“TRIPS” Down Memory Lane: An Interview with Sarah Johnson

Sarah Johnson is an in-house attorney at Kemin Industries. She handles the everyday business concerns regarding intellectual property (IP), international business, and contracting. Prior to working at Kemin Industries, Sarah learned successful litigation strategies as an associate attorney at Foran Glennon Palandech Ponzi & Rudloff.

She graduated from Cornell College in Iowa with a Bachelor of Arts in Biology and a minor in Religion before attending Loyola University Chicago School of Law. While at Loyola, she competed on the National Health Law Moot Court Team and the Appellate Lawyers Association Moot Court Team. She wrote for the Annals of Health Law and Journal of Regulatory Compliance. Sarah externed at Shirley Ryan AbilityLab and clerked for the Honorable Judge Neil Hartigan in the Court of Claims. She was also a research assistant for Professor Cynthia Ho, who mentored Sarah during her time at Loyola after connecting during a prospective student tour. Sarah then went onto take all of Professor Ho’s IP courses in addition to completing the Advocacy and Health Law certificates. She was also a member of IP Bytes.

We recently spoke about her background, her Loyola experiences, and how IP has influenced her legal career.

 I noticed that you have a biology degree, how did you end up in law?

Photo by Sharon McCutcheon on Unsplash

I thought science in general was really interesting. I went into undergrad thinking that I would go to medical school. Eventually, I decided that the medical career path wasn’t for me. However, I still loved science. And, I still wanted to work towards my bio degree. The issue then was what would I do? I knew that I didn’t want to be in a lab. I knew that I wanted to interact with people and handle the paperwork side of science. I took a public policy course and focused on generic pharmaceuticals and the policies surrounding them, and I loved it. I wrote a research paper on generic pharmaceuticals regulations, and I enjoyed the legal research behind the topic. It wasn’t just another course or assignment.

Following that class, I talked to some professors, and worked with some pre-law advisors at Cornell College and determined that law school would be the best marriage of my interests.

I visited a bunch of law schools trying to figure out best way to merge my policy and law interest, my science interest, and my interest in the health field. IP was the route that seemed to make the most sense.

What drew you to Loyola?

Around my junior year, Cornell College did a Chicago law school trip. We visited Loyola and I loved the health law program and the community atmosphere. Then I met Professor Ho who indoctrinated me to the whole Loyola experience. I went to visit Loyola again my senior year, on my own. Professor Ho remembered me which made it evident that the connections made at Loyola really stick with you. That experience and the opportunity to merge my science, health law, and policy interests based on their wide array of course offerings pulled me towards Loyola.

What was your favorite IP class?

My favorite IP class was Professor Ho’s class on Global Access to Medicine: A Patent Perspective. The TRIPS class discussed international aspects of IP, including that most countries must comply with IP rules under the TRIPS Agreement (which requires all WTO members to provide minimum levels of IP).

That class provided helpful knowledge for my current job. In fact, we’ve been working on issues regarding patent rights in multiple countries, and I had my coursework opened to refer to it.

What experiences helped you get to your current job?

I worked in Shirley Ryan Ability Lab’s patent area. I specifically focused on prosecuting a patent in-house, which refers to drafting patent applications to establish patent protection and rights for an invention. I was able to write on a couple of patent applications that became granted.

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The coolest patent worked on was for a video game that trained the user to use a prosthetic. The individual would have electrodes attached to their body and when they tensed the corresponding muscle, it would move the simulated arm in the video game. Once the individual received their prosthetic, they knew how to move it based on their video game experience. It was so cool.

My time at Shirley Ryan helped me figure out that being in-house working with patents was something I wanted to do. It was one of my favorite experiences of law school.

Post-graduation, I worked in a non-IP litigation firm downtown for a couple of years. It wasn’t exactly what I had planned to do when I entered law school. But, I found that it’s difficult as a strictly bio major with just an undergraduate degree to get your foot in the door. I decided I wanted to gain some litigation experience and work my way up. Then, the pandemic hit, and I found the job that I’m at currently by setting alerts on LinkedIn and Google jobs.

I help manage the patent portfolio, i.e. all the patents owned, at a large company in Des Moines, Iowa. This means I work with our outside counsel to help prosecute the patent, work through licensing agreements, interact with inventors and business units to determine the best countries to patent with our business strategies in mind, and then determine whether we can/should sue if we find an infringing product. We work in a bunch of realms, but I get to use my biology degree daily. My biology background helps me to understand the biological products and processes we’re working with through patentability and freedom to operate searches. A freedom to operate search is looking for prior patents that would prevent your company from having a patent. This was something that I wanted to do, and I get to see the inner workings of a large global company.

What do you do every day in-house?

The great thing is that I don’t have a day to day. Everyday is different. I do a lot of IP management. This means I get to assist in the filing decision regarding where patents are filed in the US and abroad, what we decide to assign to outside counsel for patent prosecution, and what patent prosecution strategy to pursue dependent on where we are going to prosecute any of these patent applications.

Photo by Scott Graham on Unsplash

We have a large portfolio of about 400 patents. I work closely with our primary outside counsel, i.e. a firm that we have hired. They do our prosecution and some litigation. I get to be the liaison between our outside counsel and our inventors in determining how to respond to “office actions” from the patent office. A patent office action is a written document from the patent examiner to an applicant, who must address issues raised by the examiner.

I also help decide what steps we need to take in order to secure a grant of a patent, and where the most economically advantageous places to file are worldwide. We have to consider where the inventor is located and where we need to file first. We need the location of where we prosecute to make sense since you don’t want to prosecute a patent in an area where you are not going to or are not able to defend it.

Strategy is fun. It’s trying to figure out, “Well we want to go into this market, but does it make sense to go into this market in this country and have patent protection?” We have different business units, such as, for animal food, animal feed, human food, vaccines, and textiles. Our inventors are always coming up with new and exciting ideas and we’re able to conduct freedom to operate searches in-house.

What advice do you have for students/aspiring IP lawyers?

Professor Ho gave me really great advice after my first year when I was trying to decide which classes to take out of a sea of possibilities. She said, “You got to law school knowing how to study, so you’ll be fine studying for the bar. Take courses that interest you.” I took that advice to heart and took classes that interested me. I made sure to include classes I wasn’t going to be able to see or spend as much time on post-law school other than a one-to-two-day seminar (or a Zoom meeting). For example, I took Police Accountability with Professor Stephen Rushin during my 2L year. While the knowledge wasn’t as relevant to the work I’m doing now, it taught me how to learn and research which are the important parts of law school. It also was valuable information to know outside of just being a lawyer.

Chances are if you are determined enough, you will make it and you will find someone like Professor Ho, who believes in you and will push you to do better. Believe in yourself.

 

Suet Lee
Associate Blogger
Loyola University Chicago School of Law, JD 2023