By Faith Keist. Faith Keist is a 1L at Sandra Day O’Connor Law School. She is the Marketing Co-ordinator for the Copyright Symposium within the McCarthy Institute. She has an interest in both government and public policy work and international human rights law. She is hoping to receive an internship for human rights work over the Summer, and government work in Arizona over the fall term. She is also hoping to attend the D.C. program within ASU and spend her spring of 2L and fall of 3L in D.C. Within Intellectual Property Law, she is specifically interested in copyright and trade secret laws. She is hoping to intertwine her interest in public policy and IP rights in her career in the future.
Will Prorok is a patent attorney and founder of Prorok Patents in the San Fransisco Bay Area. He and his colleague, Bart Sullivan, focus specifically on patent prosecution services for clients across various technical industries, ranging from semiconductors to yachting to medical devices. While Silicon Valley is a large home base for the intellectual property community, most of Mr. Prorok’s clients expand through the U.S.
Mr. Prorok attended Pepperdine University where he received his B.S. in Biology, focusing on cell biology and biochemistry, before attending law school at Tulane University in 2016. As patent attorney licensing requires a degree in “hard sciences” before entering law school, I ask Mr. Prorok if he foresaw this future for himself as a young undergrad entering his first four years.
“I did not know I wanted to be a patent attorney. Actually, being an attorney wasn’t really on my radar until my senior year. At that point, I started to think through a lot of things on what I want to do with my life and all that, and I decided to become an attorney. So I applied to a bunch of law schools because there was no pre-law or anything. I ended up going to Tulane in New Orleans, and that’s kind of where I got into patent law because I had the biology background.”
Are you still able to enjoy aspects of your undergrad passions when entering into the patent legal field?
“It’s fun to learn about new technologies and I mainly work now in semiconductors and computer-related industry. I haven’t really done anything with biology yet, but it’s been fun to learn the technology and to keep up with the patent law too.”
Having your practice located in San Fransisco, do most of your clients originate from this area as well?
“Yeah, none of my clients are from San Francisco. Closest client would be in Nevada, but I have clients in Washington, Illinois, and Arizona, as well as Nevada. And then, yeah, I get them from all over.
I had one from Florida too. I have my life counsel. He’s in San Francisco. Mentors and network is in San Francisco. That kind of flows out. So clients are not in the Bay Area, but the guidance mentors and that kind of thing are right here.”
Has it been a hard transition to handle clients remotely, and how has the IP community in San Fransisco contributed to your practice?
“People are pretty used to remote work, especially if you get a company or a startup, where they’re using engineers from all over already. So it’s not an issue for them… But where the personal connection has made people in person really handy is when you meet with other lawyers. That’s been great in San Francisco.
[Patent law] is pretty prominent in San Fransisco, in the Bay Area in general.
Even though a lot of companies have moved out, like some will go to Nevada for the taxes, the core, the financial people and the investors and the board members, they all live in the Bay Area, usually. So they all have a connection back here. So it keeps, keeps the things focused here. That’s a good network to be a part of.”
Dealing with clients within various U.S. States, is hard to keep up with the different regulations and laws of states your clients originated from when filing patents?
“For patent work, I do not have to learn the laws of other states. So it’s pretty simple because patent law, I just do patent filing. I don’t do litigation. So it’s all with the patent office, which keeps it nice and simple. For running a law firm, in terms of advertising and sales, that’s when I’ll get into the laws of other states. Although the patent office has its own laws, I still like to check, make sure I’m aligned up with the state laws.”
What do you believe was the hardest aspect of running your own firm and did you have any experience with this going in?
“Yeah, the business side is a challenge to build your own firm, to find clients, marketing, sales, keeping clients, you know, developing those long-term relationships with clients. Those are all things you’d have to do as you move up in a law firm. Even if you start out as an associate in a law firm. But with a business, it’s kind of, it’s immediate. And those are the main challenges. Generally, running a business is not like the trust accounts and things. Those are pretty simple. But the main issues I think about a lot are marketing. Most of the business I get is from referrals. I would say over 75% is from referrals. Yeah, keeping clients happy is a big part of that.”
Differentiating from many other areas of law, such as criminal or family, patent law clients seek a very different outcome, and the process to achieving these outcomes can sometimes be a long and tenuous one. How has the process been walking the client through the application process and working with them as things may go sideways?
“So patents can be a very long process. And…the steps that you’ll do kind of depend on the size of the client. If you’re working for a smaller client, like an individual inventor, you might walk them through a patent search or let them do their own patent search. And then you’ll go and then you’ll write the application for them. And at that point, it’s kind of like you just go through the process for them. If you’re working with a bigger client, like a company…they usually won’t have you do a patent search. But you’ll still do the application and process just the same. It’s pretty smooth. Sometimes they’ll be more involved with writing the patent too.
But yeah, there’s a lot of things you can do with patents. You can, for companies that need invention disclosures, they have a whole invention disclosure process. So it goes: idea, invention disclosure, go through committees; and then they get the approval to file the patent and it starts the application.
So sometimes I’ll start all the way just talking to the engineer and getting the invention disclosure and then going through the whole process from start to finish.”
We have seen a steep and steady decline in the practice of litigation in cases throughout the last couple decades. Do you see a similarity within the field of patent litigation, or has this field been generally unaffected by this curve?
“Yeah, the general perception is that patent litigation is going to happen. People at early startups and things, they’ll just assume that somebody’s going to try to eventually just steal what they’re doing and they’re going to have to go after and sue them. Smaller inventors generally can be afraid to patent because they’ll spend all this money getting a patent and then they think they’ll just have to spend hundreds of thousands of dollars to defend it right away. But bigger companies are still patenting. In general, the patent industry, if you look at…search trends, it’s about 30% of what it was in the 2000s right now. So patent industry is on a downward slope. A lot of people are doing trade secrets now too.”
Does your firm come across a lot of trade secrets with semi-conductor patents?
“We deal with it in the way someone’s making a decision if they’re going to do a trade secret or they’re going to do a patent. Basically, once they get an idea, they’re going to have the disclosure, they’re going to decide what they want to do with it. And so at that point, you can decide trade secret or patent. That’s kind of where I come in on that. [There’s] a bigger push for trade secrets with your bigger clients with companies than smaller individuals.”
How do you counsel these larger companies who have multiple levels of employees who might have access to this information to pursue trade secret or not?
“When you’re choosing a trade secret versus a patent, you’re mainly thinking about who would think this up. If somebody would just figure this out by looking at it or if it’s pretty easy to figure out. That’s the main thing people will talk about in my experience.”
What has your experience been like with the patent examiner’s office? And how have you crafted your practice to foresee and best overcome any rejection obstacles?
“I’m usually patented. So my experience has been pretty helpful. If they reject the claim, they’ll give some ideas for how to get around that rejection as well. They offer you why they rejected it and what they’re looking for instead. So you’ve been able to predict that within your own firm. Yeah, it’s been pretty easy to work with examiners so far.”
What facets of your business do you usually think is best handled with outside counsel or businesses?
“It’s the marketing side. When you’re a law firm, you’re kind of selling yourself as an attorney, your skills and your experience. I mean, if you go to like a big law website and you want to hire big law, you’ll pick an attorney out and then you’ll go call them. And I had, yeah, I’d say the biggest challenge is learning how to sell [yourself]. Because I had a biology background going into electrical engineering patents, so getting started was mostly total luck. It was just the connections I had. So I already had something with that. And then once you build good experience in that field—building experience was really important for me to start growing. But a lot of marketing experience, how you sell yourself [is important].”
I can imagine that after working with one patent attorney—learning all the technology and filing the first patent for them—the client genuinely has a really close working relationship with that attorney. It could be hard to try to terminate the relationship after the first patent and try to find another attorney to work on subsequent patents or even other inventions. What has your experience been being able to obtain clients and advance their subsequent patent-lines?
“So clients, what I’ve found through marketing and emails, lots of emails, people will generally get a new patent attorney only if their old patent attorney has retired or has changed something—like costs significantly [changed] or has just completely failed. Once they find a patent attorney, they’ll tend to stick with the patent attorney.
I know one patent attorney and their client was a large company and they worked on the patent line. They knew it really well, all the technology, and they got in a huge fight—the client and the patent attorney. The client hated the attorney, but the client kept the patent attorney. They just talked to a third-party firm and that firm handled all the contact between the two, but they still had that one patent attorney work on the patent line.
It’s really hard once you’re on a patent line to get it off. Even some of the things, like patent attorneys, because the companies need invention disclosures, it goes to invention disclosure and then it goes patent application. You can work for another company, help them out, do their invention disclosures, and then they’ll still send the patents to the patent attorney that they like. It’s just a lot of work. It’s really nice, actually, because it helps get it across. Connections are really important. Relationships are really important. It’s actually a nice thing about patenting. It’s about those relationships.”
Do you enjoy filing a new patent with new clients, or do you enjoy working with older clients and being able to advance their technologies and be a part of this process with them?
“It’s nice. I like both. I like working with the same client as they develop their technology.
Patents tend to lag quite a bit behind the actual technology. By the time you’re done working on one, they have something new coming up and some changes that you make. You get to know the people and the technology pretty well. Also, working with a new client is a lot of fun. It’s fun to learn the new technology inside out. It’s all good stuff.”
I can imagine patent work for semi-conductor businesses is particularly a narrow field. Have you ever faced a time when you dealt with a conflict of interest with more than one client—in situations where they might go after the same technology or advance their technologies in the same way?
“I haven’t had to deal with that too much. The number of clients I’ve had is small, but…once you build a relationship with them, we say the lifetime value of each client is pretty high. But I haven’t really had to worry about any conflicts of interest yet. I mean, you do check, but nothing’s really coming.”
What is one case in the courts right now that you would impact your work, or impact patent law in general, and are you excited to hear the outcome?
“I can’t think of a hotly debated topic in the courts right now. Like, the biggest patent case of last year was related to design patents and obviousness, but I haven’t done design patents. So yeah, nothing really, [but] I am tracking what would impact.”
Would you say one of the most rewarding part of your job is getting to see your client’s ideas come to life and grow these lifelong connections with them as they develop their inventions?
“Yeah, definitely! You’re trying to build value for your client, and seeing those patents have an impact on the business, that’s pretty nice.”
Have you seen any current issues with the rising prevalence of AI in you line of patent work? Or have you seen a rise of AI in the world of patent law in general?
“Yeah, I haven’t had to really deal with anything AI so far, but it is all the talk.
Well with AI, using AI as a lawyer, there’s different ways, like in the patent field, we started using AI with invention disclosures to help take, engineers usually have to write up a form. And I’ve seen them write like a 40 plus page form, and then just get turned down, and then never fill out another form.
So, we’ve been working, my counsel, Bart Sullivan, he’s been working and building in invention disclosure, AI [to do] the writing for the engineer. And I think that will be something that’s pretty nice. But that’s kind of one step removed. A lot of people are trying to do patent writing, spread the patent application, tested a few of them but they’re not, I don’t think they’re quite there yet. But they’re getting there. Every time I check back, they’re getting better and better. So, we’ll see.”
Prorok Patents is a private patent firm in San Fransisco, CA that focuses on various technological industries.
For more information about the firm and their services, visit https://prorokpatents.com/.