
James Monroe
Associate Attorney
Finnegan, Henderson, Farabow, Garrett & Dunner
Washington, DC

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B.S. - Chemical
Engineering, Washington University
J.D. - George
Washington University |
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Associate Attorney |
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"A lot of people,
and I was one of them, blindly go to college and pursue a
certain degree because they had to pick something when they were
in high school. They don't stop and question themselves every
year and say, 'Is this really what I want to be doing?' " |
 
"I spend most of my day on projects to help enforce patents for clients. I
step into the picture once a client has obtained a patent. I get involved
in policing the market to make sure people aren't infringing their patent,
and if there is a company or an individual infringing their patent then I
assist the client in going to court and seeking some type of compensation
or injunction from the court to prevent the infringement, or I help the
client work with the alleged infringer and work out a settlement of some
type, a cross licensing agreement. The other side is helping accused
infringers explain why they're not infringing someone's patent. You also
spend a lot of time reviewing documents and not from the standpoint of
reading, but from the standpoint of analyzing strategy of your opponent
and what their company was doing over the years from a business
standpoint, so it's pretty analytical."

Q: What does a patent
litigator do?
Monroe:
I spend most of my day on
projects to help enforce patents for clients. I step into the picture once
a client has obtained a patent. I get involved in policing the market to
make sure people aren't infringing their patent. If there is a company or
an individual infringing their patent, then I assist the client in going
to court and seeking some type of compensation or injunction from the
court to prevent the infringement. I also help the client work with the
alleged infringer to work out a settlement, such as a cross-licensing
agreement. That's one aspect of what I do from the day-to-day as a patent
litigator. The other side is helping accused infringers explain why
they're not infringing someone's patent, going to court and representing
them, and trying to convince the courts that what they're doing is
completely legal and should not be punished or stopped.
Q: Are the cases that you
work on all related to the chemical or engineering field?
Monroe:
I have been involved in cases
from semiconductor devices, to pharmaceuticals, to conventional chemical
engineering processes. In all of those cases though, there was a
prevailing use of my technological background. I use my education in
chemistry in almost all of the cases I've been involved in. I think the
most common use of my background is chemistry, because no matter what I've
been involved in, from semiconductor devices to pharmaceuticals, it has
had some chemical slant to it.
Q: What would you say the
parallels are between chemical engineering and being a lawyer?
Monroe:
I think they're very similar, and from my personal experience, the
engineers who were going into patent law were some of the better students
and had it much easier in law school than the non-engineers. The reason
is, you learn as a chemical engineer to be a problem-solver, think through
things, and look for answers. In law school, that's basically all you do.
You look at a set of variables and try to figure out how it all fits
together and come up with an answer. My experience from law school was
that chemical engineers, and other engineers in general, have a better
grasp of the problem-solving concept.
Q: What route have you
taken on your career path to this point?
Monroe:
I think that if you talk to
most patent attorneys, they will say that they never planned to become
one. It was happenstance. People don't think, when they're in high school,
that they're going to become a patent attorney, because they don't know
about it. Only children of patent attorneys think about it. I was studying
chemical engineering at Washington University in St. Louis and realized
about halfway through my junior year that I really didn't want to be a
conventional engineer. I wanted to go into something more business- or
marketing-related, something besides just conventional engineering. So I
did research, and it was hard to find out about alternative career paths.
At the time, I just happened to be doing part-time work for a dean at the
law school. One day she mentioned patent law. It stuck in my mind, so I
started writing to people. I used the Martindale-Hubbell, which is the
directory for all attorneys, and found those who had graduated from my
school and had become patent attorneys in Washington, D.C. I wrote to some
of them and said who I was, what I was thinking of doing, and asked for
advice. It was remarkable that about 80% of the people wrote back to me
and gave me real advice, which really shocked me, but I think it reflects
the patent community, which is small. Almost all of them said if you can
do it, come to Washington, D.C., where the patent office is located, and
try to get a job there, and then go to one of the schools there. So I took
their advice and came here, attended George Washington University, got a
job at the Patent Office, discovered what patents were really all about,
and that I had found something I like. I then came here to the firm I'm at
now and started doing patent prosecution. About two years after I became
an attorney, I left the firm to clerk at the U.S. Court of Appeals for the
Federal Circuit, which is the patent appeals court in Washington, D.C. I
took a sabbatical and went there for two years and clerked for a judge who
was one of the authors of today's patent laws. I then came back to the
firm and began litigating. Since I returned, I do primarily litigation. I
also do some opinion work, just counseling clients on what they're doing,
whether or not they're infringing anyone's patents. I also do a small
amount of patent prosecution for the Patent Office.
Q: What advice would you
offer to someone interested in becoming a patent lawyer?
Monroe:
If students are interested in
being involved in patent law and wanted to test the waters to see if this
was something they wanted to do for a career, I would suggest that they
contact a patent attorney and see about doing a summer internship, or
getting a part-time job while they're an undergraduate. I think students
should feel confident enough to contact patent attorneys by looking them
up in the Martindale-Hubbell. They should feel confident to contact the
attorneys and ask them directly for help, because it's a very small and
helpful community. As far as coursework, I think it's very important that
engineering students, and students in the sciences in general, not
overlook writing skills. Too often, engineering programs let you get by
with taking one English course and then one technical-writing course. I
think it's very important, especially if students want to go into patent
law eventually, to focus on their writing skills and take as many writing
courses as they can so they can become persuasive writers. I think that
applies regardless of whether they intend to go into patent law. I have
friends who are engineers who discovered, when they got out of college and
began to be practicing engineers, that there was a lot of report-writing
and summarizing of what they did on a day-to-day basis.
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