Law evolves with growth of biotechnology

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Noonan took the law school route after completing his PhD in molecular biology in 1990, and after spending much of his time in the laboratory setting, conducting experiments on genes that cause cancer, and on genes that make cancer cells resistant to drugs.

”In the lab, you do these repetitive, Zen-like things,” Noonan said. ”Academic scientists get really, really focused on their area — You can be successful in science at some level and still not really get anywhere, or not feel you’ve gotten anywhere. It’s not easy; it takes a very long time.”

As a biotech patent lawyer, Noonan said, ”I’m not involved with the failed experiments. I’m talking to people whose experiments have worked and have come up with something neat and cool.”

Howrey’s Clough worked in academia — as a faculty member of Northwestern University Medical School and at the College of Medicine at the University of Illinois at Chicago — before deciding to pursue a law degree, on top of his doctorate degree in microbiology.

”Back when I applied to law school in the ’80s, there were relatively few people with advanced degrees that were going into law. Now, some are going straight through to law school,” Clough said. ”There remains a demand for attorneys with this kind of background, although I don’t think it’s anywhere near the demand we had in the late ’80s and mid-’90s. Not that there is necessarily a decreased demand, but there are many more people that come out with advanced degrees that are looking at the law as a career alternative. Back in the ’70s and ’80s that was basically the career path: either go into industry or become an academic.”

McNicholas saw a new career opportunity in law when she was at Stanford University, conducting scientific research on immune response genes and proteins as part of her post-doctoral work in 1980, the same year Genentech went public.

”The first postdocs out of the lab I was working in were being recruited to Genentech to do research. It was an incredibly exciting time. It was there that I learned about some fundamental patents filed by Stanford,” McNicholas said. ”That’s when I thought, ‘My goodness — this science is going to have to be translated, and I could be one of those translators.’

”What we’ve all become are, really, translators of that science and technology into patent rights,” McNicholas said. ”We take science, and translate that into law and legal rights.”

Looking to the future

Some of the future developments in biotechnology, and in areas for potential growth in patent work, will likely come in the form of breakthroughs related to the production of biofuels, practitioners said.

”It’s already starting to be a very big area for patenting, in terms of how to process these materials,” McNicholas said. ”It’s very important for us in the Midwest because we have so much expertise and so many possibilities for expanding agricultural sources for both improved food stuff and improved fuels.”

Practitioners also predict continued developments of new biotechnology drugs, like breakthrough ‘’smart bomb” drugs that target cancer cells, leaving healthy cells untouched; inventions in the area of ”personalized medicine,” where drugs are targeted to subgroups of people based on their genetics; more specialized diagnostics; and in stem cell research — meaning more patent work is likely to come from those areas.

Researchers using biotechnology tools are working on ”almost anything you could think of,” Noonan noted. ”Biological detectors for toxins, viruses, bioterror agents; gene therapy approaches to treat ‘loss of function’ diseases like sickle cell anemia and a variety of immunological diseases; new plant varieties resistant to natural and man-made toxins; and, really, almost too much to list.”

The Human Genome Project, Noonan pointed out, unleashed a deluge of new genetic information for scientists to work with in the years ahead.

”One of the things that’s happening is that we’re kind of like one of those explorers who finds a new pyramid and opens it up and has all this information. The Human Genome Project gave us all this genetic information and, frankly, we don’t know what that means,” Noonan said. ”It’s going to be very much, figuring out how the body works, how cells work. There’s all sorts of diseases — Down syndrome, spina bifida — all these things that have a genetic component.”

While the San Francisco Bay Area and Boston have been considered biotech hotbeds, particularly in the life sciences sector, many Chicago biotech lawyers said they are positioned well in a thriving practice area.

”I think we’re getting our piece of the pie,” Noonan said. ”One of the things about biotechnology is, it certainly is not as regional as other technologies. We all kind of do local stuff, but I have clients in Austria, Spain, Boston, on the West Coast — we all do. By its very nature, it’s not the kind of a practice that really is regional in that sense.”

Industry experts and local biotech patent lawyers said they are hopeful that the Midwest, Illinois, and Chicago — home to many universities and research institutions, including the University of Illinois, University of Chicago, Northwestern University, and Argonne National Laboratory, and medical companies such as Abbott Laboratories and Baxter — will play a key role in the future growth of the biotechnology industry.

”It’s a warm bed right now, but I’m seeing it grow,” Clough said. ”Part of it is the mindset of the venture capital firms here. Traditionally, Chicago has been a steel and iron and broad shoulders sort of technology.

Biotechnology, compared to these other Midwest industries, is sort of the new kid on the block. But we’re seeing more and more private equity going into these biotech companies.”

As the biotechnology industry continues to grow, the need for IP lawyers with a background in the field is likely to continue.

”Bright people continue to be born and work their tails off and make scientific contributions,” Borun said. ”As long as there are scientific contributions, there will be a basis for a patent. And some of these will be valuable for their entire term, and some will be superseded by better developments later on. It’s really kind of endless.”

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