By Sheila Pursglove
Legal News
Dr. Keith Weiss is not just an intellectual property attorney – he’s also an inventor, listed on 30 issued U.S. patent applications with four more pending.
His strong science background and more than two decades in corporate research and development are a boon for Weiss, an attorney since 2009 with Brinks Gilson & Lione, in Detroit and Ann Arbor, who understands the product development cycle having been through the process many times.
“I’m able to learn and write about new technology without having to create it myself,” he says. “The ability to interact with R&D scientists and corporate executives on their level is an asset when attempting to maximize their return on investment through the development and management of a patent portfolio aligned with their strategic business plan.”
Weiss has experience in the development of advanced materials, applications, and equipment; R&D management; process engineering; quality operations; technology licensing; government R&D funding; and IP management; and extensive global experience in multiple industries including automotive, aerospace, coatings, plastics, and microelectronic fabrication. His focus on IP Law emphasizes strategic planning, portfolio management, patentability opinions, patent prosecution, infringement analysis, technology licensing, business planning and agreements, and trademark enforcement.
On October 13, Weiss presented “The Evolving Intellectual Property Landscape for Nanomaterials” at the Materials Science & Technology (MS&T) 2014 Conference and Exposition in Pittsburgh. His overview of the patent landscape relative to nanomaterials and players in the field highlighted opportunities and roadblocks to the future deployment of such materials in nanotechnology applications.
Nanotechnology – a “buzzword” that has sprung up over the past few decades – represents a broad area that covers everything from materials to devices and even systems, Weiss explains; and adds that, although nanotechnology has been around for many years, the importance of nanoscale features has gained recognition only over the past decade due to technological advances that make it easier to measure in the nanometer range.
“To put this size in perspective, a nanometer is one billionth of a meter,” he explains. “Nanotechnology is important because nanometer-sized particles and other nanoscale features often exhibit properties, such as strength, conductivity, and optical absorption, that are significantly different from properties exhibited by similar matter on a much larger or bulk scale.” Weiss has given more than 50 presentations at conferences and symposia, relating to his scientific research as well as on legal topics ranging from general patent workshops to detailed discussions regarding the patent landscape associated with various technical areas. He also has published some 25 technical papers discussing the work in his patents.
Weiss’s passion for science dates back to his high school days in Jamestown, N.Y. Inspired by a teacher, he went on to earn his undergrad degree in chemistry, magna cum laude, from Clemson University, in South Carolina; and a Ph.D., in inorganic chemistry, from the University of Florida. Entering the corporate world, Weiss enjoyed the diversity of R&D. At Dow Corning in Midland, he conducted research related to the hermetic protection of microelectronic circuits utilizing sol-gel type coatings and depositing films by plasma enhanced chemical vapor deposition. Several patents involving the conversion of hydrogen silsesquioxane precursors to silica films are part of a patent portfolio that protects a product line used to form interlayer dielectric layers in microelectronic devices.
At Lord Corp., in Cary, N.C., he worked on the development of fluids whose flow properties are controllable through the application of electric or magnetic fields. Several patents were issued on magnetorheological fluid formulations used in controllable dampers or shock absorbers.
In his work at Minneapolis-based Graco, Weiss managed an applied research function that developed an understanding of interactions between application equipment such as pumps, meters, and applicators, and materials such as paints and adhesives that are circulated and then applied to a substrate. In his last corporate position, at Wixom-based Exatec –a joint venture between GE Plastics and Bayer AG, now a sole subsidiary of SABIC Innovative Plastics – Weiss was on a team that developed plastic window systems and methods of manufacturing them for use by the automotive industry. Several patents related to scratch resistant coatings, black-out inks used in 3-D printing, and conductive inks used to form heater grids issued on work conducted here are part of the patent portfolio that covers automotive plastic window systems offered by SABIC Innovative Plastics. At Exatec, Weiss got involved in the overall development and management of the company’s IP portfolio, became registered with the USPTO as a patent agent, and coordinated and managed activities with external IP counsel while still performing technology development. “A patent that provides protection for a product that is commercially successful offers a scientist the utmost satisfaction,” he notes. “I’ve been fortunate that several of the patents on which I’m listed as an inventor fall within this area.” Becoming an IP attorney himself was a logical career progression. Weiss chose Cooley Law School for its flexibility of evening and weekend classes, option to take reduced number of classes over a longer period of time, and an emphasis on practical experience, as well as advanced training opportunities in IP through a joint J.D./L.L.M. program. According to Weiss, the IP field is a good career niche. “It’s definitely an area any law student with a science oriented undergrad degree should consider,” he says, but recommends that in order to stand out from the crowd, a student should consider obtaining a master’s or doctoral degree in a science, or gain actual R&D experience, before attending law school.
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