Kate Neville - Part 2: From Patent Agent to Lawyer - Embracing the Ambiguity of IP Law

Intro - 00:00:01: Welcome to The Biotech Startups Podcast by Excedr. Join us as we speak with first-time founders, serial entrepreneurs, and experienced investors about the challenges and triumphs of running a biotech startup from pre-seed to IPO with your host, Jon Chee. In our last episode, we spoke with Kate about her upbringing as the youngest of six, her passion for biochemistry, and the serendipitous path that led from her PhD in immunology to a career in patent law. If you missed it, be sure to go back and listen to part one. In part two, we continue our conversation with Kate as she shares her experiences navigating law school while working full time and the challenges scientists face transitioning into the legal profession. We'll also discuss her firm's collaborative culture built on a foundation of former scientists and how that fosters innovative approaches to cases in life sciences and emerging technologies. From embracing ambiguity to the dynamic nature of intellectual property. Kate provides valuable insights into thriving at the intersection of science and law.

‍

Jon - 00:01:19: And so you start out kind of there and eventually, you know, to be a lawyer, you have to go to law school. At what point in time were you like, okay, like I need to go get the JD to, you know, kind of continue on this path and expand my purview of this type of work?

‍

Kate - 00:01:35: Yeah. So then once I, I think I was working here for about a year, a year and a half, that's kind of how we operate. People say, all right, now you can take the patent bar and you take the patent bar. That's basically studying all things, patent law, all the rules about patent law and then litigation priority, all these crazy terms. And so once you pass the patent bar, either you can stay a patent agent because you can go back and forth with the patent office. Just as easily as a lawyer. Like you don't need to be a lawyer to go back and forth with the US Patent Office. But you kind of look around and you're like, Well, eventually, I as a patent agent would be doing the same thing as a lawyer for the most part, but not getting paid as much. And then you can't be a partner in the firm. So then you're not part of the business and you're just not just a patent agent because people are in a very important position. But you just don't necessarily reap the benefits or, you know, sometimes it's not the benefits of being a partner in a firm. So I figured it's like, well, if I'm going to be now that I'm committed to this, right, I'm a patent agent. I'm not going anywhere. I might as well just go back to law school. And then I decided, it's like, well, I better do it now because I was out of school. I'd probably finished grad school and then about two years later started law school. It's like, I better do it now because if I don't do it now, I'm not going to go back, right? It's like... 

Jon - 00:03:05: Yeah.

Kate - 00:03:06: Strike the iron while it's hot of-

Jon - 00:03:09: Yeah.

Kate - 00:03:09: So it's like, I'm psyched. I'm already overtaking exams, but I can suck it up for a little while.

Jon - 00:03:14: Yeah. Yeah. Yeah. Like I have a little bit of momentum still. Like I can just keep this going and then this, but the end will be in sight. Um- 

Kate - 00:03:20: Yeah.

Jon - 00:03:21: And we're so while you're in law school, were you also working? 

Kate - 00:03:25: I was. And it's a great support system here. And I think in a lot of different, especially boutique IP law firms, a lot of people do come out of a lab and then become a patent agent. And so there's kind of a culture of going to school at night. So I would work. You know, full-time during the day, you might have to cut out early and then go to class at night and, you know, take, especially at the beginning, you're talking like... Civil procedure or torts law. And it's like nothing remotely related to what you did all day. But, you know, sometimes it's good. It was nothing remotely related to what I did all day. And it was so it was different and interesting. And there's always good stories, even from the 1850s, some case law that's still good today from the 1850s. You're like, really? This is what our system is based on?

Jon - 00:04:16: Yeah, come on. It's like, it's been some time.

Kate - 00:04:20: Yeah, there's been some time, but this is still good law. And so and another two people I had started with at the time were also in law school. And so we would go over together. And that's just kind of what was expected of us. And, you know, the partners here understood if it was finals week, like you could take the week off. You're like, you're like, oh, you're on vacation. You're like, not quite.

Jon - 00:04:43: Not really. There's a lot of reading taking place right now.

Kate - 00:04:47: Yes.

Jon - 00:04:48: It's interesting when you brought up tort. So I studied toxicology. That was my focus. So that's like the first thing is like tort. Like that's like you go like what? And I was like. It was like not really my cup of tea, but it was kind of this first thing where I was just like, yeah, that makes logical sense. I was like, that was what I did at the bench.

Kate - 00:05:08: Yeah.

Jon - 00:05:09: And I was actually contemplating going the IP route. IP strategy was really fascinating, it is not just was, is really fascinating to me. And just being in the Bay Area is kind of something like that. Family, friends, kind of like being in the tech industry, they talk about the importance of it, obviously protecting your IP, especially when a lot of companies are just like, that is the bedrock, especially in life sciences. Software, a little bit harder, not so much, but especially in the life sciences and being around that is kind of pivotal. And I guess, you know, one last question on your law school experience for anyone who's on a similar path as you, who's like a scientist and is considering, you know, going into patent law and going to law school. What are some practical key considerations before you use them like, yep, we're going or maybe common pitfalls to avoid as they're kind of thinking about it?

Kate - 00:06:07: Yeah, I think the biggest shock comes from a lab or even... Even though I had worked at a law firm, like just getting into law school, you know, there's no right answer. And I think that's very hard for scientists to not constantly be searching for an answer. Like people can go down rabbit holes and keep looking and looking. And for a lot of law, there's just no answer. There's side A and side B. Each side could be right. Who is more persuasive? And so I think you have to learn at some point that it's- You could keep arguing or agree to disagree, but at some point there really are no answers and you just have to make your argument and be like, that's my argument. I'm done. I can't keep going, right? There's no scientific proof. Like in grad school, you're like, okay, I answered this question. And there may be new questions, but you feel like you've put that first question to bed. You're like, this is established now and I'm moving on. And I think in law that... Even if you think something is settled, somebody looks at the word and you're like, does that mean what it really means? You're like, Oh. 

Jon - 00:07:12: God, not again.

Kate - 00:07:13: Didn't we already talk about this?

Jon - 00:07:15: Not again.

Kate - 00:07:16: We were like, what does it mean? We are really debating. The word is, but then you're like, you know what, sometimes that word is really important. It's getting into different minutiae and figuring out what you're comfortable with. And then going into law school is different because in science, you always have people that they want to hear themselves and they have the answers and they want to be heard, which is fine. And law school is similar. You're going to have students and people that are always going to be out and want to get their voices heard. So I was always, again, back the observer. And it's like, you can say things, but I'll just wait my turn and come in with stuff. But, you know, you talked about the reading. And I think as a scientist, you also... You read a lot, right? You're going to read a lot of papers and always go through the literature. But, and people warned me here, it's going to be a lot of reading. I was like. No amount of warning you can really prepare you for how much reading that there really is. And I was like, wow.

Jon - 00:08:21: I was thinking about it. Cause I was like, considering going to. It's Berkeley law. And the first piece of reading is like Nietzsche. And I was like, oh, this is different, this is not just like a nature paper. This is heavy, like reading.

Kate - 00:08:39: Yeah. I can't skim and look at the figures and figure out what they're talking about.

Jon - 00:08:44: Just like quickly. I got it, got it, got it, got it. This is like, oh, I need to be locked in. Like, and I love that exactly what you said about how, and it resonates with me, how like with science, it can feel super objective and like almost binary at times, like the right, wrong, got it. Like. But when it comes to law, there's a lot more like gradient descent and you kind of have to get comfortable with living in this kind of gradient of, ,right, wrong. It's almost like you're thinking about probabilities almost a lot of the time. And I think what really, for me, drove that home was like part of my journey, almost going to law school that really drove it home for me was like when we did a bioethics and moral philosophy module. And that was also tied to criminal law and that type of stuff. But just like seeing the arguments that are laid out and you can just like both sides, like, oh, holy moly, like I can see both sides, both have their merits. And the first time it didn't sit well with me. I was like, oh God, this is giving me great anxiety. And I think business is like that too. Like there's never like a perfect answer, but you have to make an answer. You can't just sit there and just be like, well, you know, you get paralysis and then that's like when everything goes wrong. 

Kate - 00:10:05: Right. You're like, what's 75% more likely to happen? Like, all right, that's what we're going to do. You're like, is there a risk? Sure.

Jon - 00:10:13: Yeah, exactly. And I think that's exactly it. It's just understanding that there will always be a risk that you're ultimately going to take, which is like, what risks are you comfortable taking?

Kate - 00:10:23: Right. Yeah.

Jon - 00:10:24: What is your tolerance here? And, you know, that goes into investing too and stuff like that. Just like, what is your risk profile? Like. You know, you can fly, you know, you know, just like go rogue and just like go full risk on, or you can go like, you know, and, you know, and I think about that in just like entrepreneurship too. It's like, what is, the amount of risk that is right for you as a founder, if you want to have a more kind of less volatile business model. And that if that works for you, that's what you should be doing. Like you should not be on a rocket ship if you're looking for something that's more steady Eddie.

Kate - 00:11:02: Right.

Jon - 00:11:02: But I'm getting, I'm getting distracted now. So you're now, you know, you're completing your law school. You're now at the law firm. And, you know, you mentioned being at the law firm right out of law school and up until now. Can you just talk a little bit about the firm itself? And what is it that got you fired up to spend your whole career here? Like the mission and values of the firm and to talk a little bit about what makes the firm special.

‍

Kate - 00:11:31: You know, it really is a great place to work. When I first interviewed here, you know, I was interviewing with the partners at that time. And all former scientists all just kind of... Still had a little bit of the lab mentality, right? You... Maybe a little bit more relaxed than some other law firms might be from what I've heard. So, you know, it's a little bit different. And everyone here was very open. And we use the term collegial, but it's very collegial here. You know, there's not a lot of competition. It's for the firm and for our clients. We're trying to do the best work. We're not trying to compete with each other. We're here for other people, not ourselves. And then just, you know, over the course of 20 plus years that I've been here, right, my background might be in immunology, but I started working on Alzheimer's disease and some VEGF proteins and stuff I knew nothing about. And I think that's one of the reasons that one of the reasons I didn't want to be in a lab anymore is there's so much other stuff out there that I don't want to get. Put into this like tiny little, I'm an expert in this tiny little thing. Like now I'm, I'm an expert in nothing, but I, I dabble in a lot of things. Um, you know, so working here, you get to see so many different aspects of science that you, I don't think I would have seen otherwise. And it just keeps it interesting. Um, either it can come in for my client or another person might have a client and say, hey, does someone have time to work on this? Or this is not my area as anybody in immunology. So I do do a lot of antibody work, but that's not all that I do. I do nanoparticles. I do so many different things. Not one day is the same as the next because you don't know what kind of problems you're going to face in whatever technology might be coming up. So I think just the span and expanse of work that you can get. And then. In addition, it's not just, you know, we're an IP boutique. So we have a lot of life science and chemical people. But we also, you know, there's so much AI stuff going on that we have discussions about AI and how does it impact our life sciences clients? Because it's coming. You know, it's coming if it's not already there. And so it's good for us to know about that. And I can walk down the hall and ask my colleague, explain AI to me. Like back when blockchain was really big and Bitcoin, we had to have our software people explain. I was like, someone sat down and explained this to me. So either I don't make any bad investment choices and invest in Bitcoin or just so I know what I'm talking about. So it's so nice to be able to have. That other aspect here as well. You can go talk about different technologies and everyone here started off as a scientist in some fashion. So our engineers, a lot of them worked at different companies before they came here, or, you know, they were at least electrical engineers by undergrad and then went to school. So I think it's a unique place in that everybody, for the most part, has some sort of science background or is science associated. Even our trademark people, for better or worse, they have to learn some of the science terms, right? Because we do trademarks for drugs. And so they have to learn what this drug does and be able to talk about it and put it on the statements that they submit to the trademark office. So everybody has to dabble a little bit. And I think it's just a unique environment.

Jon - 00:15:13: Absolutely. It sounds like it. I mean, what stood out to me earlier, too, and again, now it is a testament to a firm if you spend your whole career there. Like it truly is. And I think in the Bay Area, it's common to see, you know, people moving from firm to firm. And that is there's nothing wrong with that. It's just another way to, you know, progress your career. But I also think it's incredible how it's incredibly telling when someone can spend their whole career at a firm. It sounds like a place that I would want to be at. It's like it's around. I mean, I was the same way. It was like. When I look back on my bench experience, I was like. I'm glad I did it, but I think I can be like a force multiplier to like support y'all. I'll be in that support role. And that's totally cool. They're definitely way smarter people at the bench than me. But if I can support your efforts, like I would, you know, that's where I feel myself fitting in. And you mentioned not being necessarily an expert, like the deepest expert on any given one given topic. But I think there's something incredible. Valuable to having a breadth of knowledge. It's like, because you can then, you can learn any, like you can cross apply learnings. And if you only like to put the blinders on and focus on one thing, you might miss, you know, some, some other learning in another discipline that could definitely be relevant to whatever you're looking at right now, right in front of you. So I guess what I'm trying to get at is like, don't sell yourself short. You also might be, yeah, you might also be an expert in multiple things. Like you, I think that's possible too, where you're like, I could do, I'm very good actually in a ton of stuff. But I find myself in Exeter today, the way that we approach marketing. I was always in the. Kind of into the music scene and food and hospitality. And we get great, you know, inspiration, like inspo and just learning from how they conduct themselves and bring it over here. I know those sounds super disparate, but it just works. Like, I don't know why it just works.

Kate - 00:17:28: Yeah.

Jon - 00:17:29: And so I guess for anyone out there who's listening, it's like, be open to these experiences and just like learn and see if you can cross apply.

Kate - 00:17:37: Agreed. I was about to say, you've just got to be open to new suggestions and not... Kind of say, no, that won't work for us and be, how could we maybe take... Maybe not all of it's going to work for us, but is there a part of it that's going to work for us? Agreed. There are some times when I've been working on something and then... I pick up like another subject and it's not necessarily related. You're like, oh.

Jon - 00:18:00: Yeah.

Kate - 00:18:00: Maybe that thing that I just did for that case can work here. And then you can call up the client and... I think the other thing that's appreciated, and I think we might get to this later, is like your clients, they're also scientists. You know, a lot of them in-house were scientists. You have to talk to inventors and you have to sound intelligent. Like, like, you know what you're talking about. And so, you know, the science background and techniques have moved on. I don't know all of the techniques now, but I have to learn them. And it's, it's fascinating. We're like, oh, you can do this. And half the time that it took me to do it now with, you know, these new tabletop machines that I didn't have.

Jon - 00:18:40: That's exactly it. And I think it's like having that curiosity and just like in order to stay with how quickly these things are moving, you kind of have to be flexible in that way if you're thinking, or you're going to get left like in the dust. There's like, you, you, you frankly just won't. And you, you bring up AI too, just like that's moving at a pace. I'm just like, what the heck? Like, what is going on? I've never seen something that moves so quickly and just with such intensity and, you know, I'm more observing. I don't like necessarily participating, but it is quite something to see.

Outro - 00:19:16: That's all for this episode of The Biotech Startups Podcast. We hope you enjoyed our discussion with Kate Neville. Tune in for part three of our conversation to learn more about her journey. If you enjoyed this episode, please subscribe, leave us a review and share it with your friends. Thanks for listening, and we look forward to having you join us again on The Biotech Startups Podcast for part three of Kate's story. The Biotech Startups Podcast is produced by Excedr. Don't want to miss an episode? Search for The Biotech Startups Podcast wherever you get your podcasts and click subscribe. Excedr provides research labs with equipment leases on founder-friendly terms to support paths to exceptional outcomes. To learn more, visit our website, www.excedr.com. On behalf of the team here at Excedr, thanks for listening. The Biotech Startups Podcast provides general insights into the life science sector through the experiences of its guests. The use of information on this podcast or materials linked from the podcast is at the user's own risk. The views expressed by the participants are their own and are not the views of Excedr or sponsors. No reference to any product, service or company in the podcast is an endorsement by Excedr or its guests.