His Expert Opinion: Patents and Physics Make Great Partners
By Alaina G. Levine
Robert J. Rose
Robert J. Rose has a passion for patents. As Managing Partner of Sheldon Mak Rose & Anderson, a boutique intellectual property (IP) law firm in Pasadena, California, this physics-educated professional has the opportunity to pursue his passion on a daily basis. And the best part of his job is knowing that his physics background gives him the advantage to deliver superior service to his clients.
“Physics is perfect training for law,” Rose says. “Law school trains you how to think. You have a jump start on that training when you have learned how to think like a physicist.”
Furthermore, “as a physicist, we are always looking at things as a reductionist,” he says. “We are always asking of any physical phenomenon: what underlies what we’re seeing, what’s the cause? This is a very good skill to know as a lawyer.”
Of course, he didn’t always know he wanted to be an attorney. His heart was set on physics from a young age. “It was the subject in high school I enjoyed most,” Rose recalls. “I had the opportunity to work on holograms at a laboratory at the University of Miami and it was like working with magic. I just wanted to continue.”
He nurtured his enthusiasm in the desert, enrolling at the University of Arizona in Tucson. When Rose received his Bachelor’s of Science in physics and astronomy in 1971, he was certain he was destined for a career as an academic astrophysicist. While in graduate school at the University of Colorado, he witnessed demonstrations against the Vietnam War and realized that his love of and skill in physics could be channeled in a different way.
“I became intrigued by legal issues and the politics surrounding the war,” he says. “The draft took some friends and acquaintances, and while I had a high number [in the draft lottery], I think the draft made the war much more personal.”
He took the LSAT and did well. He spoke with his advisor and decided to take a year off from graduate school to try law school. The advisor “thought I was crazy and didn’t have very nice things to say about lawyers,” Rose says.
Returning to the UA for his legal education, Rose instantly found success. “I was good at law school,” he says. He recalls how he and other law students who had training in physics and other scientific disciplines excelled in their studies, while those with social science backgrounds struggled with the logical nature of the subject. To this day, Rose stresses “the single most important class you can take as an undergraduate in preparation for law school is symbolic logic,” he says. “The more classes you take that require precise logical rigorous thinking, the better you are prepared for law school, and life too.”
He easily graduated with high distinction, Order of the Coif, and was an Associate Editor of the Arizona Law Review. After receiving his JD, Rose was selected under the Attorney General’s Honors Program to be a Trial Attorney with the Antitrust Division of the US Department of Justice. Later he served as a Special Assistant United States Attorney in the Central District of California, and as Senior Litigation & Antitrust Counsel and Assistant Secretary of Twentieth Century Fox Film Corporation.
Today, he helps clients at the forefront of scientific research. He is involved in a variety of aspects of the IP protection process. He works with clients to evaluate and prepare their patent applications and handles all communications for them with the US Patent and Trademark Office, including any needed appeals. In addition, Rose often does extensive state-of-the-art research. He is often asked to ensure that there is no patent infringement, or to review the science behind an innovation. He is quick to emphasize his education in physics (as opposed to other scientific disciplines) is especially helpful in this respect.
“Physics training gives you very broad exposure to scientific principles, so no matter what area of science or technology we are dealing with, I have information to draw on,” Rose says.
The work of a patent lawyer can also involve litigation, as well as licensing analysis, in which a technology is identified and patented, and the attorney tries to identify potential licensing opportunities for the innovation.
Rose’s favorite component of his vocation is preparing expert opinions and working on design around studies, which he joyfully refers to as an “intellectual feast”. In providing opinions about the validity of patent claims, from examining the legitimacy of the science to researching who is the rightful owner of the patent, Rose draws upon his physics background. Design around work, he says, is “where you get to really apply a crossover between scientific and legal knowledge so you can come up with ideas for a client that make both practical and technological sense.”
Rose cites a recent opinion project in which he was involved. The client was an academic institution. Within the university, one researcher had secured a patent, while another researcher at the same institution claimed he should be credited as a co-inventor. Rose interviewed both individuals, examined their research notebooks, and established the sequence of events that led to the innovation. His opinion was that both could be considered inventors.
Rose says opinion work, aside from the intellectual stimulation involved in analyzing the problem at hand, is rewarding for another reason: the client appreciates it the most. “When preparing a patent, some clients may want the lowest price and not appreciate the value and the time you put into it,” says Rose. “But with opinion work they are already worried about something, so when you guide them through the patent thicket they’re very happy.”
Although he has the chance to scrutinize cutting edge physics research, often before it is made public, Rose does sometimes miss being a researcher himself. “I miss the joy of discovery, the ‘aha’ moment,” he says.
Of course, there are patent professionals who have been able to forge opportunities in which to do research without abandoning IP prosecution. Albert Einstein, for example, was a patent clerk before he became an academic physicist. Some of his most profound and significant papers were produced while he was employed as an examiner in the Swiss Patent Office.
To develop new skills and to partially satiate his appetite for “doing” physics, Rose recently received a M.S. in Imaging Science from the Chester Carlson Center for Imaging Science at the Rochester Institute of Technology. His coursework included ultrasound imaging and magnetic resonance imaging, and his research project was on a method for segmenting nerves in ultrasound images during guided anesthesia.
Today, Rose’s expertise lies at the intersection of physics and law, with patent litigation experience in such technologies as intra-ocular lenses, magnetic resonance imaging, computer graphics and digital image warping, flight simulators, and amusement rides. He is thrilled with his academic and professional decisions, recognizing his physics education has made him a champion in his industry.
“Physics is the premier base discipline upon which to prepare for any professional or scientific career. It is to the 21st Century what philosophy was in prior eras,” Rose declares. “It teaches you the value of hard work, and it rewards that work with the keys to science, logic, and life. What more could you want?”
Alaina G. Levine directs the Professional Science Master’s in Applied Science and Business at the University of Arizona, and is President and Founder of Quantum Success Solutions. She can be reached through www.alainalevine.com.
© 2007, Alaina G. Levine.
©1995 - 2017, AMERICAN PHYSICAL SOCIETY
APS encourages the redistribution of the materials included in this newspaper provided that attribution to the source is noted and the materials are not truncated or changed.
Contributing Editor: Jennifer Ouellette
Staff Writer: Ernie Tretkoff