Michael R. Ward

In April 2013, Ward's client, Energy Biosciences Institute, was awarded a seminal patent to develop biofuels.

The patent is assigned to UC Berkeley, the University of Illinois and energy company BP, which is funding the research with a $500 million grant. Lawrence Berkeley National Laboratory also is collaborating on the project.

"This shows that this groundbreaking research is patentable and provides value for the money BP has put into this," Ward said.

He was at the forefront of the program, meeting with the scientists early on with their research into ways to form useful compounds for biofuels.

"We looked at it and thought, 'This is really interesting. We would like to broaden that invention,'" Ward said.

But the U.S. Patent and Trademark Office has strict standards on the scope of patent claims they will award, he added.

"Inventors have a broad concept on what the invention is, and the patent office has a different view on how much protection they will give you," Ward said. "Unless you have data to support the idea, the patent office will force you to narrow your claims."

So Ward helped the scientists design experiments that would lead to the production of data over a year to support their claims, worked with the patent office to review the data and, ultimately, secured the core patent.

"This was a case of strategic IP counseling," Ward said. "Working closely with scientists to understand the science. It was a partnership between the scientists and the patent attorney about what is reasonable and what will give you the best IP bang for your buck."

- Pat Broderick