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Attorney Judy Mohr keeps her eye on the law as centuries old patent system changes

by Linda Hubbard Gulker on May 13, 2013

Menlo Park attorney Judy Mohr

In attorney Judy Mohr’s mind, what she’s doing now is what she’s been doing her entire professional life, although it’s just a lot less messy.

“I worked as a bench scientist at Membrane Technology and Research,” says the Menlo Park resident, who received her doctorate in chemical engineering from the University of Texas, Austin. “It was wet science, mainly polymer work for drug delivery. Now, I talk [with clients] rather than get my hands dirty.”

Judy is a partner at the international law firm, McDermott Will & Emory, working on all aspects of U.S. and foreign patent procurement as well as IP due diligence on both the investor and company side (where her focus is primarily in the areas of pharmaceuticals and biotechnology). Given the firm’s Menlo Park office on Middlefield, her commute is short, giving her time to continue her time-honored tradition of running early in the morning.

In the near future, she’ll need to be “bilingual,” a result of the change in patent law in the U.S. “For more than 200 years — since the founding of the patent system in 1790 — we’ve always been a ‘first to invent’ country. That means that the first inventor with the idea is entitled to the patent.

“But, this changed in March of this year when the U.S. became a ‘first to file’ country, the standard throughout much of the rest of the world. Now, the first person to file for patent application can be awarded the patent. This change will make the whole patent system complicated for the next 20 years as we’ll exist in this blended system.”

Judy explained that it’s usually two to six years from filing to when a patent is granted, depending on the tech sector, with biotechnology being longer than others.

“What’s interesting to me,” she said, “is that there is language in the U.S. constitution stating that the federal government will promote the progress of scientists by awarding first-to-invent patents. It’s been a fabric of our society. I keep waiting for some kind of challenge under the constitution.”

In the meantime, Judy will need to understand the rules in both systems: “It’s like a chess game in strategy. Nothing I do is easy — I’m thinking all day long.”

But, at least, she’s no longer getting her hands dirty.

Photo by Scott R. Kline

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