Curious about how science, business, and law intersect? Here we feature
Michael Dilworth, who combined his passion in science and expertise in law to start his intellectual property law firm, Dilworth IP, based in Trumbull, Connecticut. He has almost 25 years of experience in practice areas of intellectual property. In 2007, Michael Dilworth started Dilworth IP, providing services in the areas of patent and trademark prosecution, IP transactions and due diligence, litigation support, post grant proceedings, licensing of intellectual property, portfolio management, and counseling. Michael went to Saint John’s University, where he majored in Chemistry. He then went to Albany Law School of Union University where he earned his Juris Doctor degree. Learn more about careers as intellectual property attorney below and how he made the transition to his unique position now.                                                                                      

General questions about career in Intellectual Property

CNSPY: What is an Intellectual Property attorney?

Michael: The term “Intellectual Property” is quite broad and covers a variety of legal protections that may be available to creators, inventors, performers, artists, and the like, such as patents, trademarks, copyrights, and trade secrets.  Attorneys may choose to specialize and concentrate their careers on one of these areas.  Then there is the dichotomy between “procurement” and “enforcement”; namely, there are attorneys who choose to focus on helping clients apply for and obtain the legal rights being sought after, and then there are attorneys who choose to focus on helping clients assert claims of infringement (or defend against such claims) by third parties. Some attorneys do both.

CNSPY: Why consider a career in Intellectual Property?

Michael: One aspect of being a patent attorney that I enjoy so much is working with incredibly talented inventors and scientists; another aspect is having early access to the latest innovations happening in a given technology field, long before they even reach the public. I get the chance to work on a plurality of technologies – for example, one day I might work on a new medical device being developed by one client, and the next day, I might work on a new cancer therapy being developed by another client. I am not confined to working in just one area.

CNSPY: What kinds of skills are needed to be successful as an Intellectual Property attorney?

Michael: One needs to have a solid grasp of the science or technology involved and be able to write persuasively and effectively advocate for the client.   

CNSPY: What kinds of activities can one do now to better prepare for a career as an Intellectual Property attorney?

Michael: Familiarize yourself with patents by searching free online patent databases.  The USPTO provides many free resources online.

Even before going to law school, provided one has the number of academic credits required, one can take the Patent Agent Exam administered by the US Patent and Trademark Office. By becoming registered as a Patent Agent, you can represent clients before the USPTO before even attending law school. Becoming an attorney allows you to represent clients in court and render legal advice.

Michael’s experiences about careers in Intellectual Property

CNSPY: How did you get interested in Intellectual Property?

Michael: My father is an intellectual property attorney and he encouraged me to enter the profession.  The field was starting to become hot in the late 80s and early 90s and I saw lots of opportunities there.

CNSPY: Can you share your career path with us from graduate student to Intellectual Property Partner?

Michael: I didn’t go to graduate school and instead opted to head directly to law school after obtaining my BS degree.

CNSPY: What was the most challenging part of your transition from academia to your current field?

Michael: Generally speaking, I’ve always enjoyed writing, but learning how to effectively write patent applications required me to develop and hone a unique set of writing skills.  One must not only be conversant in the technical aspects of the invention, but must also be able to think creatively and broadly about the invention so that it is properly claimed.  

CNSPY: Can you describe the interview/application process?

Michael: During the application process, one has to advocate on behalf of the client to get the broadest possible patent protection in light of the prior art and what the application originally disclosed.  Many times, the Patent Examiner will reject claims on one or more grounds, most often on the grounds that the prior art already discloses (“anticipates”) the claimed invention or renders it obvious.  The burden then shifts to the applicant, represented by her or his attorney, to overcome the rejection.  This is often done through legal argument, by amending the claims, or some combination of both strategies.  Oftentimes, we meet with the Examiner to explain the technical differences between the claimed invention and the prior art being relied on by the Examiner.  The hoped-for end result is to convince the examiner to withdraw the rejection and allow the application to proceed to grant.

CNSPY: What did you highlight on your Resume/CV?

Michael: For those seeking to enter the field now, I would highlight those technical areas in which you possess a high level of expertise.  If you have published articles or blogs, I would highlight those.  If you have already become a registered Patent Agent, that is a huge plus too.  

CNSPY: What is a typical day like for you?

Michael: As my firm has grown and my career has evolved, I now spend a lot of my time running the business side of the firm, doing client development and managing others.  Years ago, my typical day would have been spent reviewing clients’ invention disclosures, speaking with inventors, drafting patent applications, working with internal staff to file patent applications at the USPTO, reviewing and responding to communications from the USPTO, and advising clients on patent matters.  

CNSPY: What skills did you need to develop in order to move into your current position?

Michael: Persuasive writing skills are of paramount importance.  Much of what we do is write, and as attorneys, we advocate for our clients.  This is also a service business, so being super responsive to clients’ needs and putting the client first is really important!  

CNSPY: What are your most and least favorite aspects of your position?

Michael: I believe in the power of technology to improve lives.  Intellectual property laws exist to promote and encourage innovation. By helping inventors (and the companies they work for) obtain exclusive legal rights to their inventions, I feel I am in some way contributing to the betterment of humanity — albeit in a less direct way than the inventors themselves!  My least favorite aspect probably has to do with the ever-present deadlines.  Patent practice is extremely deadline intensive.  This can lead to stress and anxiety at times.

CNSPY: Is there room for career development and advancement for someone in your position? Or, what other roles do Intellectual Property Attorneys transition to after their time as an attorney?

Michael: Many IP attorneys like to start out working in law firms and then move in-house to work for companies. Some IP attorneys make the transition to becoming general practice attorneys.  Some move from one specialty to another (patent to trademark, for example). Others move out of the law and into business or become entrepreneurs and investors.

CNSPY: Is there any last advice you would give to someone looking to make a similar transition from academia to Intellectual Property field?

Michael: Talk to IP practitioners and get multiple perspectives.  The field is multifaceted and there are abundant ways to practice under the general umbrella of “intellectual property”.  Find out what really turns you on and go after it!


Opportunities while you’re at Yale

  1. Join the Yale Entrepreneurial Institute (YEI) to experience the development of new ideas and business ventures, and to network with entrepreneurs and innovators.
  2. Seek out internships at IP law firms.
  3. Practice your writing skills by starting a blog, writing a guest post for the CNSPY blog, writing event summaries for the CNSPY Newsletter (apply to join the CNSPY team here), and applying for grants and fellowships.

 

We thank Tianyi Yuan for organizing this interview and Michael Dilworth for sharing his valuable insights with us.

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