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Alan Thiele

Mechanical Engineer Enjoys Life as a Patent Attorney

 

Fresh out of graduate school, Alan Thiele found himself wanting the best of two worlds. “Not a lot of engineers follow this path,” he says of his choice to combine engineering and law careers. “I really enjoyed being an engineer. But I also found I enjoyed law school very much. I thought, ‘I’d really like to do both engineering and law,’ and the natural progression of those two lines as they come together is patent law.”

As a patent attorney, the 65-year-old Thiele finds himself crafting intellectual property protection portfolios in a variety of technologies for companies large and small. He works for Strasburger & Price, a law firm, in their San Antonio, Texas office.

What pleasure does he get out of it? “A lot of people come up with ideas, but they’ve never been involved with the patenting system,” he relates. “I really enjoy working with people that have never done this before. A lot of people have tremendous misunderstandings.” He adds, “The engineering degree has helped me communicate with engineers and scientists about what they’re doing and what’s new and fascinating.”

Having grown up in Maplewood, New Jersey, Thiele went to Lehigh University, where he obtained a B.S. in Mechanical Engineering in 1966. Immediately after that, he applied to law school and started classes at Ohio Northern University. “I had taken a business law course, and probably because of the professor, it was an absolutely fascinating course to me. I never thought about law school, but this course in business law, I just really enjoyed studying and learning about,” he explains. “Second, I visited a friend of mine, who was also an engineer, who was going to school at Ohio Northern University. I spent a weekend with him, and he said ‘while you’re here, why don’t you go talk to the dean of the law school.’ So I did, and he encouraged me to apply to the law school.”

At the same time, however, Thiele also embarked on an engineering career, as he also went to work for J.J. Henry as a marine engineer in Philadelphia designing auxiliary steam systems for use in commercial marine vessels. While at Ohio Northern, he worked in the engineering department of the college of engineering. He later got a job designing heavy equipment, particularly coiled steel straighteners and flattening equipment. “I basically did this full time while I went to law school,” he recalls.

After receiving his J.D., “That was still Vietnam time,” he remembers. He was commissioned out of ROTC in college and went into active duty in the Army as a field artillery officer. They liked his engineering background and interest in aviation and sent him to helicopter flight school. They made him a Cobra pilot and sent him to become a helicopter maintenance officer and test pilot, which he did in Vietnam; he went there in 1972. He served as chief maintenance officer and test pilot for an air cavalry troop in the city of Can Tho, South Vietnam. When the war was over, the Army sent him to Fort Sill in Oklahoma, home of the field artillery. Having gone to law school, he applied to Army JAG and worked there four years.

Interest in Patent Law Comes About
Rewinding a few years, Thiele recalls, “My interest in being a patent attorney started with my last several days in law school. I was looking at the bulletin board, and the dean comes up to me and shows me an ad from Boeing Aircraft and said, ‘They’re looking for people just like you to be patent attorneys. They’re looking for people with an engineering degree and a law degree, and you’re the only guy in your class with this, and this is something you ought to think about.’ I was facing an ROTC obligation, but I kept that in mind. Beginning in about 1975, I started looking into this whole idea of being a patent attorney, and I kind of took it on as a hobby. I learned more about it, reading as much as I could about it. The Army had a program where they would send JAG officers back to school to become patent attorneys, and I applied for that and was accepted in 1978.”

But then came a glitch in the plan, one that required Thiele to resist temptation and stick to his goals. He was waiting for his orders when the Pentagon called and said there was no more funding for that program. They asked him, “How would you like to have three wonderful years in Hawaii. I said, ‘Frankly, I really want to be a patent attorney,’” he recalls. He told them the next day he wanted to go to Fort Sheridan Illinois in Chicago and get involved in an LL.M. program at John Marshall Law School in Chicago and get his master’s degree in patent law. They said OK, and he was in luck because there was an opening at Fort Sheridan. After getting his master’s in patent law, he took and passed the patent bar exam in 1982.

When he was getting his master’s in patent law, Thiele met some patent lawyers getting their master’s. They needed a mechanical engineer at Abbott Labs in North Chicago to handle patent protection on medical devices, particularly accurate pumps they use to pump fluids into people and IV systems. “So I spent three years working for Abbott Laboratories writing patent applications and obtaining patents for medical devices,” he says.

While at Abbott Labs, a headhunter called Thiele with a job opportunity with Cooper Industries in Texas. They design a wide variety of mechanical devices and had just expanded and were looking for a patent attorney. They made him an offer of higher salary, so he moved to Houston, Texas. He later went to Strasburger & Price.

Works With All Types of Companies
“I work with a wide variety of companies. Typically, I work with companies that have either mechanical-, electrical-, or electro-mechanical-type inventions, and I also work with software companies,” Thiele says in explaining his work. “I also work with companies that do chemical engineering work with regards to various processes to make or process various chemical products. I specialize in smaller companies getting started.”

For example, he’s working with a small company in California called Spitz Lift that makes portable hoists used in a wide variety of applications including the back of pickup trucks, submarines, and on top of radar towers. He’s also working with the Alamo Group in Texas, which makes industrial mowers that cut grass and brush along interstates and other highways.

“I look at where they’re going with their invention. Every business has a business plan, and either they’re expanding into a particular market or they have a new product to serve it,” Thiele explains. “I like to help a business design an intellectual property protection program that will assist them in gaining a foothold in a market.”

An example is the mowers made by the Alamo Group. They sell to government agencies concerned about the maintenance of tractors, and they want to reduce maintenance costs. The Alamo Group typically develops devices that make the mowers last longer with less maintenance. “When I do that, I protect not only those inventions, but I try to figure out what other companies may do in response to the inventions of somebody like the Alamo Group,” Thiele says.

To assist in this, Thiele picked up an MBA from the University of Houston so he could understand the business aspects of licensing. His thesis covered how to craft a portfolio of intellectual property assets to support a business plan and increase the value of a company.

Besides companies, Thiele also works with individual inventors. As an example, he has worked with a guy who invented a device used in the kitchen to dispense aluminum foil and saran wrap (cellophane foil). It mounts in a cabinet, and the foil is dispensed under a drawer, eliminating the need to fumble around with rolls of foil.

“Good engineering is usually inventing,” he states. “Many engineers won’t pursue a patent because they think an invention is just part of their job.” Does he think an engineer should pursue a patent? “Yes I do, if it makes business sense. You have to ask what the market is. It costs a lot of money to get a patent, about $20,000 to 40,000.”

Looking back on his dual career, Thiele reflects, “I have found it fascinating. Just by the nature of patents, everything I see is new. It’s fascinating to stay on top of all these changes in technology.”


Progressive Engineer
Editor: Tom Gibson
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