The talented legal team at NK Patent Law is engaged in the innovation communities in Raleigh and Winston-Salem. Patent attorney Joseph Shin regularly presents at special events for entrepreneurs and inventors, sharing insight and best practices on intellectual property law. Shin heads-up the firm’s Winston-Salem office in the Wake Forest Innovation Quarter, preparing and prosecuting patent applications in biomedical devices, pharmaceutical compounds and electro-mechanical systems, among others.
Q: What are your impressions of the entrepreneurial community in Winston-Salem?
The entrepreneurial community in Winston-Salem has surprised me with its energy and enthusiasm. I was just at the opening of the Venture Café Winston-Salem recently. The turnout was impressive, with major business leaders, inventors, startups, and students all eager to contribute and learn.
Q: What types of clients are you seeing in Winston-Salem, and what are some of the things they are looking for help with?
Most of the clients we’re seeing in the Winston-Salem office are startups in the pre-seed stage. For a tech focused company, it is often crucial to obtain patent protection during this stage to differentiate itself in the market and to attract outside capital.
However, companies in this stage also have limited resources, both time and money. So we work with them, identifying their business goals and pursuing IP strategically to fit their goals.
Q: How does the pace of Winston-Salem differ from D.C./Virginia?
Well, it’s certainly nice to be able to leave the house at 8:30 and be at the office before 8:45.
I do notice that things are much more relaxed down here: not every emergency is an apocalyptic crisis and not every deadline requires you to work through the night. I like that people here take the time to meet over a long lunch.
Q: You’ve presented to some classes at the Nussbaum Center for Entrepreneurship, what were those like?
I presented an introduction to intellectual property seminar geared towards startups and small businesses earlier this year. Intellectual property is such a crucial component of creating a successful business, but a lot of first-time entrepreneurs don’t spend nearly enough time or resources thinking about it and how it fits into their business. My presentation was focused on getting small business owners and startups to understand the business benefits of pursuing intellectual property rights, learning to identify intellectual property needs, and to avoid pitfalls related to intellectual property.
Q: What are some of the common questions you get about intellectual property and patents during your classes?
The more tech-heavy businesses tend to ask questions concerning the cost and timing of acquiring patent rights on their technologies and what kind of return on investments they’re likely to see. Another common question is about the difference between patents and trade secrets, and the benefits and drawbacks of each.
Q: Are there aspects of IP law and patents that fascinate you?
Like many other patent practitioners right now, I am very much fascinated by the subject matter eligibility requirements of 35 U.S.C. § 101 that were the center of the Supreme Court decision Alice v. CLS Bank. The Federal Circuit has been rendering a steady stream of decisions applying Alice over the last few years, and it has been fascinating to follow those decisions. I am relieved to see that Alice was not a death knell for all software patents as some thought, and each new case gives me new and useful guidance on how to overcome § 101 rejections at the USPTO on behalf of my clients.
Q: You worked at the U.S. International Trade Commission assisting in the adjudication of intellectual property related trade disputes. What was that like?
I learned a tremendous amount about litigation, adjudication, and substantive patent law working under Administrative Law Judge Lord at the International Trade Commission. Our dockets were packed and the pace was quick, so between managing discovery disputes between the parties, adjudicating motions, presiding over hearings, and writing opinions, we had our hands full.
By not only seeing, but actively deciding the outcome of such a large number of patent disputes in such a short period of time, I learned to prepare and prosecute patent applications not just to make it through the USPTO, but to survive challenges in judicial forums after they are issued.
Q: You’ve worked with a lot of interesting technologies: software, biomolecules, biomechanical systems, pharmaceuticals, electro-mechanical systems, telecommunications. Do you have a favorite technology, or what aspects of certain technologies interest you?
I’m currently very interested in probiotics and delivery systems for probiotics. They are still not understood very well, but there is a lot of interest and activity around them and how to incorporate them into consumer products in a meaningful way. I believe this technology is on the verge of a market breakthrough very soon.