FTG 0002 - Using a STEM Degree in Law: Patent Attorney John Hemmer '03


Guest Bio:

In this episode, we hear from John Hemmer ‘03 Eng. John is a patent attorney and partner at Morgan Lewis where he helps clients protect and leverage their most important and innovative inventions and designs. John also regularly prepares and negotiates technology agreements, counsels clients on matters relating to litigation and patent challenges, and works with clients on venture capital financing, merger and acquisition agreements, and IP due diligence. John earned a BS in Mechanical Engineering magna cum laude and with Honors from Penn State’s College of Engineering in 2003. He earned his law degree from Temple University.

Episode Specifics:

 John shares advice and insight on:

• Pursing a “non-traditional” role as an engineering graduate – and the value a STEM degree offers in law

• The law school internship experience and navigating different sized firms

• A day in the life of a patent attorney protecting the IP of solopreneurs and large firms

• The importance of staying involved in your community even with a busy schedule


Schreyer Honors College Links:






Upcoming Events 

Scholars – Need Assistance? Book an Appointment! 

Alumni – Learn Why and How to Volunteer 

Make a Gift to Benefit Schreyer Scholars 

Join the Penn State Alumni Association 


Credits & Notes:

This content is available in text form here.  

This show is hosted, produced, and edited by Sean Goheen ‘11 Lib (Schreyer). 

The artwork was created by Tom Harrington, the College’s Web Developer. 

The sound effect is “Chinese Gong,” accessed via SoundBible used under Creative Commons License. 

The theme music is “Conquest” by Geovane Bruno, accessed via Pixabay and us ed under Creative Commons License.

Greeting scholars and welcome to following the Gong, a podcast of the Shire Honors College at Penn State. Following the Gong takes you inside conversations with our scholar alumni to hear their story so you can gain career in life advice and expanned your professional network. You can hear the true bread of how scholar alumni have gone on to shape the world after they rind the gone and graduated with honors, and learn from their experiences so you can use their insights in your own journey. This show is proudly sponsored by the Scholar Alumni Society, the constituent group of the Penn State Alumni Association. I'm your host, Shawan Goheen, class of two thousand and eleven, and college staff member. If this is your first time joining us, welcome. If you're a regular listener, welcome back. In this episode, we hear from John Hemmer, class of two thousand and three. John is a patent attorney and partner at Morgan Lewis, where he helps clients protect and leverage the most important and innovative inventions and designs. John also regularly prepares and negotiates technology agreements counsel's clients on matters relating to litigation and patent challenges and works with clients on venture capital financing, merger and acquisition agreements and Ip due diligence. John earned a BS and mechanical engineering, magnet cum loud and with honors, from Penn State's college engineering in two thousand and three here, and his law degree from Temple University. John Shares advice and insight in this episode on pursuing a, quote unquote, non traditional role as an engineering graduate and the value of a stem degree in law, the law school, internship experience and navigating different size firms, a day in the life of a patent attorney, protecting the IP of solar preneers and large firms alike, and the importance of staying involved in your community, even with a busy schedule. And with that, let's dive into our conversation with John Hammer. Welcome to the show, John. Thank you for joining me today. It's straight to have you on. Really excited to dive into a conversation about your career and your journey. But you know, let's chick things off right away with what you're working on right now. If you can tell us a little bit about some of the projects that that you're that you're working on. Sure, thanks, Shan. Thanks for having me. So I'm a pad attorney. I work at Morgan Lewis, which is international law firm. I have a background of mechanical engineering, so I tend to get a lot of devices, from MED devices to military equipment, sporting equipment. Today I worked on a face mask for fanatics, a harness for dog and an accessory for phone. So it really varies every day, which is what I really like about my job. Every day it's by definition it something new, or should be. It's going to be patentable. So it's exciting technology that I work on and it's a variety of things that I get to see it. So were you able to tell us a little bit about the face mask or is there, you know, maybe some attorney client confidentiality involved in that? You're not yet, because we're just filing it. Right after this episode will be filing that applications. I can't talk about that one specifically, but what I've worked on that's interesting. In the past I've worked on the design for Google home and a lot of the Google products that you see. The industrial design of helped Google protect that, which has been really cool to work on. Another one of my large clients is Gentex Corporation there in northeast Pennsylvania and they make all the helmets for special OPS and Big Army as well, and they have a lot of new and exciting attachments for helmets and their their business is to go after the special opps contracts and I have high performance, really involved helmets for attaching my vision goggles communication systems, and so I helped protect the interesting industrial designs as well as the function and utility of their new helmet systems. So that's neat to see because they'll be they'll be featured in video games and movies and it's neat to see some of the products that I've worked one show up in advertisements for movies, for example, and to see them in the news on our troops. So that's exciting to see how things that I'm working on make their way either the battlefield or to, you know, the store fronts and to see them consumers. I work on in souls for worth away and they supply in souls to most, I think it's ninety percent of...

...the shoe companies out there and it's cool to work on these products and see him out there in the marketplace. So I find it interesting. I never would have thought of that that. You know, you have the main purpose for product like that, with the helmet for example, but it's also incorporated into video game designs. Imagine something like call of duty perhaps, or in movies, and obviously there's many movies that feature military elements to their plots. How do you go about that process of identifying all the different potential options for a product that even maybe the developer might not know when they're they're filing their patents? How like do you work with them on that? You mean as far as where they're used and how they how they're used downstream? Yeah, yeah, I think that would be really interesting to hear about that. Those secondary parts of the the applications that maybe aren't the primary objective but still are worth that that copywriter or patent protection. Yeah, the primary objective is to protect it so that competitors don't don't knock them off or you take their contract. So that's the primary objective that I'm focused on. They come to me with these new exciting ideas. I'm making sure I'm protecting at least their commercial embodiment. I'll work with them to think creatively about how others might try to solve a similar problem. You know, they may considered five different solutions to solve a problem and settled on one, and so we want to make sure we we even protect the second through fifth versions. That way, for a competitor sees they're blocked from the patented commercial version, that they can't just simply design on the patent and do a even if it's a lesser, non ideal solution. We want to try to protect that as well, and so I really try. I work with the inventors. That's why it's helpful to have my mechanical engineering degree, because I've work with mechanical engineers electrical engineers that have created the product and to know what their thought processes, to know what they're talking about and to sort of back them through their inventive process and think of other ways. And sometimes I even help them identify new ways that they might not necessarily use but that they could potentially use in the future or that competitors could use and Chech. That the the it's cool to see me it show up in video games and movies. That is not as much of a concern for my client. They're happy to have it profile there. You know, the movie studio and the gaming companies want to make it look realistic and oftentimes we'll enter into agreements and out and our client is generally happy to help. Sometimes they might need help making prototypes, and so a lot of times it will just be copyright in the design and that they're allowing the movie studio video game to to use, and so that's not as complicated or involved. Sometimes it will be an agreement that they can simply use it but nothing more. They can't it can't create devative uses or do anything else with any prototypes. That's, like I said, it's not that's not as involved as the primary objective as making sure competitors don't don't use their designs. So you talked a little bit about how you're helping your clients problem solve. Is this the kind of problem that you wanted to work on when you were a kid? What? What kind of originally drew you into what you majored in in underground? Yeah, I don't know if being a pad attorney is my childhood dream. Sort of stumbled upon it. I don't know. Exactly a lot. Where along the line I found out about it. I know a high school classmate also became a patent ternity. He was an engineer Penn State. I think I learned of it through my partly during my thesis. We were talking to an attorney. I know the it was an option as I was looking at what else I could do with my engineering degree. I think I was drawn to engineering because I liked math and science and solving problems and I originally thought I wanted to be a biomedical engineer to develop artificial hearts and joints and I thought that was fascinating and so I applied to all and was sort of a new field. Biomedical Engineering at The Times was one nine ninety eight, nine hundred ninety nine when I was starting to think about college and I applied to all the schools on the east coast that had a biomedical engineering program and including Johns Hopkins, Boston University, northeastern, and didn't get any financial aid. My parents made just enough to disqualify me from financial aid and but they weren't...

...paying for my whole college. So I my dad gave me advice to why don't you just go to Penn State, get your general engineering classes and you can transfer if you decide that's still what you want to do, and so I reluctantly did that. I went to Penn State, which was at time my fallback. I think I was dissuaded from going there because I thought everyone from high school went to Penn State. I grew up in the poconos northeast Pennsylvania and you know, a good percentage of my my graduating class was was going to penn state and didn't really want to do that, but I thought that was a good advice that my dad gave and so I did it. And mechanical engineering is is the closest fit for biomedical engineering, at least the type of biomedical engineering that I was interested in. And you know, all the classes the first year are relatively the same. But I fell in love with Penn State and I fell in love with mechanical engineering and stayed and I applied for the Shires Honors College my my second year and found exactly what I was looking for. Smaller classes, really engaged classmates and professors and loved it and so I stayed with it. I didn't know exactly what I was coming to do. But I focused. I knew if I got good grades that would have the opportunity to do something with it, and so I really focused on getting the highest grades I could and enjoying what I was what I was studying, and I didn't know what I was going to do. And then eventually decided to take my to study for the patent bar and study for going to law school and took my lsats and did okay and just went with it. And you know that the amount that I knew about being a patent turney was pretty small looking in the hindsight, but it worked out. I love law school. It was fascinating and it's more logical in approach then I think a lot of people realize. There's a logic section on the l set for a reason. You know, it's a rule that you have to follow and apply to a set of facts. I think it lends itself to scientific thinking and engineering really, really well. I think people generally think, well, I'm I like to argue, I would get debates, I should be a lawyer, but you have that a logical argument to win win a debate and the reading an analysis and law school let itself really, really well to to an engineering background and my work ethic for managering background was a little bit different, I think, than some history majors and Poysi major so I think it worked out really well. I actually started law school thinking, well, maybe I won't even be a patent turney I, maybe I'll be a criminal attorney, and so I clerked for a judge and then decided that was not the way to go. So I sort of stumbled around a little bit but then settle back on patent law as being the way way to go and hadn't looked back since then and it's been great. The variety, like I mentioned, is really interesting, working with engaged inventors and companies who are looking to protect you know, a lot of times lawyers work with clients who are in a problem and sort of regret having to get a patent, get a Turne to, you know, to solve that problem and view negatively about a pink attorneys. But I think it's a little bit different when you're trying to help protect something proactively. You know, I work on disputes as well and licensing and and other ask of due diligence and other aspects, but the the proactive protecting of inventions is really exciting and you know it's not in the market yet's not known. The inventors are are excited about the problem that they're solving and they're happy to work with you to protect it. And so it's been. It's been interesting. Yeah, imagine, if it like you probably feel pretty, you know, satisfied at the end of the day, like you're helping people create their or protect their creations, and then that's got to be a pretty strong feeling. But I do want to go back a little bit. You know, you talked about the difference in majors and I was political science and I was history and you know my thesis was maybe a little bit different than you're what yours might have been, and I'd love to hear what your topic was that you that you wrote about. Yeah, sure, yeah, no one knock on history majors. For sure, we certainly be more or history majors. It was just the I think the the homework and the level of outside of the classroom work that I had to do in Undergrad. I think was was helpful for law school. But my thesis was working on a micro...

...engine and it was partially funded by a grant from the Navy, who were really motivated to try to find an alternative battery solution because, and it's kind of interesting that I work a lot on on military equipment now, but the the push, and I guess the push is still there, is to figure out how to store all this energy, because batteries don't really get any smaller. But the troops were getting more and more technology that they had to carry carry around, whether it be lights, night vision goggles, monitoring equipment, communication equipment, and all that had to be powered and so they were carrying a lot of weight in batteries and so they were trying to figure out more efficient, smaller batteries or energy sources that that troops could wear. You know, they they've experimented with self generating sources, where was in your the soldiers shoe that every footstep would generate some electricity and energy. But there's still sort of a need to store all this energy. And so we were working on this microcombustion engine and there's four of us working on it on various aspects, and it was a mini combustion engine that would heat up this piezoelectric material that was inside this engine and if you think of it, the peze electric material is a ceramic that you essentially squeeze out of a charge out of it. Think your grill igniter. When you press that igniter switch, you're squeezing a ceramic material to create a charge and we were sort of doing the opposite where we were putting energy heating and cooling this pezeo electric material to store the electricity in it, and so I was focused on researching and analyzing the specific pezeo electric materials to convert the energy in this micro engine. We didn't finish it my my year. I think it was completed the next year. I don't think it ever was commercialized and what it ultimately happened of it, but that was that was the focus of what what my research and thesis was on. You know, it's kind of cool that you were part of a bigger team working on it. I know, coming from liberal arts, it's typically a this is my interest, this is laser focused. So that's great to hear that there are kind of options for even some level of collaboration in the thesis process if it's the right project, and I think that's, you know, a special part of the honors college are these opportunities like that. Yeah, it was, it was, it was great. They would like. I said, there was four of us and so and then we each had a very discrete part. Someone was working on the combustion aspect, I was working on the energy conversion and aspects and it was working on the storage aspect. But we had to make all those pieces fit together and make our theses sort of work together, and so I knew them. I knew my my colleagues are classmates really well because our mechanical engineering group, I think there were only twenty something of us for my year, and so we had all this sort of same classes together. We knew each other really well and thankfully we worked together nicely on this project. We got to travel together. I think we presented our poster down in New Orleans and that was really the first time I had traveled for something other than vacation, and so it was it was exciting to go do that and to have that experience. Yeah, one of my roommates was also in tryer and he was an engineering but even he had, you know, opportunity to relax and and find some fun and engagement outside of, you know, the thesis and classes. I know, you've said you were a part of some interesting clubs and opportunities outside of all of that. If you can tell tell me a little bit about those things that you were involved in. Yeah, that was another thing that I really loved about Penn State in the decided against transferring it was that it was really good for what I wanted to do. My like my classmates and my professors were really really engaged and intelligent and and motivated me to do better. And then I could walk away and all my classmates, I mean all my roommates and friends, were not engineers and so I got to sort of have as other side where, you know, we got to hang out and step away from engineering a little bit. You know, if I had gone to Carnegie Mellon or or, you know, Johns Hopkins maybe, or another engineering school, I don't...

...know if I would have had that balance like I found at Penn State. And one of the clubs I was involved with was the Formula One racing team, which was engineering focus, but it was also involved with club sports at a club soccer for a little bit, intramural soccer and football and yeah, just enjoyed, you know, being able to have friends that were more engineers. It was was it was fun. It was a good balance, like, like I said. So I going back to something you said a moment ago and it's straight to hear that. You know you were able to find some non engineering opportunities. I think that's great to have that, that balance. You said you went to New Orleans and I actually went to New Orleans on a trip as well for very different for a class. So it sounds like you not have studied abroad. But if you did, or you wanted to, where, where did you go or where would you have gone? Yeah, I did not and that was my biggest regret and at the time I think it wasn't very popular option. I think you could make it work by taking a lot of your electives and non engineering classes, and I think it's started to change. Probably when I graduated, I think they were starting to change and have the ability to doing doing some engineering related study abroad. I know I think there were some opportunities in Germany, for example, and it they sort of opened it up a little bit more and I was sort of set on well, I should graduate in four years. I don't have time for that. It's not really it doesn't really fit I couldn't really justify extending my education to study abroad, but that is one of my biggest regrets, is not studying abroad. I mean I think travel and experiencing other cultures, no matter what you're doing, is extremely important and if I were to go back and do it again, I would study abroad. Yeah, absolutely, and that's a huge part of why building a global perspective is a part of our mission statement, because that is truly a transformative experience, regardless of what discipline you're in. I think the two things that I would have done with was study abroad and take time off, whether it was before college or after college, because it's tough to do that again in your career. And you could have been something productive like Peace Corps or not. I could been something a little bit more selfish, like doing it through like but either way I think it would have been and I highly recommend doing either of those things, or just one of them if possible, but getting a broader perspective and realizing now's the time to take if you're going to take time off, now is the time to do it, because once your career gets going, it's tough to pause and take some time off. It sort of just keep going after after school, and so I would highly recommend studying abroad and or taking time off before or after college. That is sage wisdom. Once your life gets going, especially for Shire scholars who, when you graduate in her often go on to do very, very big things and have successful careers, it is very hard to just step off that treadmill for even a moment. Absolutely so I don't think we've talked. You've talked a little bit about law school, but I don't think you've mentioned where you went. So maybe you could, especially for you know, any stend majors that may listen to this at some point, how you went about selecting the schools that you applied to and ultimately the one that you attended. What's set that that institution apart for you? Yeah, sure, so I went to Temple University in Philadelphia and when I was applying for a law school I sort of knew where I foul based on my house at score. You try to get into the best school you can. You know, I think particularly for law it's important where you go. If I sort of follows you the rest of your career and it's it's something you know you're talking about it now, fifteen years later, and especially for your first job. But the advice I got. I applied to a lot of schools where I thought they had a strong intellectually property program because that's what I thought I wanted to do, mostly on the east coast. But then, once I figured out where I got into it came I blow it down to the University of Florida and Temple University based on the ranking of the school and what I thought about the intellectual intellectual property program and I had a family friend who was, I think at a time, a student at University of Florida and was thinking about intellectual property, and so he gave me a tour and I was I was I was really excited to go there. And then ultimately I got advice from I don't even know who it was. I might even been my thesis advisor. No, it was a lawyer that I...

...talked to, saying where you go to law school is typically where you're going to end up and if not, it's where your network base is going to be. Your classmates are probably going to stay in the area and they're going to get jobs where you can network and it's easier to interview, especially at school, at Temple University, that has a better reputation locally than nationally. It makes sense to go to law school where you want to end up, and so I didn't picture myself and Florida long term and I thought Philadelphia was the better fit, and so I went with temple and it wasn't in the greatest area of Philadelphia, but it was a tremendous school experience for me. My professors were top notch. I was extremely challenged, though I thought, I mentioned that I thought I was prepared for my engineering studies. It was really intellectually challenging, eye opening, diverse set of classmates and professors and diverse opinions and diverse backgrounds and it was really fascinating and really interesting and I really enjoyed my my law school experience sounds like it was a very well thought out which would expect nothing less from a shreier scholar. But obviously law schools not the entire piece. is in the class room. There's a huge element of going out in the summers and getting internships and clerking in all of these other pre professional opportunities. So what did you do in more importantly, how did you go about securing those opportunities. Yeah, so it's very important for lawyers, the summer job and sort of it's sort of a set procedure of things that happen. And my undergraduate experience I I shied away from Inter I works very, very hard to make sure I got the highest grades possible during school year and then I went home and I taught sailing lessons during the summer and I love doing that so much. It was the break that I needed and I kept doing it every year and I don't know if I regret but I I think I should have gotten probably an internship, and so I I made sure that I wasn't going to repeat that mistake again and and just just practically to know whether I was going to like this job. I think. I think once I started to realize I wasn't going to be an engineer, made it easier to go home and teach sailing lessons during the summer rout than get some internship at some engineering firm. But when I went to law school my first summer, I was I mentioned before, I was not even sure I wanted to do an actual property necessarily, and I was wide open to doing anything and so I took a job with a criminal common please judge in Philadelphia as a clerk and it was interesting and I like writing the briefs, but I didn't love Criminal Law and I realized my strengths were better suited to be an electual property attorney. And so my second summer I tried. You apply for your second summer job you're after your first year and that's why your first year grades and Law School or so important and and that's the most stressful year and everyone's sort of based on a curve and where your rank in your class, and so it gets very, very competitive. That I fell just short of the on campus recruiting for the big law firms for my second summer and I was pretty disheartened by that. It was the first time I think I'd ever been not the top of the class. And so I missed the big law summer important second summer and it really lit a fire under me to do better and my law school grades and to get a job. And I was laser focused at this point and so I wrote, I must have written a hundred and fifty letters to all the small firms. You know, if I missed the big firm opportunity and the window for getting that that summer associate job. I was dead set on getting a job with a mid or small firm and I wrote a hundred fifty letters to all the all practitioners in the Philadelphia area and I offered to work for free and I got a response from an attorney at a small firm. Was a boutique law firm in springhouse and was about ten attorneys and he invited me in for an interview. He said I was intrigued by your letter and and offer to work for free and wanted to talk to me and he offered me a job. And so I started working there my second summer and it was a great experience because they had work that...

...had to be done and I got to work on patent applications and some interesting cases and they had some surprisingly big clients for a small firm. Slinky was one of their clients. For example, it was I don't know what the parent was, was Hasboro or but I had to write some season assist letters and I think eminem at the time came out with a song using a slinky and actually had to write to eminem about the inappropriate use of a slinky and it was a it was a great summer and carried it over to actually a part time job my third year in law school and bump most of my classes tonight, essentially becoming a night student and to work more to make money and get experience. And as graduation was approaching my third year, they were dragging their feet with an offer and I say, look, I'm going to graduate soon, I need to know what I'm doing, and they said they couldn't extend one just yet but they would help to and but so the meantime I went out and looked and I actually got a job at a big international firm, a can gump, and it was extremely lucky to get that interview and got an offer and I had to take it. And so though I had a great experience at that small firm, I took a job at this this big law firm. They had an immediate need and so I worked through that third summer, I guess it's just before graduation, so studying for the bar, and it was extremely stressful and knowing that all my classmates were off of the summer studying for the bar and I was working my first full time job. So that was extremely stressful. START, but it worked out great and I had some good experience there that I jumped to Morgan Lewis Twelve years ago. The office that I was working at it a can Gouf spot off into a small boutique. Again they I realized I liked working at a big firm with a lot of the different practices that you could interact with, and so I lateraled over to Morgan Lewis Twelve years ago. So it sounds like something I didn't know about law practice is these ideas of the really large kind of mega firms, the skyscrapers and Philly and DC New York, but then you have these smaller firms. Could you maybe provide some insight on not saying one is better than the other, but what are some of the differences or the perks of working in one or the other for any you know, our scholars who are thinking you're maybe starting law school next year or thinking about it. Yeah, I think the benefits of a big firm are the generally you have bigger clients, and you I mean well, I guess just to say it is the pays better at a big, big ball firm generally, and then you have bigger clients you have. You're not a PSILO. Generally you have a lot of different practice areas. At bigger national firm you have basically somebody who specializes in everything that you don't ever have to refer somebody else. If your client has a need, there's somebody in the firm who can help out. So that's that's nice to be able to have a full service practice, not only for my experience but for my clients, that I can sort of loop in colleagues to weigh in on things and not just be like, okay, I only file patent applications, that's that's all I can do here. It's okay, this patent application might affect you know how you structure your company, how you how you will go after a licensing, deal, your enforcement, and so you get to have a sort of a broader scope and you're practicing. I think the benefits of Boutique are if you are interested in only writ into patent applications. You know some engineers don't necessarily want to get out there in a broader way and they just want to write patent applications or, you know, they want to have a better life, work life balance. Maybe they're hours are a little less demanding at a smaller firm. But I think generally it's good to strive to work for a big and then I'll give you the exibility to go in house or at a smaller firm from later. Or you know what I did, is you started a small firm, you get that experience and then new lateral to to a bigger firm. So that's not as common and so I think you have a greater flexibility if you go from big down, but you can also do the reverse. That is that is very great insight. I want to pivot a little bit in our conversation here. I know you reference not studying abroad, but was there any kind of other mistake that you think you've made or some other learning opportunity and what you pulled from that experience that you could could chair to a scholar who may be facing a similar circumstance? Yeah, I mean, I guess the mistake that really had an interesting and broad implications was a bad grade that I got...

...my first year in law school my property class. I got to see, and I mentioned that your first year in law school is extremely important and I think it it really changed the trajectory of my career. I didn't have all straight A's other than that, but it was certainly one that brought down my my grade and probably pulled me from the on campus interview process for these big law firms, and I think that was a huge and yeah, I got there eventually, like I said, because I worked at a small firm and got how to had the right opportunity to join a big firm. But at that wasn't easy to do and it created a lot of stress and it made it made a lot of different things difficult after getting that, that that lower grade, but it also lit a fire under me. So and I think I went to the professor afterwards and and said what that I do wrong, and they point out clearly where I went wrong. And it's hard because you get you work all semester long and it's one test at the end of the semester and that's your grade, which is very different from any other class that I had, where you have homework assignments, you have multiple quizzes and tests after every section and so you sort of know how you're trending well in advance of the end, whereas law school you studying and participating class all semester long and then just one exam determined your grade. Makes for extremely stressful test environment and then you can make big mistake like I did. Luckily I was able to pivot and to get where I wanted to eventually, but it did, it did make a big difference in my my career sort of path. I like that. You, you know, you went and talked to the professor to be like, Hey, how can I, how can I, you know, tape from this? What did I when I go wrong? What can I, you know, learn from in the future? I think that's a great strategy, right. Yeah, I mean the the exam is anonymous, so don't know who you are and you participated all semester long. So the professor said he was shocked, but then he clearly pointed out the mistakes that I made and I appreciate it, the mistakes that had made and I try my best not to make them again and I, you know, I really pulled my grades up high, which I think allowed me to eventually get that interview for that big firm job that came up before graduation. But yeah, it was certainly an eye opening experience for me that, you know, you slip and you can fall and so, even though I was trying hard, even though I was doing what I thought I needed to do, I messed up, and that happens and I think it shows you you got to just keep on your toes and keep driving. You know, you're my clients don't give me grades, but they can, they can walk, they can, you know either. Generally they don't tell you if they're disappointed, and so you have to be all your toes all the time and if not, you could, you could lose them. So I think it's thinking about that. Even even now, fifteen years later or seventeen years later, is important to think you can, you can screw up and it can have a big consequence, and so I think, you know, always, always keeping that in mind. This is helpful. Yeah, absolutely, you know, putting your best effort into everything you do, no matter how small. Right, exactly? Yeah, well, yes, and certainly the big ones. Right. So, you know, be being prepared, doing your due diligence, being present is really is really helpful. So you made reference in this in this scenario, to kind of how it translates to working with clients. You've talked about filing patents, meeting with clients, doing all these things. Could you walk as very briefly through a day in the life of what it's like to be a patent attorney? Yeah, sure, I mean it varies every day, like I assume most people's days vary, but I have a steady stream of of responses from the Patent Office that come back. So the patting process is a very long process. It takes generally. You can you can expedite things, but generally it takes two to three years to get patent application. And so something you filed two years ago will come back and the patent office will say it's not patentable for x, Y Z, and so it will be reviewing those reports and those those actions that come from the patent office and I work on matters that we file throughout the world, and so they'll come in from our foreign associates throughout the world and I get quite a few emails. I get a couple hundred emails every day, and so it's sort of triaging some of that and, you know, turning out how important the...

...product is. Like I might know my client is itching to get a patent granted on an important product and so I might say, okay, look, this came in this is what we need to react to and report that out to them. Others I might just note the date and make sure I get to it shortly. And so it's a lot of the triage of different things I need to work on. And then it's incoming new filing. So clients will contact me say hey, look, I'm presenting at a conference tomorrow. We we have this new idea we've been kicking around, but want to get this filed provisionally so that we're we're protecting our invention, and so I'll quick work with them to get something on file. They'll be longer term projects where we maybe we already filed that quick provisional filing or they've they've had a longer lead time to think about a more strategic filing. I'll be scheduling interviews with the inventors and with the business people to think about how they want to protect and and I'll be dealing with the patent office, and so I might have an interview scheduled with an examiner who's reviewing the patent application, who's rejecting it. I might schedule a call with them to walk them through the background of the invention, why it's different and how we can come to some agreement about the claim scope that we're going after. I'll have colleagues that will reach out to me, you know, they're working on a new litigation and they need me to do a read of the of the technology. They might not have the background that I do and so they might reach out to me and say, Hey, look, we're working on this medical device. You know, can you help us analyze these claims that are being asserted against our client? And so I may work with them. That's my general day. They're you know, obviously there are other things that I that I work on, but that's that will fill up my day pretty quickly. Yeah, that that sounds like it and I know I've emailed you and you're usually pretty quick on response. sough. That's wild hearing about that many emails in a single day. Yeah, I live along my inbox and I try to be responsive because, like I said, you know, clients have a lot of urgent needs and I joke with my wife that we that we she's a dentist and I have more emergencies than she does. These patent emergencies come up, but clients oftentime need need quick advice because you know, either a deal is going through. You know, they're closing tomorrow, but they're worried about this third party patent. Can I get a read on it? Or you know, like I said, there's a disclosure that's playing tomorrow, or our product that's launching has been leaked. We need to quickly file a patent application on it. And so there's a surprising number of fires that come up throughout the day and so I need to be able to to react and respond and triage pretty quickly. I cannot even imagine that. Yeah, but it's exciting right. So it's good. I mean, I do wish I spend a little less time on emails, but you know, that's that's the way I think all of us probably, though. Absolutely, I think it sounds like a key to you on your toes. So I have to wonder. You know, part of our mission statement is treating opportunities for leadership and CIFIC engagement. So and you mentioned you know, you taught sailing in your youth. How do you unwind? How do you find some balance in your life that is not work? Yeah, I have two little kids now and so that's sort of my balance and that's my downtime. So to speak. Now and you know, going on hikes and biking with them and learning how to bike ride and and swim and and so that's been extremely fun. I used to be a big rock climber. I do that less now, especially this past year with Covid, because the easy thing to do was to go to a gym to get practice. So that's sort of been on hold. I like to work out. I wake up in the morning and get my work out in before I start work and thankfully I put in a home gym just before covid hit, and so that's been a nice sort of escape for me. Obviously, you are currently one of our board members for the scholar Alumnie Society Board. So you're involved with the college. Is a volunteer, which we greatly appreciate. Are you involved in anything in your local community where you live? Yeah, involved with neighborhood bike works. We help youth in in Philadelphia through bike riding. I was on the board for a little while and I had to step back my kids were born, but I'm still a volunteer. Kids learn how to fix fix a bike and we teach them bike mechanic skills and they can actually earn credits by participating in the program and once they are enough credits they actually get to keep the bike that they've worked on and then they advance on to other programs. We have a ride program and then a race program that they can graduate into and then some learn how to become a mechanic and we place...

...them in different bike shops throughout the throughout the area. So that was one of my passions, is working with them as extremely rewarding organization. You know, I love biking and I love helping people and so I couldn't have been a better fit for me. I think my kids get a little bit older, I'll hopefully join the board again at some point, but I really enjoy working with them. Another is back on my feet on the advisory The Philadelphi Advisory Board for back of my feet and we help help people who are struggling with homelessness through running, which sounds sort of odd and seems like something that a lower priority item for people who are homeless is running, but we partner with local shelters and work programs and essentially provide a social network for people who are in these pro in struggling with homelessness and create a rapport with them. You know, we walk with some of the initial members, get them up to running and next thing you know, if they're running on a regular basis at five o'clock in the morning or thirty in the morning, then they can probably get a job and we help connect them with job resources and training. That's been a it's been a fun project as well. That is phenomenal. I actually did not know that prior to right now, and really some innovative ways of making an impact both from, you know, Structural Economic Perspective for these folks as well as the health and wellness side of it. It's a really cool blend. Yeah, it is. It's surprise, surprisingly, the fact of obviously covid put a, put a wriggle and things, but it was it was found in Philadelphia and now we're in it's nationwide organization. I think we're in thirteen different cities throughout the throughout the US, and it's been it's been really interesting to see how how effective it is. Absolutely so we're kind of coming towards the tail end of our chat here, so I'm going to have some rapid fire quick questions for you to answer as we wrap up. Is there anything that I should have asked you about but hasn't fit into any of the questions so far. I guess one thing I wanted to mention, given this is what I help do with the Shire Board, is mentoring and and part of the reason why I wanted to be involved with the organization is that it's really important to find mentors and to be a mentor and and the next step past that is to be an advocate for for somebody. And if you're lucky enough to have an advocate for you, you're really appreciate why it's so important. And I was really fortunate to have that in my current firm and I had two colleagues or two mentors that were advocates for me and help me succeed in my career and eventually become partner. And it's not just sort of giving you advice here and there, but it's really helping open doors and going proactively out of their way to introduce you to people, to to go to bat for you, to to advocate for you and your career, and it's amazing how helpful it is. And I've learned that through the volunteer programs that I've done too, for for abor bit bike works and back of my feet, that you can really really make a difference for somebody by by stepping in and not only giving some some advice here and there, but really making connections and helping opening doors and opportunities group for people. And so I really given Penn State is such a huge university and alumni base, I mean that provides a lot of opportunities to to both find that advocate and be an advocate for somebody else, and so I really would make a pitch for for looking both for finding your advocate and being an advocate for somebody. I wholeheartedly agree at that. I think that is a really strong both piece of advice sin and also a call to action for our Schallers, because one day they'll be in your shoes where they have that opportunity to open open doors. And so, you know, mentoring is one stage and I love that taking advocacy for that, for your Mente to the to the next level. Yeah, so one final time, you've dropped just nugget after nugget of wisdom throughout our conversation today. Do you have one last final piece of advice that you can leave off with? No, I don't. I guess you know, it's sort of tried to say is, you know, find something you like doing and and and do well at it. But you know, there's such smart people and shriers and I was and it's why I stayed to Penn State and why I really enjoyed my time there and I why I come back now to volunteer, to be a part. You know, make sure you stay in...

...touch with with your classmates. It's one thing I'd into a great job of doing. But you know, not only will help you in your career, I guess, depending on what you do as far as networking, but they're just you know, you enjoy them now. I assume most people do. So don't forget. I think it's easy to get really focused on what you're doing next and you know, obviously you stay in touch with your friends, but you know, don't forget to stay in touch with some of your class meet classmates and professors and and mentors, because it could be helpful later. I think that is very, very strong advice, especially given the technology that we have available today to to maintain those networks regardless of where you end up in the world. Yeah, I think it's easy. You think you're linked to them and are connected to them and Linkedin or social media, but you know more and more that's that's meaningless, I think, to a lot of people. So you know, reaching out and having a personal connection with somebody is is going to go a long way to maintaining that relationship. Absolutely, and I think so much of whatever industry you go into, whether it's law or anything else, relationships make a world of difference. Yeah, and even if you're not in the service industry like mine, where you have have clients that you need to develop, you know having that network is going to be important for at least your job opportunities, and so you know it's very likely that that that you're going to change jobs throughout your career, and so having a strong network, regardless of what you do, is going to be helpful. Absolutely, and so just want to wrap up with a really fun question. If you were a flavor of Burkie creamery ice cream, which would you be? And, most importantly, as a scholar a lum, explain why? Yeah, I think my first instinct was to have a really terrible flavor so that I could stay at Penn state as long as possible without being eaten. But I think I'd be cookies and cream because that's my my family's favorite. Well, I don't think there's a bad flavor. So I think your answer is this is a very good one. John. I really want to thank you for taking the time to talk with me today. I hope for those listening that they were able to, you know, really digest some of these wonderful pieces of advice. Thank you so much for hopping on the show today. Absolutely happy to do it. Thanks for having me. Thank you, scholars, for listening and learning with us today. We hope you will take something with you that will contribute to how you shape the world. This show probably supports the Shryre Honors College Emergency Fund, Benefiting Scholars experiencing unexpected financial hardship. You can make a difference at rays DOT PSU DOT Edu. Forward Slash Shreire. Please be sure to hit the relevance, subscribe, like or follow button on whichever platform you are engaging with us on today. You can follow the college on Facebook, twitter, instagram and Linkedin to say up to date on news, events and deadlines. If you have questions about the show or a scholar alum who'd like to join us as a guest here on following the gone. Please connect with me at scholar alumni at PSU DOT eat. You until next time. Please stay well and we are.

In-Stream Audio Search


Search across all episodes within this podcast

Episodes (31)