Michele Clark

A patent paralegal who’s her office’s encyclopedia for foreign filings

Being recognized as one of Law Week’s Outstanding Legal Professionals was a “shock” to Michele Clark — she’s not someone who pats herself on the back, she said.

“I can be the best at my job, but there are still ways to improve.”

Kilpatrick Townsend & Stockton nominated her for the honor, pointing to her stature as a go-to information resource on patent prosecution. Clark has worked as a paralegal for nearly 10 years at the firm’s Denver office, which has one of the largest groups of intellectual property practitioners of any law office in Colorado.

An expert on foreign patent filings, Clark has amassed institutional knowledge not only on the procedures for getting patents in numerous countries abroad but also on the inner workings of the firm’s patent prosecution staff.

The latter has come in handy in a role she took on about two years ago: workflow coordination. Clark works with attorneys to assign paralegals and other staff to clients on patent projects. To be effective, she has to know which staff and clients work especially well together. She also has to have a strong sense of everyone’s workload at any given time, in case any work needs to be moved around to give someone more billable hours or to avoid overloading a staff member. “It’s a balancing act, definitely,” she said.

Clark works closely with the firm’s patent attorneys. “I consider [the attorneys] my clients,” she said. “So if they’re happy, the clients are happy, the firm’s happy, Michele’s happy.”

She got her start in the legal profession as a file clerk for Holland & Hart. She eventually moved up as a case assistant, and when a paralegal position opened up at the firm, an attorney she’d worked with encouraged her to take it. Clark was hesitant at first, but after she agreed to give paralegal work a try for six months, it stuck.

TITLE: Patent Paralegal FIRM: Kilpatrick Townsend & Stockton ABOUT MICHELE: Clark’s favorite pastime is camping with her teenage children. “In a camper,” she specifies. “We tried tent camping a few times..”

What appealed to her was doing paralegal work in patent prosecution, specifically, and not in litigation where she’d been working up to that point. Prosecution presents more day-to-day variety than the more repetitive processes of litigation, she said.

“Prosecution, it changes all the time — laws change all the time, foreign [work] changes all the time,” Clark said. “It’s different every day.” That role had her working with a wider variety of attorneys, clients and inventions. 

Keeping up with changes in patent law, especially since the America Invents Act of 2012, “definitely keeps you on your toes,” Clark said.

One of those major changes in the past several years was the Hague Agreement for Design Patents. Implemented in May 2015, the agreement allows parties to seek a design patent in the 70 signatory nations using a single application.

Clark helped file Kilpatrick Townsend’s first design patent under the Hague Convention system in 2017. She filed three more two weeks ago. “Very exciting,” she said.

It’s a more efficient way for clients to get their design patents into multiple nations. For example, Clark has sent a design patent application, in English, through the World Intellectual Property Office and directed it where the client wanted the patent: the EU, Japan and South Korea. Traditionally she’d have to file three separate applications to their respective offices and with the Japanese and Korean applications translated from English.

“It’s … more cost effective for the client because you just have to pay the one fee,” Clark said. 

She’s still learning about what happens to the applications on the administration side, like troubleshooting when an application is frozen in the system. 

She’s also learning to file Hague applications through the U.S. Patent and Trademark Office — a recent development — in addition to the World Intellectual Property Office. But she’s made herself a resource on Hague filings among the other patent prosecution processes Kilpatrick Townsend staff and attorneys often ask her about.

“I retain a lot of information,” she said. “People are surprised at how much I can retain.”

Clark came over to Townsend and Townsend and Crew in 2010, which merged with Atlanta-based Kilpatrick Stockton within a year.

The biggest challenge in her role, she said, is working with attorneys throughout Kilpatrick Townsend’s other offices, including its outposts in Beijing and Shanghai where there’s a 14- or 15-hour time difference. 

She has to think about time differences when coordinating workflow, making sure someone will be available to come into the Denver office early to work with attorneys and clients in Washington, D.C., or stay later to assist California-based attorneys with end-of-day filings. 

 — Doug Chartier

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