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Banner & Witcoff Featured Attorney - Judith Stone-Hulslander

Banner & Witcoff is pleased to recognize Judith Stone-Hulslander as our featured attorney. Dr. Stone-Hulslander has earned the respect and admiration of her clients and her peers in Boston and throughout the United States. She is a recognized leader in both the legal and scientific communities. The following is a recent interview with Dr. Stone-Hulslander; please see her biography for more information and to contact her directly.

B&W: Your undergraduate and graduate career concentrated heavily on molecular genetics and microbiology; what called you to enter the field of intellectual property law?

Judith: Although I enjoyed performing scientific research, I was searching for a more satisfying career. A colleague of mine who was friends with a patent attorney described to me how a patent attorney spends their days: writing, researching, interacting with scientists and functioning as the client’s advocate before the U.S. Patent and Trademark Office. I thought, “Aha! That sounds like something I would enjoy!” and have since confirmed that it is.

B&W: How has your expertise in molecular genetics and microbiology helped you as an attorney?

Judith: I often interact directly with scientists when preparing patent applications. Their inventions are commonly very complex and science-based. My background enables me to understand the science and have meaningful exchanges with scientists regarding their invention. This allows me to prepare quality patent applications that accurately and completely describe and claim the invention.

B&W: What are some issues in patent preparation and prosecution in the area of biotechnology?

Judith: One concern when preparing and prosecuting biotech patent applications pertains to the enablement requirement. Patent law requires that the specification of a patent application shall contain the manner and process of making and using the invention, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the claimed invention. This requirement can be tricky with biotech inventions, particularly when pursuing a claim directed to broad subject matter based upon the discovery of one or several individual species. It is important that the disclosure provides adequate guidance such that a person of ordinary skill in the art can practice the claimed invention without undue experimentation.

B&W: Tell us about some of the most exciting research you have encountered in your career.

Judith: Of course, I would have to say that my own research regarding virus-mediated fusion mechanisms was the most exciting. With respect to research for which I have prepared and/or prosecuted patent applications, I have been exposed to many intriguing inventions ranging from tissue engineering to cancer therapeutics to nucleic acid memory devices.

B&W: Has there been a “defining” moment for you during your tenure at Banner & Witcoff, Ltd?

Judith: One defining moment is when I received my first Notice of Allowance for a patent application that I had prepared and prosecuted. I was pleased that I could assist a client in obtaining a patent for their invention, and I experienced a tremendous feeling of professional accomplishment.

B&W: Do you have any advice for other young attorneys who are beginning their careers in intellectual property?

Judith: Talk to the inventors. They will typically be your best source of information as they should be the people that are closest to the invention. Inventors can elucidate nuances and important details that may not be readily apparent from a written disclosure. Inventors can often be quite helpful in aiding you in your understanding of how their invention is novel and nonobvious over the state of the art.

Try to work with many different senior attorneys. This will expose you to numerous prosecution styles and techniques. In time you will develop your own approach.

B&W: How have you successfully managed the balance between your career and home life?

Judith: Banner & Witcoff is a family friendly firm that provides an accommodating and supportive work environment for parents. The firm offers generous parental leave benefits for newborn care as well as provides attorneys the opportunity to work flexible schedules. I currently work a reduced hour flex schedule that allows me to spend more time at home with my family than traditional attorney’s hours would typically allow.

B&W: What do you enjoy when you are not practicing law?

Judith: I enjoy spending time with my husband and son, being outdoors, cooking and reading.

For more information on Judith Stone-Hulslander, please click here.

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