The following is an excerpt from Practice Perspectives: Vault's Guide to Legal Practice Areas.
Zachary Piccolomini, Shareholder—Electrical & Computer Technology; Chelsea Witte-Garcia, Associate—Biotechnology
Zachary (“Zach”) Piccolomini counsels clients in a wide variety of intellectual property matters, including patent portfolio development, IP licensing, IP due diligence, post-grant proceedings, IP litigation, and related issues. Zachary represents clients in the computer hardware, computer software, and mechanical device fields, with a focus in the high-tech space. Zach’s clients range in size from small early-stage companies to large international corporations and include companies based in both the U.S. and abroad. He, therefore, strategically develops custom-tailored IP strategies that fit the particular situations and needs of each client. A focus of Zach’s practice is developing commercially valuable patent portfolios, including preparing and prosecuting patent applications, as well as leading teams to develop and prosecute larger patent portfolios. Zach is well versed in prosecuting patent applications in the United States as well as coordinating IP protection in nearly all foreign jurisdictions (and he has close relationships with a number of foreign law firms). Before beginning his legal career, Zach was a computer engineer in the Air and Missile Defense Technology Division of the Massachusetts Institute of Technology Lincoln Laboratory, where he was involved in various aspects of radar system engineering.
Chelsea Witte-Garcia is an associate patent attorney practicing in the field of biotechnology with experience in genetic engineering, antibody therapeutics, vaccine development, cell therapies, microbiome-based therapeutics, and microbial and enzyme engineering. Her practice focuses on patent prosecution, strategic patent portfolio development, and life cycle management. Chelsea counsels individual inventors, universities and research institutions, and biotech/pharmaceutical companies—ranging from early-stage and startup companies to large, multinational companies. Chelsea earned her B.S. in Medical Microbiology, Immunology, and Spanish at the University of Wisconsin; her Ph.D. in Microbiology from the University of California, Berkeley; and her J.D. from Suffolk University Law School.
Describe your practice area and what it entails.
Zach: A primary area of my practice is advising clients on intellectual property protection strategies. The clients I work with range in size and sophistication, so I tailor each client’s counseling to their specific needs and situations. In addition to counseling, I also handle a wide range of other IP issues, including diligence, licensing, and enforcement-related issues, ranging from pre-litigation investigations to full-blown patent litigation and post grant proceedings.
Chelsea: My practice is in the biotechnology space and focuses on counseling and patent prosecution in the U.S. and foreign jurisdictions. We touch on all aspects of intellectual property, including counseling clients regarding identification of patentable inventions; decisions related to how best to protect their IP through patents, trade secrets, or other means; landscape and competitor analyses; as well as patent preparation and prosecution. This involves understanding the client’s research and development plans and business goals to protect their IP. Many of my clients are smaller or early-stage companies that may not have extensive IP experience and rely on our guidance through the patent application process.
What types of clients do you represent?
Zach: I represent clients primarily in the computer science
and electrical engineering space, including in areas that branch into mechanical, biotech, and pharmaceutical spaces. I work relatively evenly across different size companies, ranging from early-stage companies to multinational corporations. Some of my current areas of technical focus include machine learning, machine vision, video coding, and pharmaceutical-related medical devices.
Chelsea: I represent a wide range of clients, including individual inventors, early-stage startups; universities and research institutes; and companies up to large, worldwide pharmaceutical companies. The individual needs of each of my clients also ranges significantly, and we tailor our approach to meet those needs.
What types of cases/deals do you work on?
Zach: I advise clients on a full range of patent and trade secret issues, ranging from ground-up protection strategies to clearance, prosecution, and enforcement issues in the U.S. and abroad. I also advise clients on copyright and trademark-related issues and recently completed a secondment at a major streaming music company that was heavily focused on trademark and copyright matters. Other common matters include diligence projects, clearance studies, and licensing projects.
Chelsea: Most of my work is related to patent prosecution for biotechnology companies, many of which are in the therapeutic space. I work with clients to develop an IP strategy aimed to protect their current and future directions and also strategically position them relative to competitors. I also was recently part of a team that advised one client through several stages of financing to public offering.
How did you choose this practice area?
Zach: In some senses, this practice area chose me. My background is in computer science, and after school, I worked at the Massachusetts Institute of Technology’s Lincoln Laboratory (a government-funded research laboratory), where I focused mostly on computer science-related projects in the military space. After realizing engineering was not the right path for me, I transitioned to IP law because it allowed me to continue to apply my technical background in the legal field. I haven’t looked back since.
Chelsea: After I completed my Ph.D., I pursued a postdoctoral fellowship but quickly realized that academic science was not the right fit for me. I considered different career directions by reaching out to people with a similar scientific background. Through these conversations and learning more about different directions for scientists that were not the traditional “scientist” role, I found IP to be a very interesting intersection of science, business, and the law.
What is a typical day like and/or what are some common tasks you perform?
Zach: The best part about this job is that there isn’t a “typical” day. Each day brings with it new questions, projects, and challenges. I can’t think of a day when I actually worked on what I planned to do for the day. Instead, clients call, issues arise, and the day evolves from there. For me, it has been a perfect fit because it makes for a very dynamic work experience that is rich in new issues to explore.
Chelsea: The matters, technologies, and types of issues that I handle each day are quite different. This requires self-motivation and organization to see and plan for upcoming deadlines, but also the ability to adapt to the unexpected. It is not uncommon for clients to raise urgent requests, invention disclosure plans, or other issues that require immediate attention. I also spend time meeting with clients, discussing strategies with other firm team members, attending training sessions to keep abreast of recent court decisions and PTO guidance, and mentoring/training junior group members.
What training, classes, experience, or skills development would you recommend to someone who wishes to enter your practice area?
Zach: To enter the IP field, most IP attorneys (setting aside those that strictly practice IP litigation) have a technical degree that is relevant to the area in which they practice. While my background is in computer science, others have backgrounds in mechanical engineering, chemistry, biology, etc. It is, therefore, important to have the right technical training. Additionally, courses in patent law and other areas of IP law are particularly relevant on the legal side of the career.
Chelsea: Having a strong technical background is very important. We interface with experts and scientists in different fields and frequently need to dive into new technology areas, get up to speed quickly, and be able to ask the important questions. Much of the patent application process involves distinguishing how an invention is new and non-obvious relative to prior work and requires an in-depth understanding of the science. It is also important to develop strong communication skills, both written and verbal. We interact with CEOs, scientists, investors, and patent examiners and need to clearly communicate complex issues to varying audiences.
What do you like best about your practice area?
Zach: One thing I like best is the constant exposure to new technology. Companies routinely turn to us to protect ground-breaking inventions in cutting-edge areas, and I enjoy learning their technology and inventions. I also like learning about a client’s business, since understanding their business is of paramount importance to developing an appropriate IP strategy. Lastly, I enjoy keeping abreast of the constantly changing legal landscape, including court decisions, new rules, and new regulations.
Chelsea: IP is an evolving field from both the patent law and technology aspects. I really enjoy that I am constantly learning something new and facing new challenges with a broad diversity of types of projects and clients.
What is unique about your practice area at your firm?
Zach: Since our firm is exclusively an IP law firm, we counsel clients in all technical areas. As a result, our firm includes several different technical groups, one of which is the Electrical and Computer Technologies group in which I practice. My group leverages scientists, including many with advanced degrees from top universities, to provide spot-on technical expertise for each client’s individual needs in the computer science and electrical engineering space.
Chelsea: The biotechnology practice group reaches into all different technology practice areas: pharmaceuticals, mechanical such as medical devices, electrical and computational, and chemical spaces. You will frequently find Biotechnology group members involved with clients in other technology areas as well as different types of matters, such as post-grant/litigation. This offers many opportunities to collaborate between different practice groups and share information and experiences.
What are some typical tasks that a junior lawyer would perform in this practice area?
Zach: We strive to give junior lawyers strong experiences from the start. As a result, junior lawyers will perform many of the tasks that more-senior lawyers perform, from conducting inventor interviews to drafting patent applications to helping develop IP protection strategies. We have a strong training program, and we work with junior lawyers to help build their experiences and provide them with the strong foundation they need to succeed in the field.
Chelsea: Most client teams include a shareholder and a combination of one or more associates and technology specialists/patent agents. This structure allows mentorship and training on each individual project, from shareholders as well as more-senior associates. Junior attorneys are involved in a variety of types of projects, including patentability analyses, patent application drafting, responses to rejections from the patent office, and landscape analyses. Initially, junior attorneys will be involved in an aspect of a project and then take on a larger role as they gain experience and confidence.
In what ways has the coronavirus pandemic affected your practice? How have you adjusted to lawyering in the wake of COVID-19?
Zach: In some ways, the pandemic hasn’t greatly affected my practice since many clients and teams were already used to working remotely. But at the same time, the pandemic has also significantly changed aspects of my practice. It is common, for example, for IP attorneys to travel to client sites and to meet with inventors, which has essentially come to a halt due to the pandemic. I really miss these social aspects, which I’m excited to have pick back up again once the pandemic comes to an end.
Chelsea: There was initially quite a bit of uncertainty around how the COVID-19 pandemic would impact the biotechnology field, particularly related to research and development funding and closure of businesses, and how that would consequently affect our Biotech IP practice. However, we saw many clients repurposing their products or development efforts to aid COVID therapeutic development. The pandemic does significantly impact how we interact with colleagues within the firm and with our clients. Regularly scheduling videoconferences has been a good substitute to keep a personal connection.