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Meet Gabriela Tomescu, US patent attorney

Gabriela Tomescu, US Patent Attorney at Bergenstråhle & Partners, finds it stimulating to teach US patent practice at IP-akademin and that a good understanding of US IP is very helpful for more Swedish patent attorneys.

Tell us about your background in IP

My involvement with IP followed a roundabout path. In the US, people usually pursue their technical or scientific studies, earning their Master’s Degrees or PhDs, and then take IP courses to become patent agents or attend law school to become patent attorneys. In my case, I attended Georgetown University Law Center and, upon passing the California Bar Exam, I became an attorney specializing in civil litigation. Since I sought courtroom experience right away, I worked on products liability cases, especially asbestos cases.

However, within a few years, I came to realize that products liability litigation involved a lot of destructive interactions, all in the name of maximizing profit and minimizing losses. I decided to leave civil litigation and refocus my career on positive interactions. I remembered my two favorite classes in law school: patent law and antitrust. Patent law was particularly appealing, but unfortunately, I lacked the scientific background. That was no hindrance, since I have always enjoyed learning. When choosing a scientific background, I opted for biology, based upon my lifelong love for the natural world. 

In the spring of 2002, I enrolled in the Ohio State University’s bachelor program in microbiology. Once I obtained my degree in microbiology, I sat the USPTO’s Bar Exam and became a patent attorney.  However, finding my first job was not easy, since US law firms usually seek patent attorneys who follow the “technical background - first, law school - second” path.  Furthermore, a bachelor’s degree in microbiology was not enough for most biotech patent attorney positions.

However, the start-up environment in California proved much more welcoming. A small medical device start-up in Cupertino interviewed me and the CEO hired me on the spot. That was back in 2005. Unfortunately, nine out of ten start-ups do not make it in the US. Thus, in 2013, after working for three start-ups that eventually failed and on my own as a patent consultant, I decided to try a more traditional path in a law firm. My husband, a Swedish national, wanted to return to Sweden, and I applied for positions at various Swedish IP firms. I chose Bergenstråhle & Partners due to their open, cosmopolitan culture and because they actively sought to pursue a US practice.

This winter, you have held three new seminars: Patentability of mathematical methods, Differences in practice, and tips and advice and lectures on USA IP at Grundkursen. Tell us about your experiences so far and what you like most about working with IP-akademin?

First of all, when Rut Herbjörnsen and IP-akademin asked me to teach patent seminars regarding US practice, I was both flattered and, in a sense, relieved. In my six years of working in Sweden, I have met numerous Swedish patent attorneys. Some were very knowledgeable about US patent practice, but others needed more background. At Bergenstråhle I had exposed my colleagues to US patent practice and trained two IP administrators to become US paralegals; I think that this training benefitted Bergenstråhle’s clients. Living in Sweden, I wanted to share my knowledge with other Swedish patent attorneys, as well. IP-akademin seemed to be the most appropriate venue. Given the number of Swedish individuals and companies filing US patent applications, it would be very helpful for more Swedish patent attorneys to have an understanding of US practice, so as to strategically advise their clients in the pursuit of US patents, of course, with the help of US patent agents or attorneys.

Secondly, teaching the various seminars is very stimulating. The seminars’ preparation requires re-thinking the specific topics, finding a way to clearly explain a number of difficult concepts to patent attorneys coming from a different legal background. The discussion of these topics with Swedish patents attorneys is thought-provoking. I enjoy being questioned about a number of concepts that previously I may have taken for granted. Of course, I also welcome questions for which I do not have a ready answer, which I need to research further. Overall, the seminars have involved a two-way teaching process: not only have I taught the participants, but they have also taught me.

Is there anything you would like to add?

The isolation due to the coronavirus crisis has brought about new solutions for interaction and cooperation within the IP community. What could have been a difficult time in terms of meeting with other professionals to exchange knowledge, has been overcome by on-line seminars and classes. Granted that live classes with live interaction are still preferable, but WebEx courses have helped avoid complete isolation. Fortuitously, IP-akademin has really helped sustain a level of normalcy within IP practice education.