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Paul Clark-Pioneer in Patenting Biological Organisms

Stephen Seckler


  • Paul Clark is a patent attorney who patented the first transgenic mouse for Harvard Medical School.
  • Clark describes his career path into patent law and how genetic engineering creating a whole new subset of IP law now known as biotech during this time.
  • Clark reflects on his career, expressing pride in building his firm, and his decision to recently retire at the age of 75, citing weariness with certain aspects of the job.
  • Clark now spends his time on household chores and pursuing his passion for writing, with two novels in the works.
Paul Clark-Pioneer in Patenting Biological Organisms Wilson

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In April, 1988, Harvard University was granted a patent by the United States Patent and Trademark Office (USPTO) covering a transgenic mouse. It was the first animal ever given patent protection by any country. The patent of the “Harvard mouse” opened the door to the patenting of animals both here and in Europe. Paul Clark was the patent lawyer who prosecuted the patent application on Harvard’s behalf.

Paul spent over 40 years working in the field of IP law, recently retiring from the IP boutique he founded in 1998. Stephen Seckler recently sat down with Paul to talk about his career, which spanned tremendous change in the field of IP.

SES-You graduated from college in 1969 as an English major. What was your first job out of college?

PC-I taught junior high school science in Cleveland's inner city. When I graduated from college, the Vietnam War was still going on and I was classified as 1-A. I don't know if you're familiar with that classification, but that means I was eligible to be called for my draft physical and, if I passed, to be inducted into the army. I was able to get a draft deferment by teaching in the inner city-- Cleveland needed science teachers. So I became a science teacher for a year.

SES- Why did you decide to leave teaching?

PC-Well, I loved teaching, but it wasn't a long term career.

SES- I believe that when you left Cleveland, you moved to Vermont, right?

PC-First I went to New Hampshire, then Vermont. I met a woman who lived in New Hampshire, and then she moved to Vermont. I married her and we had a daughter who is now a 50 year old lawyer.

SES-How did you earn a living in Vermont?

PC-I did odd jobs. We didn't use many resources. My father sent me money every month, not a lot, but enough to live on. Beverly had inherited money from her first husband. So she had some money. And I worked in the general store and sold firewood.

SES-And I believe you said you were milking goats as well.

PC-Yes, but I didn't make any money doing that.

SES-At some point, you decided to go back to school. Can you say something about that?

PC-I was interested in ecology, and I'd taken some biology courses as an undergraduate. Even though I was an English major, I enjoyed them. So I went back to Cleveland for six months and took two biology courses. And then I returned to New Hampshire and lived in New Hampshire part time and in Boston part time . I started graduate school at Northeastern where I ended up doing a thesis in the field of invertebrate physiology. I used an electron microscope which was beginning to get a lot more use at that time. But I also studied ecology and environmental science.

SES-At some point, you decided that you are going to go on to law school at my alma mater, Northeastern. What inspired you to go to law school?

PC-I decided I wanted to help save the environment by being an environmental lawyer. That was not long after Richard Nixon established the Environmental Protection Agency.

Northeastern has a co-op program at the time in which participants had four opportunities to work in legal jobs for three months. During my first co-op at Northeastern, I worked for the Environmental Protection Division of the Massachusetts Attorney General's office.

SES- How did that impact your interest in environmental law?

PC-It dampened it extremely and immediately. It was a lot of bureaucratic red tape, a lot of regulations to wade through and it was boring. And I didn't think we were making much progress in saving the environment. So I got disillusioned and decided not to pursue that.

But I did my next co-op at the intellectual property firm Fish and Richardson which was relatively small then—it had only 16 lawyers. I had a fantastic time. I took to it instantly and was told by the managing partner I was the most talented law student he had ever met. It was a perfect fit for me.

At that time, the firm was focused mainly on inventions that were related to engineering. But they were starting to get to get biomedical cases from the local hospitals and universities. And there were no biologists or chemists in the firm. They were all engineers. And so all that work fell to me. And it was great. It was really interesting and stimulating.

SES-What did you like about patent law?

PC-Patent law requires problem solving. In patent law, there are a lot of logic puzzles and lots of other considerations and it requires strong analytical skills. Most importantly, I just found it innately interesting.

SES-Once you decided to pursue a career in patent law, there were some challenges in getting admitted to the patent bar, right?

PC-Yes. Back then, the USPTO did not consider biology a science for purposes of eligibility to take the patent bar. In order to take the patent bar, you had to have a certain number of college science credits. I had a master's degree in biology, but I only had two years of chemistry, one year of physics, and a year of calculus. And none of that added up to enough credits in the hard sciences to qualify me for admission to the patent bar.

SES-So how did you get around the requirement?

PC- Basically, I used my six months of experience at Fish and Richardson as a substitute for hard science. Today, there are many patent lawyers with a background in biology. Back then, I was one of the first of a small group of lawyers.

SES-What did you focus on at Fish and Richardson?

PC- In my first five years as a lawyer at Fish, I divided my time almost equally between patent prosecution and litigation. The firm grew very rapidly after I joined, and we had a few big lawsuits that we were handling for clients. In the first five years, I got heavily involved in three big litigations that were all based in Europe. So I traveled to Europe frequently.

SES-Which work did you gravitate towards, the prosecution or the litigation?

PC-There were aspects of litigation, which I liked. I like writing briefs and memos. And I like taking depositions. I hated defending depositions. To me, it was torture. You can be at the mercy of the lawyer on the other side of the table. Ultimately, I realized that I was better suited to prosecution.

SES-At the time that you joined the firm, were there any intellectual property firms that were larger?

PC-I believe Fish & Neave and Pennie & Edmonds in New York were both larger but neither of those firms still exist. Fish & Neave was acquired by the firm Ropes and Gray and Pennie & Edmonds dissolved in 2003.

SES-How would you describe the intellectual property field back in those days compared to now?

PC-I would say that it has exploded since then.

SES-What do you think was the biggest driver in the growth of intellectual property since you began in the late 1970s?

PC- Biotech was the big factor. It had been virtually unknown as a subset of patent practice. Genetic engineering caused the explosion.

SES- In the mid-1980s, you worked on the first patent application for an animal. Can you describe what was involved and how that patent impacted the practice of IP law?

PC-I was summoned to the offices of the Chairman of the Genetics Department at Harvard Medical School, and I was told that he made an invention involving a transgenic mouse. I didn't know any more than that. And when I got there, he described it for me. He had inserted a human breast cancer gene into a mouse embryo. And the resulting adult mouse was very susceptible to developing cancer, so it was a good research tool.

And when I talked to Steven Atkinson, the Associate Director of Intellectual Property at Harvard Medical School, we bounced around ideas about what we could patent and of course, method of use patents came to mind. But we also decided that we were going to pursue a patent on the mouse itself.

SES-At the time, what was the most similar invention that had been accepted by the Patent Office?

PC-There had been a couple of attempts in Europe to patent animals, but none in the United States. This is as far as I know, the first attempt. I'm not sure if that's true, but it was the first such patent that issued.

SES-My understanding of patent law is that you're always looking for analogies, especially when you're breaking new ground. So what was the most analogous invention to a transgenic mouse?

PC-There were no analogies. However, I always fall back on the statement by P.J. Federico when he was helping to draft the first patent statute in 1952. He said that inventors can patent anything under the sun that is made by man.

This mouse was made by man and therefore it was patentable. And animals that are not made by man are not patentable. Animals developed through breeding, for example, can't be patented because that is a natural process.

I know the licensee for the mice that we patented was Dupont which sold the mice for $100 each.

SES-Not a bad business model! In the mid-1990s, you decided to launch your own practice. Did you consider other career moves before you decided to go that route?

PC-Yes, I did. I was offered several positions as chief patent counsel at biotech companies. And I considered doing that with stock options, of course. I actually consulted with someone who specialized in talking to lawyers about career moves, a guy named Mark Byers at Harvard who was very helpful. He told me that one thing to consider when making this decision is asking the question “who are your folk?” In other words, who would you like to be associated with in the future?  I decided that I was more comfortable with partners in a law firm.

A couple of those jobs at biotech companies would have made me a multimillionaire. But I don't regret making the decision to start my own law practice.

SES- What made you ultimately decide to start your own practice?

PC-I wanted more control over the way the firm was run. Fish was going through a growth spurt. And I was a little uncomfortable with how rapidly it was growing. I liked the idea of managing a firm with my own partners.

SES-How would you describe the brand of Clark and Elbing?

PC-Excellence. All of the lawyers in the firm are very strong analytically. They're all good writers. And they're all good people.

SES- Did you start hiring PhDs early on?

PC-Yes, we did. We sent them to law school at night at Suffolk University Law School. And a couple of them actually went to Harvard and Boston College during the day and worked part time. We hired PhDs from good schools, a lot of them from MIT and Harvard. We then sent them to law school.

SES-What are you most proud of in your career?

PC-Building Clark and Elbing.

SES- Why did you decide to retire?

PC-There were a number of factors, but I'll be 75 in October. I’ve worked in this field for 43 years. And I was getting a little tired of it. There are parts of the job that wear on you after a while. One of them is dealing with sometimes irrational USPTO examiners who stubbornly refuse to grant patents on good inventions. That's the struggle that we face all day every day as patent lawyers. But at some point, you get tired of it.

SES-How are you spending your time now?

PC-I take care of the household. I pay the bills, I do the laundry, I cook dinner every night. I do all sorts of things like that. But I also am an aspiring writer. I spend part of everyday writing.

SES-What kind of writing do you like doing?

PC-I’ve written two novels, neither one of which has been published yet. I'm going to self-publish the second one, though, I've decided.

SES-What are they about?

PC- The first one was a murder mystery starring a dashing young patent lawyer. I spent a lot of time on it. A couple of high- powered agents in New York were initially interested. But ultimately, they it turned it down.

SES-I wonder where you got the idea for that?

PC-I don't know. It just came to me in a dream.

SES-Did you ever murder any of your associates?

PC-No, the patent lawyer, the protagonist in my novel is not a murderer. He's a good guy. The second novel is based on my wife's career. She was president of a biotech company that hired me 24 years ago to be their lawyer.

SES-Wow, she married her lawyer?

PC-Yes. I married my client. We've been married for 21 years.

SES-Was there a big negotiation involved? Okay, let’s skip that question. What is the second novel about?

PC- In 2020, my wife Margaret left the biotech industry, and she founded a company called Wellcoaches School of Coaching. It was the first school of coaching for health professionals. They train wellness coaches. She is herself an executive coach.

I've written a novel based about a client who comes to a wellness coach to improve her wellness.

SES-So what do you miss most about practicing law?

PC-Oh, the collegiality of hanging around with my colleagues. I miss that more than I missed the actual practice of law. And I still consult with a couple of my partners on patent issues. Even today. Probably twice a week I'll get a call from my former partners when they want to bounce ideas off of me.

SES-Legal ideas, right? Not cooking ideas?

PC-No, they don't consult with me about that, or about murder investigations. Just the law!