Tuesday, March 13, 2012

Ron E. Perez: Mixing chemical engineering with patent law

According to Ron Perez, "Chemical engineering is a way of thinking, geared for problem-solving. The basics are chemistry and the related disciplines. Although this basis in chemistry may seem obvious, it is a fundamental difference between chemical engineers and most of society. I look at most problems from the molecular or atomic scale - realizing that the driving force in nature is chaos. For example, in trying to understand inhalation anthrax, I consider basic chemistry, mass transport and other aspects of chemical engineering. Because of this chemistry foundation, chemical engineers are the most versatile of the engineers and scientists, and are able to transcend disciplinary boundaries and to succeed in a variety of industries." This, from a person who also concedes that if he had it to do again, he might very well bypass chemical engineering and head straight for his current passion, high-stakes litigation.

In his junior year at Ohio State Univ. (Dayton; OSU), Procter & Gamble offered Ron a summer internship and put him to work on process-control projects. Upon graduation, he had several offers for process-control-related jobs, and in August of 1978, he joined a research-and-development group at St. Regis Paper Co. (West Nyack, NY). He spent the next two years working on projects for several different paper mills around the country. The paper industry was having hard times in the late 1970s and early 1980s, and the process-control opportunities in the paper industry began to be limited.

Eventually, Ron got a position as a control systems engineer at the Foxboro Co., where he was responsible for designing, programming, installing, troubleshooting and maintaining direct digital control systems for a variety of applications. As part of his duties with Foxboro, he traveled extensively west of the Mississippi, as well as overseas to England, the Netherlands, Japan and South Africa.

As his responsibilities grew to include group and branch management, he went to California State Polytechnic Univ. in Pomona part-time to earn an MBA. It was while earning his MBA that Ron first took an interest in becoming a lawyer. When he finished his MBA, he left Foxboro to attend the Univ. of Wisconsin Law School full time. "I knew going in that I wanted to become a patent attorney," says Perez.

After graduation from law school, he joined Fulwider Patton, a law firm in Los Angeles, as an associate and was made a partner in 1998. "As a patent attorney, I am solving entirely different problems, with different tools than were taught in chemical engineering school. One of the biggest differences is that in engineering you succeed or fail; whereas in law you win or lose." In the type of highstakes litigation in which he participates, that means that his clients can win or lose millions of dollars.

Throughout his career in law and engineering, Perez has felt the impact of resource-management shifts. The oil and gas shortages in the late 1970s and early 1980s spurred his exit from the paper industry, because research-and-development funds were limited and good projects scarce.

Similarly resource management shifts have affected his patent law practice. "In the early 1990s, computer-related technologies were the hot ticket for patent attorneys. For the past few years, dot-coms have garnered a lot of attention. More recently, capital and other resources are being shifted into the life sciences industries," Ron observes.

Though the legal world is now his chosen home, Perez still uses his chemical-engineering mindset to solve problems and his local AIChE chapter meetings to keep in touch with associates and extend his business network. "I still use my engineering education and training nearly every day," says Ron.

Indeed, to become registered patent attorney with the U.S. Patent and Trademark Office (USPTO), one must have an undergraduate degree (or the equivalent) in engineering or a hard science, such as chemistry or physics. He learned about the requirements and duties of a patent attorney while working on his MBA thesis, which was directed to helping business managers better utilize intellectual property. "I found the prospect of becoming a patent attorney especially attractive, since I could build on my previous education and experience," reflects Ron.

That observation turned out to be accurate. Patent law has primarily two aspects, obtaining patents for clients and litigating patents in federal court. When writing patents for submission to the USPTO, a patent attorney must thoroughly understand the background technology, not just the client's invention. "I am constantly learning new and emerging technologies, such as fuel cells, while at the same time having to brush up on the basics," says Ron.

When litigating patents, either defending a client accused of infringement or asserting a client's patent against a competitor, Ron not only needs to understand the technology himself, he has to explain it to a judge or jury. "One of the hardest aspects of patent law is explaining the technology to non-technical people, such as a judge with a political science background and who presides over mostly criminal cases and standard business disputes." Still, it is such challenges, combined with the application of his chemical engineering education and experience that makes him love his work.

[Author Affiliation]

- Margaret C. Hunt

[Author Affiliation]

Margaret is a contributing editor for CEP She is a ChE and owns MCHA, a technical marketing communications firm.

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