would be a good way to continue to use the science knowledge. Also, by the time I left science I was pretty tired of being poor.
I heard that you were a cab driver at some point in your career? When did that happen? Any life lessons that you learned on the road?
That was over summers and vacations during college. I drove 4pm to 4am in Manhattan, and I learned that the end of the night at most bars is not pretty.
I’m sure you met some very interesting people. On a more serious note, how does your post-graduate work at Princeton, your Postdoctoral Fellowship, or your position at the National Institute of Health help you when representing your clients?
My clients hire me for my legal skills, and the science background gives us something in common. Plus, having a science background gives me the ability to remember biotechnology inventions, since the training gives me a structure and context that helps – I am certainly not unique in this, of course. But it would be a mistake (and it is a common mistake) for anyone to think I am still a scientist. You lose that pretty quickly once you leave the lab.
What are some hot issues that you see in your work?
The hottest issue these days has been the effort of the ACLU to have the courts declare isolated human DNA to be patent-ineligible. It is a hot-button issue because it can be (and has been) cast as a “who owns you” issue, when that isn’t the case at all. But the combination of human genes and disease propensity and corporate ownership/exploitation does rub many people the wrong way. Add to that the arcane nature of patenting and the general lack of technology savvy by most people, it is easy for the emotional argument to prevail. Since I can’t raise a logical argument to refute the “it’s just wrong” tenor of the debate, I try to explain how much worse it would be if genes could not be patented
I recently read The Immortal Life of Henrietta Lacks by Rebecca Skloot, which is the story about HeLa cells and also Henrietta Lacks, the woman from whom the cells were taken. The book presents the complexity of these issues. Speaking of books, I’ve seen cloning or genetic issues referenced lately in pop culture. For example, in Gary Shyteyngart’s Super Sad True Love Story: A Novel, the main character works for a company called Indefinite Life Extension. Lawyers and doctors know that pop culture doesn’t always reflect reality. What issues does pop culture fail to convey in regards to genetics, patents, or pharmaceutical innovation?
It is easy to make corporations, particularly drug companies, to be the bad guys, and as with anything involving humans there are things that can be criticized in any corporation. But I have many start-up biotech companies (where a lot of innovation occurs), and universities as my clients, and patenting helps those people protect their IP during the very long time it takes to go from a result or observation at the benchtop to a commercial product. While it is true that these companies and their investors want to make money, it is also these folks who take very great risks associated with developing cutting-edge technologies, under circumstances where everything can go belly-up with the results of a clinical study 10 years (and hundreds of millions of dollars) after the project started. While generic drug companies have their place in reducing costs, they rarely produce new drugs. The public has no idea how much it costs and how risky it is to innovate in this area; they just want medicine to make themselves, their kids or their elderly parents better. I understand that, but it isn’t reality to ignore the details behind producing new drugs.
You maintain Patent Docs with Donald Zuhn, Jr. Ph.D., another McDonnell Boehnen Hulbert & Berghoff patent attorney. How did you decide to start blogging? Was it a decision between the two of you? Was your firm involved in the decision?
Dennis Crouch, author of the Patently-O blog (and a big supporter) was an associate at our firm when he started his blog. Don and I talked about a biotech-specific one, but I have zero ability to get something like that off the ground technically. Don is good at that, and he does all the administrative stuff. We kid each other about who came up with the name Patent Docs, but the logo was my idea.
Dennis Crouch is one of my own inspirations! (I give a nod to Patently-O’s Job Board on my own job board.) That’s really awesome that MBHB has that type of environment where it encourages its attorneys to blog or try new things. While you and Don may have started Patent Docs, other MBHB attorneys now contribute as well. How does your team manage the blog? Is there a schedule for posting?
We wish more of the biotech attorneys would blog – it has a number of advantages. First, it keeps your head in the game – between Federal Circuit decisions, PTO actions and proposed rules, patent reform and other bills in Congress, and hot topics like gene patenting, writing for the blog makes you pay attention. It also makes you think about the law and developments in ways that helps in our practice. And it sharpens writing skills that we don’t always use – you need to be able to write a story that will be understandable to people who don’t want to invest the time to read every decision, but want a heads-up on those things they should pay more attention to.
I agree. The tough part about blogging is finding the time to read the news and write an interesting synopsis or opinion or sticking on a schedule. Unfortunately, some of the benefits of blogging are not easily discernible on a financial statement – it’s hard to quantify some of the benefits you mentioned, for example. On the topic of time management, how many hours per week do you dedicate to Patent Docs? How many of those hours are spent creating content?
Everything I do on the blog is creative – Don does all the boring stuff, as well as putting out a topics list on a fairly regular basis. I guess I spend 10-15 hours a week, and Don spends more.
Patent Docs uses TypePad (one of our affiliates!). How did you decide on that as your content management system?
You’ll have to ask Don, but I think it has to do with being able to handle our content – we illustrate almost every post with some kind of graphic (which was an idea from a former associate and author, Jason Derry), and we need to be able to get comments on the blog as well. TypePad seems to fit our needs.
Are any other individuals at MBHB involved with the blog, e.g., marketing or IT?
Megan McKeon, our firm’s Marketing Director, has been helpful with getting us in touch with vendors for mugs and other give-aways, and we link the blog to the firm’s website.
As one of the original group of MBHB attorneys, what advice do you have for an attorney who wants to open up his/her own firm?
Think about it long and hard. The grass always looks greener, and while things have turned out pretty well for us, it was tough at the beginning – like walking across a minefield carrying a dozen eggs on a plate. You have to do all the transitioning, including getting all the systems up to speed, etc., all the while being sure the client’s interests are protected. Even the logistics can be a problem – I received a file late on a Friday night that had a deadline in Asia on Monday morning = Sunday night here. If I hadn’t gone back to check what had come over in the late shipment, there could have been a problem. So if you do want to head out on your own, prepare, prepare, prepare.
Do you think being part of a team helped during those first few entrepreneurial years?
Well, we all pulled together (we still do) and it was fun in the days where we could all fit around a conference table. But I think we have tried to keep that entrepreneurial spirit alive.
You have a great list of resources on your site, especially other patent sites. What websites do you visit on a daily basis?
You now teach a course on Biotechnology Patent law at DePaul University College of Law. Did you approach the school with your course or how did your adjunct professorship begin?
Professor Kwall visited us when we had just started the firm, and at the time I was helping John McDonnell teach a course at John Marshall. So it was a natural extension of that experience.
How does teaching biotechnology patent law complement your practice?
As with the blog, it keeps you on your toes – especially these days, there are a lot of cases (and not just biotech cases) that affect how and what I teach. It also makes you understand the issues and the cases, and since my class is very interactive I need to be able to answer (and ask) interesting questions.
Finally, if you had to do it all again, would you become a lawyer?
Like most people, I think it would be nice to have a trust fund. But lawyering is fun and I am glad I did it.
Thank you very much, Kevin!
Kevin Noonan, Ph.D., practices patent law at McDonnell Boehnen Hulbert & Berghoff LLP where he focuses on clients in the biotechnology, chemical, and pharmaceutical industries. Kevin co-founded Patent Docs, a biotech and pharma bio news blog. You can follow the Patent Docs team on Twitter.