From Petroleum to Patents

By David Madio, Ph.D.

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One unanticipated thing I’ve learned is that careers often go in directions one would have never imagined.  I’m glad to report, however, that the unexpected path has been filled with more enjoyment than I ever could have dreamed.  And none of the steps have ultimately been wasted, each one making a subsequent one possible.

Briefly, my career path began with teaching physics and mathematics at the secondary school level.  Along the way, I earned a doctorate degree in physics with the intention of teaching at the college level.  A glut of like-minded physicists from both the U.S. and abroad convinced me to continue my magnetic resonance imaging (MRI) research with medical imaging at a national research center.

An unexpected departure of my research supervisor led to an opportunity to join a world-leading research facility in the oil and gas industry, where my career developed to include other measurement modalities beyond nuclear magnetic resonance (NMR) and petrophysical analysis of live-streamed oilfield data.

More recently, I’ve moved from being an inventor seeking patents to a patent practitioner working to help clients protect their intellectual property. And so, I arrived at Osha Liang. When I joined the Firm as a patent engineer (that is, a technical expert), I was told to expect that the learning curve would be extremely steep for the first three to six months.  After that, it would slowly level out until after three years I would have seen most of what there is to see in the world of patent application drafting (known as patent prep) and prosecution (that is, interacting with the national patent office to show by argument and/or amendment that the invention claimed in the patent application should be patented).

Just hours into my first day on the job, I was sitting down with the managing partner for my first assignment.  Later that day, I was assigned to respond to action (that is, an Office Action) taken by the U.S. Patent and Trademark Office (USPTO) regarding the prosecution of a client’s application.  A bit later, I sat down with an experienced patent agent to discuss the case and get further instructions.  The next day, I asked the agent if I would be looking over her shoulder to see how this all works.  Her response was, “No, I’ll be looking over your shoulder.” And so it was.  No one expected me to know everything.  No one expected me to know anything.  But everyone expected me to dive in.  They knew it was hard.  They’d all been there and were incredibly supportive, both as individuals and as an organization.  I was assigned an official mentor who, like me, had a Ph.D. in physics, so we started with some common ground.  Beyond my official mentor, I could always ask others: partners, agents, support staff.  All provided me with helpful information and encouragement.  In addition, Osha Liang provided new legal staff like me and other new hires with about six months of weekly formal training over lunch.

I have now been with the Firm for four years.  Skills like analytic reasoning, developed in industry, have been put to good use in my current position.  Skills like technical writing have been honed, both by virtue of the amount of writing the job requires and by the invaluable review of those more experienced.  New skills such as persuasive writing and a deepening understanding of applicable statutes, regulations, and procedures keep the job interesting.  Opportunities to work on a variety of innovative technologies from a wide range of industries make each day refreshing, challenging, and at times push our abilities to new levels as we work to ensure that the intellectual property rights of our clients are protected.  Opportunities for professional growth include monthly continuing education presentations, becoming registered to stand before the USPTO, and pursuing a law degree.