Our people are what make the difference at Cesari and McKenna. We understand that building relationships is a two-way street, so we’ve asked each member of our team to share a bit about themselves. Meet Steve Mills, Partner.
What is the focus of your practice at CM?
There are various aspects to a patent practice. Prosecution involves interacting with individuals, companies, educational institutions, and others, as well as U. S. and foreign patent offices, with regard to examination of inventors’ patent applications to issuance of enforceable patents. Exploitation of an issued patent can involve protecting the market for the covered invention, such as by enforcing or licensing. My focus is on prosecution – that is, obtaining the enforceable patent rights covering inventors’ innovations. I also advise large companies on patent portfolio management, working with their in-house counsel, R & D, and product management teams, and with individual inventors on the process of deciding which innovations should be protected and what form that protection should take. My background as an electrical engineer gives me insight into the challenges clients face, and I enjoy leveraging my experience in a variety of technology areas, from electronics, optics, and medical devices to computer hardware and software, artificial intelligence, and remote sensing and measuring devices.
What experiences in your life and career influenced your decision to become a patent
attorney?
I always enjoyed studying math and science, so engineering was a natural career choice. But I also liked the idea of being a lawyer. By coincidence, my college roommate was interested in becoming a patent lawyer and spoke about it often, so I was exposed early in my professional development to the idea of patent law. I was also fortunate to meet my current partner, Joe Capraro, when we were both electrical design engineers working in industry. We both thought that we would move on from the regular practice of design engineering at some point, and I had been looking into law school. We ended up taking the LSAT on the same day, and Joe started law school the fall before I did. While I was studying law, Joe and I ended up working together again in a patent boutique law firm as technology specialists, training for the patent profession. I realized that being a patent lawyer meant I would not have to toss my engineering knowledge aside. From there, it all came together.
What are the most rewarding aspects of your work?
As an electrical engineer, I was one of many people working on a small piece of a huge project. Being a patent lawyer is more suited to my “big picture” mentality because it provides context for the technology as it relates to people, businesses, and making life better. I also find it incredibly rewarding to be facilitating what our Founding Fathers had in mind when they put our patent system in place. Based on the knowledge that innovation was important to advancing society – and that protecting innovation was critical to encouraging inventors to invent – they wrote it in the Constitution. In essence, a patent is the fulfillment of an agreement an inventor makes with the U. S. government that gives him or her a monopoly on an invention for 20 years or so in exchange for teaching the world how the works.
Why did you join CM and what keeps you here?
What attracted me to CM is that it is a dedicated intellectual property firm, in contrast to a corporate firm with an IP group. Here at CM, we all speak the same language. We have a lot in common professionally, and it is a pleasure to work in a collegial environment with genuinely nice people who are all rowing in the same direction.
What would be your ideal getaway from the rigors of your legal practice?
Any trip with my family – and if it includes golf, all the better! Last year, my “ideal getaway” involved checking off the top two things on my all-time bucket list. My wife and I attended the 2024 Open Championship in Scotland and, on the same trip, I won the daily singles ballot to play The Old Course at St. Andrews Golf Club. It is said that the game was invented there hundreds of years ago, and demand to play the course is extremely high. Needless to say, it was the thrill of a lifetime! Closer to home, we are big fans of Disney World and I’ve enjoyed multiple visits with my wife and two daughters. I recently became a first-time grandfather and look forward to walking down Main Street USA with my granddaughter later this year.