By Andrew Cohen
Four students from Berkeley Law’s Board of Advocates Tech & IP Team won its regional and placed second overall among 76 law schools at the National Patent Application Drafting Competition, hosted by the U.S. Patent and Trademark Office.
Advancing to the final round with four other teams at the USPTO headquarters in Alexandria, Virginia, 2Ls Edlene Miguel, Marley Macarewich, Jisoo Hong, and Nicole Zeinstra say the experience developed career-enhancing skills and provided lasting memories.
“I attribute our success to effective teamwork that involved complementing each other’s strengths and interests,” Zeinstra says. “Combined with insightful mentorship from our coaches, we felt confident in our preparation.”
The competition closely simulates real patent application drafting from start to finish. Michael Schallop and fellow intellectual property expert Lee Van Pelt ’93, partners at Van Pelt, Yi & James in Silicon Valley, guided the students’ development of an application for a hypothetical invention disclosure to advance a low-cost, modular neonatal incubator. Schallop, who teaches Patent Prosecution and Technology for Lawyers at Berkeley Law, accompanied the students to the final round.
“People often think patent drafting is a largely solitary endeavor, but many patents are drafted on teams,” says Macarewich, executive vice president of the school’s Intellectual Property Law Society and the incoming managing editor of its Berkeley Technology Law Journal. “In our law school classes, however, the learning is largely individual. My biggest learning takeaway from this competition was the teamwork aspect of patent drafting.”
Helpful experience
The team also came in with well-rounded backgrounds covering all major areas of patent prosecution: Zeinstra had worked in life sciences, Miguel in computer science, Hong in machine learning, and Macarewich in engineering.
“We each have drafting strategies specific to our fields, and it was really cool to learn those different strategies and blend them together,” says Macarewich, who works with Morrison Foerster’s patent prosecution and strategy group. “I think this ability to work on a team, blend work styles from adjacent fields, and import elements from those adjacent fields into my own work will greatly help in my legal career.”
Miguel was a graduate intern at her university’s licensing and ventures group, where she interfaced with startups and research groups as they navigated the patenting process. After graduating, she worked as a software engineer at one of the world’s largest biotechnology companies, helping build novel data-driven technology used in medical diagnostics globally.
“Those experiences helped spark my interest in pursuing a career in intellectual property and technology law,” she says. “At Berkeley, I’ve had the opportunity to serve in various capacities within the technology law community.”
To say the least. Miguel is co-director of the Tech & IP Team, co-president of the IP Law Society, co-president of Women in Tech Law, and incoming co-editor-in-chief of the Berkeley Technology Law Journal.
Eager to expand
“I wanted to gain practical competition experience to supplement my background and support my career interests,” Miguel says. “Being able to engage in all steps of the end-to-end process as a team was especially valuable; we greatly benefited from bouncing ideas off of one another and discussing different approaches together. The live questioning and feedback from judges was also very meaningful.
“Our team naturally built on each other’s responses and enjoyed sharing the reasoning for our drafting strategy. It was especially rewarding to hear from the judges that our presentation and patent application would have been very favorable to a real-world client and was most representative of what an ideal patent strategy would look like in actual practice.”
Miguel clerked in Perkins Coie’s patent prosecution practice throughout the school year, and will work there and at Wilson Sonsini’s technology transactions group this summer. Hong, who will work in IP litigation at Quinn Emanuel and in tech transactions at Morrison Foerster, enjoyed broadening her knowledge base and skill set.
“I didn’t have prior patent experience, so I was drawn to the competition because it seemed like a great opportunity to learn more about the patent life cycle and the patent drafting process in particular,” she says. “Our team met regularly to discuss strategy — how to conduct the prior art search, which components to put in our independent claims, and so on. As the competition day drew closer, we met more frequently to practice our presentation.”
Zeinstra, a patent agent at Wilson Sonsini during law school who will return as an associate this summer, honed her patent law interest while pursuing a Ph.D. at the University of Washington and worked at its technology transfer office. After Berkeley Law’s team won the virtual Silicon Valley Regional, she relished the chance to travel east with her teammates and compete in person.
“Hybrid and remote work trends make travel more rare and appreciated, so I found competing at nationals at the USPTO headquarters very special,” Zeinstra says.