Scott Beeser is a Patent Attorney at Apotex Inc. in Toronto. He obtained a Ph.D. in Biology from the University of Utah and a LLB from Osgoode Hall in 2002. He is a registered Canadian Patent and Trade-mark Agent. Prior to joining Apotex, Dr. Beeser was an associate at a IP-boutique in Toronto.
Scott answered a few of our questions about intellectual property.
1. Why did you choose a career in IP?
Largely by accident. While in graduate school, I met many of my roommate’s law school colleagues and was struck that none of them had a technical or scientific background. While I didn’t really know much about patent law at the time, it seemed like a niche where I might be able to most effectively leverage my technical background. So far, this has pretty much turned out to be the case.
2. What is a “must read” IP article/book?
Dennis Crouch’s Patently-O blog is a daily must-read for US patent law. Just when you think you understand some basic aspect of the law, a decision comes out confirming that you didn’t really understand anything. In addition to reporting on recent decisions, the comment section of the blog often raises issues or competing viewpoints that I had not considered when reading the decision itself.
3. What are the key substantive IP challenges that are faced in Canada and abroad that you would like to see more attention paid to?
A stronger push for international harmonization. While there has been a move towards harmonization, more needs to be done. Claim construction is a good example. In the US, claim construction is often determined by statements made by the applicant during prosecution, resulting in so-called “file-wrapper estoppel”. In Canada, the prosecution history is legally irrelevant for claim construction. Given this difference, the same “invention”, and indeed the identical claim language, may result in very different constructions. This uncertainty is neither helpful to the patentee or the public.
4. What is the name of a mentor that has guided you in your career (and how)?
Yoon Kang. While associates often get pigeon-holed early in their careers into either patent prosecution or litigation, Yoon supported my decision to be active in both areas. This really helped my development as a lawyer. Lessons learned in litigation informed my prosecution practice and vice versa.
5. Do you have “words to live by”?
Patent law must balance the interests of owners and the public. Unreasonably extending the scope or term of monopoly is as damaging as denying protection to a meritorious invention. While this balance may often be forgotten when representing the interests of a particular client, it shouldn’t be.
6. What are the most significant changes at Osgoode Hall Law School since you were a student?
The increased awareness of IP . When I was at Osgoode, there were no full-time IP faculty. The patent and copyright courses were taught by a professor from another university who commuted to York once a week. The trade-marks course was taught by a local practitioner. Now, it appears that the law school has made a commitment to developing a robust IP program, including IP Osgoode.