Michael Fisher

michael fisherBS electrical engineering ’87, MS ’89, PhD ‘93

Occupation: Intellectual property attorney

Company: KaVo Kerr Group, Hatfield, PA

 (This profile appeared in the ECE Network newsletter in 2008. It is updated with information from Fisher's LinkedIn page.)

Michael Fisher earned his BS, MS, and PhD, all in electrical engineering, from the University of Rochester. Finishing his PhD in 1993, he took an unusual career path for someone so thoroughly grounded in engineering: in 2000, he earned his JD from Columbia University.

In April 2007, Dr. Fisher returned to the ECE department to speak to students about patent law. Approximately seventy-five students attended his talk, Careers in Patent Law and So You Want to Be a Technology Entrepreneur? Create a Smart Patent Strategy for Your Company’s Inventions, where they learned about legal careers and about some of the business and legal aspects of developing new technology. Topics included key ways to protect and use intellectual property using patents.

Dr. Fisher said that many patent attorneys have science or engineering backgrounds, often at the BS level, but sometimes at the MS or PhD level. “It’s very helpful to have the PhD,” he said, “because it makes it easier to understand the more complex technologies. There’s also a big demand in patent law for people with a PhD in engineering.”

Fisher explained some of the work patent lawyers do: “In patent prosecution, you meet with inventors, write the initial application that is filed in the Patent and Trademark Office, and respond to the examiner’s assessment of whether you are entitled to a patent. In patent litigation, you investigate products accused of patent infringement. Typically, the plaintiff and defendant have a dispute over whether the defendant’s product infringes the plaintiff’s patent. The plaintiff develops arguments that the product infringes the patent. The defendant counters by arguing that its products don’t infringe or that the plaintiff’s patent is invalid.”

Dr. Fisher remembers his engineering research fondly, but he knows that, for him, the move into patent law was the right one. And it didn’t take him long to make that move.

In 1993, Fisher got a postdoc at the Naval Research Lab in Washington D.C., where he did research on superconducting materials and devices for two years. Then he moved to suburban New York City to take a job at Hypres, a company developing superconducting circuits and micromechanical devices.

He invented a couple of things Hypres decided to patent, and working closely with Hypres’ patent attorney, Fisher found the process fascinating.

He realized that there was a huge demand for patent practitioners, that the demand would remain very strong over time, and most of all, that he liked the work.

So he started looking for a job in patent law and got very quick results. Within two weeks, he had lined up several job interviews at law firms, and receiving two offers, he accepted a job at Oblon, Spivak in Arlington, Virginia. After seven months learning how to obtain patents for clients, Fisher decided he was ready for law school and entered the JD program at Columbia.

While at Columbia, Fisher did patent work in the summers for Fitzpatrick, Cella and later for Baker Botts, a firm that offered him a job after graduation. For three years, Fisher was a patent attorney in the New York City office of Baker Botts, developing patents for inventions in electronics, software, and financial instruments.

He became interested in lawsuits involving patent infringement, and he ended up joining Kirkland & Ellis, also in New York City, to work in patent litigation. There, he was involved in the well-known Rambus versus Infineon case, involving memory buses.

In 2006, he took a job at Dechert, doing a mixture of intellectual property litigation and patent portfolio analysis.

In 2011, he joined KaVo Kerr Group of Hatfield, PA, where he is sole intellectual property attorney for roughly half of a $2 billion plus business division selling equipment and supplies for dentists. He is responsible for all patent, trademark, copyright, trade secret, and other intellectual property issues, including patent portfolio development, patent and trademark prosecution, licensing, litigation, and transactional due diligence.

For Michael Fisher, his University of Rochester degrees in engineering coupled with a law degree placed him exactly where he wants to be. His career moves were quick and ambitious, and definitely a good choice for someone interested in the business and legal aspects of engineering.