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Quarles & Brady partner Nicholas Seay was an engineer who wanted to be an environmental litigator, but he wound up becoming one of the most highly regarded biotech patent prosecutors around. The Madison, Wis.-based prosecutor’s best-known patent covers embryonic stem cells — early-stage cells that have the potential to develop into nearly any human cell type. Issued in 1998, the patent describes a method — discovered by Dr. James Thomson — for isolating embryonic stem cells and enabling them to reproduce. The discovery was monumental — stem cells could potentially treat a range of illnesses. And Thomson’s patent, which is assigned to the University of Wisconsin’s Wisconsin Alumni Research Foundation (WARF), and licensed to Geron Corp., has been the subject of heated debates. Considering all the controversy surrounding stem cells, it is surprising that it took Seay only two years to shepherd the patent through the patent office. Thomson, who was a non-tenure-track researcher when the process began, didn’t even know if his invention was patentable, says Seay. At WARF, scientists submit inventions, and if WARF “finds it interesting, they call in outside counsel,” says Seay. WARF has “very competent people” who work with the inventors, and “they decide on patentability before they call us in,” he adds. Seay says he expected the patent would gain a great deal of notoriety. The patent, for “Primate Embryonic Stem Cells,” doesn’t mention human beings. “People are, of course, primates, but it’s amazing how some people don’t appreciate that,” says Seay. “I even had a professor of patent law who was unable to find the stem cell patent ask me if this was the one.” Seay has also prosecuted key patents for genetically modified seeds and for the technology that is used to modify cotton, corn and soybean seeds. For many years one of his main seed clients was Agracetus, now part of Monsanto. He’s done other work for universities, including the University of California. Surprisingly, Seay doesn’t have a biology degree. He graduated from Cornell University with a B.S. in electrical engineering in 1972 — before biotechnology was an established field. Seay designed circuits for NCR Corp. for a year after graduation but found it boring. He entered night law school at George Washington University in 1974 and worked days as a patent clerk at the now-defunct O’Brien & Marks. Seay wasn’t particularly interested in patent law; he never took a single patent law course. Instead, he wanted to be an environmental litigator. After finishing law school in 1977, Seay moved to Madison. The city suited his needs. It’s “large enough [to] get a job and small enough [to] live in the country,” he says. When Seay started interviewing, he realized that doing environmental work at law firms meant that he’d be working for the “wrong” side. “I didn’t want to work for polluters,” he says. Seay fell back on patent law, taking a job as an associate at 100-year-old Lathrop & Clark. For the next few years Seay prosecuted an array of patents, including ones for surgical tape, oil heaters, and a device for holding reflective safety trim on cars. Seay’s biotech breakthrough came in 1982, about a year after he made partner. “There was lots of local press about biotech coming to Madison. So I went to the firm and said, ‘I am willing to learn,’” says Seay. At the time, no other local firms were doing anything in biotech. Seay taught himself the discipline by pouring through a stack of genetics and biochemistry textbooks that he bought at the University of Wisconsin. With the firm’s backing, he started pitching himself as a biotech expert. That same year, the Madison division of Cetus Corp. hired Seay to work on patents for genetically engineered cotton. Those patents helped cement Seay’s reputation as a biotech specialist. (Cetus is now owned by Chiron Corp.) Seay left Lathrop & Clark in 1989 to join the Madison office of Quarles & Brady. At Lathrop & Clark, “we were having difficulty recruiting against larger firms, and I needed better-quality associates,” he says. At that time, Lathrop & Clark had about 30 lawyers; Quarles & Brady had 150. Today, Seay spends about 80 percent of his time on biotech for a predominantly Madison-based clientele. WARF is a major client. Seay says that when he started out, he was the third patent lawyer in Madison. Now, “by my last count there are 35 of us here, and we are all busy,” he says. This reflects the great job WARF is doing with technology transfer, he says. Many local companies are spin-offs on university-developed technology. Seay bills at a rate that hovers “in the low $300s,” he says. Patent prosecutors complain they don’t get the respect or resources available to litigators in their firms. Not Seay. “I don’t feel that way at all,” he says. “I’m sitting in a corner office looking out on Lake Mendata.”
SEAY’S ADVICE FOR PATENT LAWYERS Don’t Get Typecast.Associates tend to get tracked into a specialization very early. The trick is to not have your speciality blind you to other possibilities. What Can’t Be Taught.There is usually a core of an invention in every application. Good patent lawyers recognize this; other lawyers who are just as smart can’t. Know Your Stuff.A patent application is more effective if you know from the start what the core invention is. Most biotech patents are overlawyered because of the lack of focus early on.

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