Using Patent Agents In-House: Managing Privilege and Other Best Practices (Part 2) (RECORDING)

The Patent Agent Committee will host Part 2 in a webinar series on “Effective Use of Patent Agents.” Patent agents are increasingly being used in-house as members of patent teams as well as leaders of those teams. In the United States, Patent Agents hold the credentials to practice in legal matters, specifically patent matters, before the US Patent and Trademark Office. However, the job duties of a Patent Agent are increasingly extending well beyond the immediate practice of patent law, ranging from being a drafting and prosecution professional, to an IP portfolio manager, R&D advisor, or project manager. Given the narrow scope of the practice of patent law and all the responsibilities a Patent Agent may hold, there is an inherent lack of clarity on where Patent Agent privilege begins and ends. In Part 2, speakers will provide background and answer questions on current case law around Patent Agent privilege. Speakers will also explore strategies and considerations related to best practices for using patent agents in-house.

Part 1 was held on June 29 where speakers addressed the benefits of having a patent agent program including how patent agents can support legal/business work outside of preparation and prosecution. You do not have to listen to Part 1 in order to participate in Part 2. 

Note: IPO will not be applying for CLE credit for this course.

Gary Ganzi

Senior Director and Head of Intellectual Property

Evoqua Water Technologies LLC | Xylem

Gary Ganzi is the Senior Director and Head of IP for Evoqua | Xylem. Gary serves on the Board of Directors of IPO and is part of the Audit Committee, Board Liaison to Corporate IP Management Committee. He has a 50-year career in water treatment that include employment at Ionics, Millipore, Ionpure, USFilter, Vivendi, Veolia, Siemens, Evoqua & Xylem. He was named inventor on over 40 US patents in the field of water treatment, including pioneering work in commercialization of electrodeionization technology and is the Chair of ASTM subcommittee D19.08 on Membranes and Ion Exchange.

Kate Helmich

Patent Agent

Cargill, Inc.

Kate Helmich has been with Cargill, Incorporated for 3 years and is currently the Patent Agent Team Lead. Kate is one of the Vice-Chairs of the IPO Patent Agent Committee and is passionate about advocating for Patent Agents and getting more STEM students into this career path. Prior to joining Cargill, Kate worked at Quarles & Brady in Madison, WI. Kate has a PhD in Biochemistry from the University of Wisconsin – Madison and a BA in Chemistry from St. Olaf College. Kate and her husband recently moved to the Twin Cities and are enjoying more time with family and friends and gearing up for next hockey season. 

Jenifer Lake

Patent Agent and Senior Manager

Charles Schwab & Co., Inc.

Jenifer Lake is a graduate of Western Michigan University with a double major in Health Chemistry and Biomedical Sciences where she interned at Pharmacia and UpJohn (now Pfizer) working on a new class of antibiotics to combat antibiotic resistant bacteria. Jenifer began her career at Dow AgroSciences (now Corteva) in Indianapolis as a synthetic organic chemist where she spent the next decade working in fungicides, developing new methods of rapid molecule synthesis, and eventually transitioning into regulatory and quality assurance. Upon moving back to Michigan, Jenifer pivoted toward patent law by joining a local boutique law firm for about five years and becoming a registered patent agent. From there, Jenifer moved in-house, first joining BISSELL’s IP team before moving to Charles Schwab Co., Inc. She has been with Schwab for about 14 months getting their formal patent program off the ground and managing their existing patent portfolio.

Jonathan Tolstedt

Patent Agent

3M Innovative Properties Co.

Jonathan Tolstedt is a Patent Agent for the 3M Office of Intellectual Property (OIPC) in Maplewood, MN. Jonathan started his career at Rockwell Collins in Cedar Rapids, Iowa, first as a Technical Writing Group Lead (2 years) and then as a Software Systems Engineer (6 years). Jonathan then moved to the John Deere Electronics Solution group in Fargo, ND, as a software engineer and business development specialist (12 years). While employed with John Deere, Jonathan began studying for the patent bar exam and passed the exam in 2006. In 2008, Jonathan became a licensing associate for the NDSU Research Foundation (5 years), and then moved to Appareo Systems (Fargo) as their Intellectual Property Officer (2 years). Before his move to 3M, Jonathan worked as a patent agent for the law firms of Dorsey & Whitney and Davis Wright Tremaine in Seattle (2.5 years). Jonathan also had a consulting business (a moonlighting gig) providing patent drafting and prosecution services for individual inventors and startup companies in the Fargo area, starting in 2005 through 2015.

Chad Walter

Assistant General Counsel - IP

Chevron Phillips Chemical

Chad Walter is the Assistant General Counsel - IP at Chevron Phillips Chemical, managing the company’s IP department which includes 4 attorneys, 3 patent liaisons, 2 IP paralegals, and 2 administrative assistants. Following graduation from Texas A&M with a Chemical Engineering degree, Chad practiced in the environmental and process engineering fields for six years.  After graduating law school at the University of Houston,  Chad practiced at Carstens and Cahoon, an IP boutique in Dallas, TX prior to joining Chevron Phillips Chemical in 2010.


Using Patent Agents In-House: Managing Privilege and Other Best Practices (Part 2) (RECORDING)
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