2/13/2013 Lyanne Alfaro
Written by Lyanne Alfaro
On February 6, Donovan spoke with Mechanical Engineering Seminar (ME 390) students on engineering opportunities and challenges in his business area. He explained how he arrived at his current career and what it entails.
Upon graduation, Donovan was hired through a placement program and began working for Sargent & Lundy, a Chicago consulting firm in engineering.
"I decided I wanted something else beyond the engineering degree," Donovan said. "I ended up choosing the law degree route."
He started as an IP lawyer in 1987, working in a boutique firm that covered IP law and nothing else. At the time, 20 to 100 lawyers were employed at every boutique firm.
"That changed; boutique firms tended to merge with general practice firms," Donovan said. "There are still IP firms now, and two or three that are still pretty substantial in size."
Today, Donovan is a partner, member of the management committee, and chair of the IP department at Barnes and Thornburg’s Chicago office with 90 attorneys working in his group.
He focuses on patent and trademark litigation, prosecution, unfair competition, trade secret litigation, and licensing.
"I help clients obtain patents and obtain trademarks and protect their copyrights," Donovan said.
As Donovan explained, patents are documents that grant an individual the right to disallow others from making, using, selling, or importing the patented item into the United States.
"You file a patent application with the patent office and then the office offers a preliminary opinion as to whether the invention described in the patent application is patentable," Donovan said.
If the patent is approved, large companies tend to file patents internationally, as each nation has its own patent system.
According to Donovan, trademarks are source identifiers, such as Nike's "Swoosh" and McDonald's "Ronald McDonald." Meanwhile, copyright protects original and tangible works of expression. From artwork to music to software, copyright protects the creation.
Donovan also counsels clients on how to protect their trade secrets and advises them on what to do if someone steals their secret.
A well-known example of a trade secret is the Coca-Cola syrup recipe which is added to carbonated water to create the soft drink. A trade secret gives the company that owns the secret a competitive advantage over others in the industry.
"If someone were to steal the trade secret, you have the ability to prove that they stole it," Donovan said.
In terms of his work with patent and trademark infringement litigation, Donovan offered an example to illustrate a case of infringement.
"We represented a client that sold eyewear. They did it for years," Donovan said. "Another company started around the same time, identical name, very distinct, but it was in the toy business. At some point that toy business turned into a sunglass business and started selling glasses under the identical name—who should prevail on the issue?"
Donovan's everyday cases vary from simple, where detecting infringement is easy, to increasingly difficult, where trademarks are similar and could lend themselves to confusion.
"You can sue or get sued for this type of activity," Donovan said. "All the time, very legitimate companies get sued for patent infringement because of the close calls involving these types of issues."
To avoid "the close calls," Donovan also helps clients avoid patent and trademark infringement.
"We give opinions of infringement when a client comes in and says, 'I want to make this product and am concerned about these patents, tell me if I can do it,'" Donovan said.
Despite the fact that Donovan pursued a law career after graduating in Mechanical Engineering, he assured ME 390 students that his technical undergraduate degree was essential to his success as an IP attorney.
"It is usually an engineering degree, or it might be physics or chemistry," Donovan said. "But 99% of patent lawyers have technical degrees."
Donovan still pays frequent visits to campus, as he sits on MechSE's Alumni Advisory Board and has a daughter enrolled at the university.