preLaw Magazine - Winter 2008 - (Page 32) specialties CAREER PROFILE photo by peter barreras JASON NICKLA, A PATENT ATTORNEY, encourages science-minded students and professionals to give intellectual property law a try. An inside scoop into the world of technology ith years of experience working as a laboratory researcher, Jason Nickla knew his passion was working in patent law. The importance of his work didn’t hit close to home until he began working on a patent application involving a new hormone used in in-vitro fertilization. Not only did it illustrate to Nickla how far science had come, but also because the same hormone was being used during he and his wife’s quest to have children. “It really goes to helping a lot of people and families,” Nickla said. With a degree in Biology, Nickla knew he wanted to get the chance to work with cutting-edge inventions in various forms of technology before he even attended law school. After graduating from Creighton University School of Law in 2005 and obtaining his LL.M. in International Intellectual Property Law, Nickla began working as a Patent Attorney at the Beem Patent Law Firm in Chicago. Intellectual property law includes not only patent prosecution and litigation, but copyrights and trademarks, and trade secrets. While patent litigation involves 32 preLaw W the resolution of patent infringement claims and other lawsuits, patent prosecution entails taking an invention from its initial inception through the patent approval process. For patent attorneys, the most rewarding part of the job is keeping track of new technology and science, and working alongside the inventors. “You feel like you have an inside scoop on what’s going on in technology,” Nickla said. Just a few years ago, Shiv Naimpally worked on a project that earned him much esteem from his nephew — a patent application for the processor used in the PlayStation 3 console. With a 17-year career in computer science and software design, Naimpally wanted to become a patent agent and continue working internally at Nortel Networks in Texas. He graduated from Oklahoma City University School of Law in 2006. “I got tired of sitting in a cubicle and wanted to work more with people,” he said. “When you’re an engineer, you usually work on one project at a time. I get to find some new, really cool things every couple of days.” Now as a patent associate at Toler Schaffer in Austin, Naimpally prepares patent applications, files responses to office actions received from the U.S. Patent and Trademark Office, and drafts opinion letters on possible infringement claims. Nickla encourages science-minded students and professionals to give intellectual property law a try. The field is rife with opportunity, he said. “It isn’t for people who don’t like to interact with others,” Nickla said. Naimpally said plenty of patent litigation attorneys practice successfully without a technical background. Plus, intellectual property encompasses more than just patents — copyrights, trademarks, and trade secrets are all areas that require more legal, less technical training. A big part of the patent attorney’s job is to describe legal and technical concepts to others in a way that they can understand even without prior knowledge or experience. One of the most challenging parts of the job is when an examiner finds prior art — an existing patent on something that’s really close to the client’s invention, Naimpally said. “You have to look closely and find out what is the novelty in our invention and highlight those qualities to the examiner,” he said. Because Naimpally’s firm practices patent law globally, he often prosecutes patent applications in other countries — communicating with foreign associates, responding to different objections by international patent offices, and keeping track of annuity payments to maintain existing foreign patents. In such a specialized field as intellectual property law, networking is key, said Naimpally, adding he was hired in his current position after he visited his law school career office and was referred to an alumnus working in the field who alerted him to the opening. Naimpally stayed involved by serving as President of OCU’s Intellectual Property Law Student Association and National Liaison to the ABA Section of Science and Technology.
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