Welcome to the latest instalment of Managing IP’s ‘Five minutes with’ series, where we learn more about IP lawyers on a personal as well as a professional level. This time we have Elizabeth Morris, director of IP at Pure Storage in California.
Someone asks you at a party what you do for a living. What do you say?
I’m a patent attorney, which is the happy side of law. Inventors come to me with their great ideas, and I get to say: “Hey, that’s a fantastic idea”. Then I get to figure out how to turn those ideas into patents.
Prosecution is a negotiation process, but at the end of the day, the USPTO is in the business of granting patents. So we are all generally working towards the same goal. Then eventually we get a patent issued, and I get to tell the inventors: “Congratulations, now you have a patent!”
Talk us through a typical working day.
I spend a good bit of my day on prosecution-related matters. Our team works very closely with outside counsel (OC) on new filings and prosecution. We go over every claim amendment and discuss the pros and cons of every change. I love getting into the weeds with our OC on prosecution strategy. We also proactively chart all our competitors (just in case they ever come after us), and I love working with our OC on making those charts come to life.
I also spend a fair amount of time working on higher-level strategies, not just on patents but on IP more generally: IP product projects, IP terms in contracts, attending conferences, seminars, podcasts, and reading articles. I like to stay up to date on the changes in law. I’ve been fascinated to watch how the Unified Patent Court experiment in Europe is starting to take shape.
What are you working on at the moment?
I’m very interested in generative artificial intelligence (AI). I sit on the AI council at Pure Storage, and so I get to see the proposals from across the company for how to utilise the capabilities of generative AI. We are mostly at the proof of concept stages on our projects now, and it’s fascinating to see all the proposed ways that our engineers, HR team, and salespeople are thinking of using it. We are on the brink of big changes in how everyone does their jobs, and it’s great to be able to advise the team on these exciting opportunities.
Does one big piece of work usually take priority or are you juggling multiple things?
Litigations always suck all the oxygen out of the room when they are going full force. I try to keep things in check, but if there’s a deposition going on that I need to attend, then that’s pretty much my whole day!
What is the most exciting aspect of your role and what is the most stressful?
I host a monthly podcast with Nathaniel Lucek from Hodgson Russ that is called 'The Semi-Interesting Podcast.' It’s about the intersection of the semiconductor industry and IP law. Semiconductors, semi-interesting, get it?
Anyway, I love the recording sessions! In order to do a good job hosting you have to listen carefully to the person that you are interviewing and then ask relevant and probing follow-up questions. I feel like it’s the one time in my month when I am fully focused on this one task, which is a great feeling. Also, we get such interesting guests, it’s always fascinating to hear what they have to say!
Tell us the key characteristics that make a successful IP lawyer.
I think the best question to ask any patent lawyer is: "Are you an engineer first and a lawyer second, or a lawyer first and an engineer second?" Every patent lawyer leans a little bit one way or the other. I think different skill sets work better for different positions. For instance, the more engineering-leaning patent lawyers are often better at being outside council and writing those detailed patent specifications. The more lawyer-leaning patent lawyers may do better in-house where the work is more varied and involves making calls in the grey areas that typically drive engineers crazy.
What is the most common misconception about IP?
People who have never submitted an invention disclosure think that a patentable idea needs to be an amazingly technical solution to a big problem like global warming or world hunger.
I love to help people understand that patentable ideas don’t need to be so intense to still be valuable. Sometimes the best ideas are quite simple, they just haven’t been done before. I have an introduction to patent prosecution class that I love to give. It's called 'Patents & Peanut Butter' and it walks through the prosecution process for one of the patents for Smucker's 'Uncrustables' sandwich. A crustless sandwich is a concept everyone can understand. I even give them out during the lecture so we can dissect them in real time while discussing the claim language!
What or who inspires you?
The kids in my Girl Scout troop inspire me! They have such great ideas and enthusiasm. I love doing projects with them. It’s always something new.
For instance, in September we went to a local apple orchard for a tour. We picked bushels of apples and made a bunch of apple pies for JW House - a home away from home for families in medical crisis caring for a loved one in hospital. Orchards, baking, and philanthropy with pies, how does it get any better than that?
If you weren’t an IP lawyer, what would you be doing?
I’d be a ballet dancer. I still dance several times a week, and I love it! Honestly, I never even thought about being a professional ballerina – for one thing, I’m too short! But it’s been a lifelong hobby. I’ve been an adult guest in the “party scene” of our local Nutcracker production for about a decade now, and it brings me so much joy!
Any advice you would give your younger self?
Relax and enjoy every day for what it is. Probably my favourite quote sums it up best: "It’s good to have an end to journey toward, but it’s the journey that matters in the end!"
