Law firms on hunt for patent attorneys

The Baltimore Sun

Robert A. Spar, a partner at Saul Ewing in Baltimore, is committed to helping his law firm increase its stable of patent attorneys.

That means invoking headhunters, placing ads in Philadelphia and Washington publications and sending a five-member team to scout at Bio, an international trade convention recently held in Boston.

He'd like to find enough specialized attorneys to nearly double the firm's life science practice, which now employs 35.

Good luck.

Competition is fierce, because legal offices across the country are trying to do precisely the same thing.

"It's really hard to find patent lawyers in the Baltimore area," Spar said. "We're constantly looking. Whenever we can find a good, qualified person, we're going to bring them in."

There are multiple reasons for the high demand and scant supply of attorneys schooled in the intricacies of patent law, and they are rooted in an explosion in the number of applications and patents issued over two decades.

Applications have more than tripled in that time, to more than 440,000 last year, with about 184,000 patents being issued, according to the U.S. Patent and Trademark Office.

Meanwhile, about 3 percent of the nation's 1.1 million active lawyers specialize in the demanding field, which requires scientific or technical expertise in addition to a law degree. Patent lawyers also must pass a specialized test on top of the regular bar exam. Maryland has about 230 intellectual property lawyers, according to the state bar association.

As a result, lawyers with such training are a precious commodity in a world where intellectual property has never been more important and can mean a company's survival.

"It's high stakes," said San Francisco-based recruiter Avis Caravello.

"The IP rights of a company really are the heart and soul of a company. A loss could be astronomical. The level of talent that's required to protect those rights is very high," Caravello said.

But the demand for patent lawyers vastly outweighs the supply, she said.

"If I had the right ones, I could place as many as there were hours in the day," said Caravello, a lawyer and principal at the search consultant firm that bears her name. "When I get a candidate like that, it really is 'Where do you want to work?'"

IP attorney Robert S. Collins, 38, had no trouble finding a job in Baltimore when he and his attorney wife wanted to move back east after a few years in Chicago. There he worked at two firms, ending up at a technology boutique where he negotiated technology transactions, including such things as outsourcing deals. He also worked with early-stage companies seeking to develop, commercialize and protect technology and intellectual property.

An encounter at a holiday party in Chicago prompted his initial inquiry to Whiteford, Taylor & Preston, where the Bethesda native is now a partner.

"I just called them, and they were looking for technology lawyers," he said. "They had a sophisticated technology program. They wanted to build on the early-stage entrepreneurial part of it."

Conversations led to an interview. "By the end of the interview, they could see how good the fit was and how important it was to their strategic plan," Collins said. "They immediately went into selling mode."

Saul Ewing is looking for IP lawyers to meet the growing demand it anticipates in Baltimore, which is slated to have three biotechnology parks operating within about a five-mile radius, Spar noted.

"In three years, we view that this will be the hot industry in Baltimore," he said. "We're really gearing up to be the big player."

One of those it wooed was Tanya D. Berlage, who, as general counsel at a publicly traded pharmaceutical company, had experience in licensing deals.

"We had to sell her on the fact that we had the best life science practice," Spar said.

Hired a few months ago, Berlage, 40, said she started out as a biology major at Smith College but switched to government, going on to earn her law degree from Washington and Lee University in 1994.

First client

She still loved science and technology, and her first client in 1994 was a medical device company that was No. 1 in its area primarily because it had the most advanced technology and spent time and money developing and protecting that intellectual property, she said. Working with that company led to work with biotech, pharmaceutical and other life sciences companies.

Berlage got involved in IP because it is the core of her clients' businesses - intangibles that constitute what they discover, develop, protect, acquire and sell, she said. "Figuring out how to transfer knowledge to someone who wants to buy it is very different from handling the transfer of a deed or a fleet of cars," she said. "It's hard to learn. It's definitely a specialty."

Paychecks reflect the high value placed on these specialized lawyers. An IP partner at a top firm typically is hired at $700,000 or $800,000, even $1 million a year, with the most meager book of business - the work that comes with them, Caravello said. First-year associates at large firms can expect a 10 percent to 15 percent premium over base pay of about $160,000.

Firms opening new IP offices typically are given war chests by their home offices so they can sweeten offers with signing bonuses or whatever it might take, Caravello said.

"When you have a really good candidate who everyone wants, you don't want to lose out over a couple hundred thousand dollars," she said.

Law schools also are racing to meet demand.

Locally, the University of Maryland and University of Baltimore law schools have hired experienced intellectual property attorneys to design and teach courses on the topic.

"We like students to have jobs when they get out," said Max S. Oppenheimer, a professor of law at the University of Baltimore, who was hired to focus on that niche. "What better job could you have? You get to play with cool toys. You get paid a lot of money, and the client walks away happy, because you've given them something of value."

For the past two years, the university has made a point to talk to science majors about possible careers in IP law rather than exclusively talking to pre-law candidates, he said.

Before Lawrence M. Sung arrived at the University of Maryland, the school offered three or four IP classes. Sung, a law school professor and director of the intellectual property law program with a doctorate in microbiology, said 20 IP classes and a clinical program are now offered.

"It used to be a patent attorney was just a scientist or an engineer who happened to have a law degree," he said.

Today, law firms are looking for first-rate lawyers who understand the science, he said.

When Vicki Margolis, a partner and co-chair of the IP litigation practice group for Venable LLP, graduated from law school in 1989, few law schools had patent coursework, she said.

"Now, there are very savvy attorneys coming out saying they're going to get a degree in science or engineering, become a member of the patent bar and be a good trial lawyer," she said.

Venable's Washington office includes Ph.D.s in such areas as chemistry, electrical engineering, pharmacology and molecular biology, she said. Margolis, who splits her time between the firm's Baltimore and Washington offices, has an accounting degree.

"Take a pharmaceutical client, and I need to talk to them about one of their drugs," she said. "So on the legal team is someone who speaks their language - that's an incredible advantage."

At Baker & Daniels LLP in Washington, Ron Kamis gets an e-mail or phone call on average once a week from recruiters or others about potential jobs.

"I don't even return them," said Kamis, 37, who is a partner and patent attorney at the firm. "I'm pretty happy where I am."

Kamis was pre-med at Duke University but grew disillusioned after shadowing doctors and shifted to law. The summer of his first year of law school, Kamis worked in a biotech patent group and fell in love with that practice.

Shortly after graduating from George Washington University Law School, he returned to school and earned a master's degree in biotechnology - a program aimed at scientists and others interested in working in the business - from the Johns Hopkins University four years later.

It was an investment that's paid off, Kamis said.

"I found that I'm comfortable with any technology that comes to my desk, and I can't say that that was the case before," he said.

Demand to continue

James E. Malackowski, chief executive of Ocean Tomo LLC, an intellectual property investment bank, said he believes that the demand for IP lawyers will continue, reflecting a shift in the nation's economic base.

"I don't think in the next five years you're going to see any slowing," he said. "We really have gone through an intellectual revolution much like the industrial revolution of 100 years ago. IP is not a flash in the pan like some would say the hopeful business models of the dot-com era were."

june.arney@baltsun.com

Copyright © 2019, The Baltimore Sun, a Baltimore Sun Media Group publication | Place an Ad
32°