“After spending time in both the examining corps at the USPTO and at the PTAB, I feel prepared to both guide inventors through the process of attaining patent rights and enforcing or defending those rights before an adjudicative body.”
From patent examiner to judicial law clerk
As a former patent examiner, Samuel brings a unique perspective to what it means to be a judicial law clerk with the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO). But his USPTO experience didn’t begin as an examiner—it started when he was still a student at the University of Louisville Brandeis School of Law, which he attended after achieving his Bachelor of Science degree in bioengineering, also from the University of Louisville.
“During law school, I spent a summer working at the USPTO within the Office of Patent Legal Administration (OPLA) and returned to work full-time as an examiner in TC3700 (mechanical engineering) after law school in June 2019,” Samuel explains.
What initially led Samuel to the USPTO was his desire to “get a look at the agency constitutionally tasked with promoting the progress of science.” This noble task is what patent examiners like Sam spend their time doing as public servants each and every day at work.
“I knew there would be no better place to gain the foundational skills needed to become a competent patent attorney,” says Samuel. It was this ultimate career goal that drove Samuel to apply to be a PTAB law clerk, a role that supports the overall mission of the USPTO in a different, yet still critical, way.
A day in the life of a judicial law clerk
From day one, being a PTAB judicial law clerk was full of ample opportunities to learn. Samuel says that “the USPTO has a well-developed training platform. As a clerk, I received an intensive onboarding regimen that included live meetings with a variety of persons at the Board. These onboarding sessions taught me how APJs [administrative patent judges] handle day-to-day logistics associated with evaluating cases, best practices for working with panels of APJs, and other essentials. The Board also hosts weekly trainings sessions to inform its members of recent developments in substantive law or reiterate best practices.”
After training, each day as a PTAB judicial law clerk presents an interesting challenge. “As a law clerk, I get to be an expert on the facts of each case. I have the ability to analyze intricate and specific situations on my own, recommend a course of action, and ultimately assist in drafting the legal determination associated with those specific fact sets,” Samuel says.
“I can work independently, or in collaboration with others, for significant portions of the day to prepare some sort of reference file or a work product. Frequently, our team of clerks will meet with each other and other members of the Board to work out any issues we may encounter,” Samuel says.
Working alongside administrative patent judges and attending hearings
Samuel’s favorite part about being a PTAB law clerk is “getting insight into the mind of an administrative patent judge.” He shares that “working alongside an APJ provides the opportunity to learn about objectively distilling facts into a condensed legal opinion. It has allowed me to identify and anticipate both sides of an argument being made, and then ultimately rule upon that determination.”
Attending hearings is another important opportunity that Samuel’s clerkship provides. And the hearings that are most interesting to Samuel always involve counsel who have to argue points under-developed within briefs. Why? “Well,” Samuel notes, “I think a well-developed brief provides an ample argument base for an attorney while under-developed briefs hinder an attorney’s scope of arguments.”
Critical insights like these will inform Samuel’s approach to his future career intellectual property attorney.
Next stop: practicing IP law
“After having spent time in both the examining corps at the USPTO and at the PTAB, I feel prepared to both guide inventors through the process of attaining patent rights and enforcing or defending those rights before an adjudicative body,” says Samuel. “In sum, I think practicing IP law at a law firm is my next step.”
But Samuel is not in any rush, and takes time each day to appreciate where he is now. “I think the USPTO consistently ranks as a best place to work because we have an environment that is mission-focused and also maintains an equilibrium of work-life balance,” Samuel says.
“My favorite part about the USPTO is the people…the employees who work here take pride in the quality of upholding the patent system, but know how to work in a collegial manner and relax where appropriate.”
Samuel advises others who are interested in joining the USPTO as PTAB judicial law clerks to first think about their passion for patent law and how they’d like to develop, because “it is patent law day in and day out here!” For a hard-working IP attorney like Samuel, that’s the exact type of work environment where he thrives as a professional.