Seay: Madison patent attorney leads the way in biotech field
By Brian E. Clark
MADISON – When Nick Seay went into the patent attorney business nearly three decades ago, the field of biotechnology did not exist.
But after a quarter century in Madison working with companies like Agracetus -- which pioneered transgenic cotton -- and researchers such as Dr. James Thomson, who first isolated embryonic stem cells in a UW lab, Seay's name is synonymous with this news-making branch of science.
"Timing is everything and I got in early," said Seay, whose other clients have included Novagen, Nutra-Park, Mirus, Bellbrook Labs, Nimblegen, Opgen and Ultratec.
"I say this as a joke, but nearly all that's important in my field has been invented since I began following it," he quipped.
Ken Hansen, general counsel for Epic Systems, said Seay grew up with the biotech industry.
"He's been ahead of the curve at every stage of the game," he said. Hansen called Seay an exceptionally creative person who delights in taking on complex issues.
"And he's in large part self-taught," said Hansen, whose company has pioneered electronic medical records.
"He started working on plant issues and became an expert in that area. He was fascinated by it all and became a general biotech expert."
Russ Smestad, president of Mirus Bio, a Madison biopharmaceutical company, said Seay has been in pivotal positions for some ground-breaking intellectual property inventions.
"He is the top patent attorney in Madison, and he's got the track record to prove it," said Smestad, who worked for Agracetus for 15 years.
"What makes him unique is that he looks at the big picture for clients. He views patent law as a strategic element to a company's success."
And while the 53-year-old Seay has had opportunities to move to bigger and more lucrative firms on West Coast, he said he is more than happy to practice his specialized type of intellectual property law in Wisconsin.
" I moved around a lot when I was growing up and I was tired of it," he said. "I liked Madison right off. Staying put has benefits. In fact, I still play basketball with some of the guys I met when I first arrived in 1977."
A partner at the Madison office of Quarles & Brady, Seay is one of the lead attorneys for the Wisconsin Alumni Research Foundation, which controls the patents coming from UW scientists. He also works on patent issues for two dozen other clients, as well as doing some contractual law when he has the time.
A Navy brat and Cornell University-trained electrical engineer, Seay worked in a patent attorney's office in Washington, D.C. while attending night law school at George Washington University.
"I probably couldn't get hired to do what I do now," he said. "A lot of today's patent attorney hires have Ph.D.s."
Sara D. Vinarov, an intellectual property lawyer at Quarles & Brady who holds a doctorate in biochemistry, called Seay a down-to-earth "Renaissance man."
"He has extensive experience in not only intellectual property procurement and litigation, but also in multi-million dollar corporate deals," she said.
"Although he was technically trained as an electrical engineer, he has written some of the most influential biotechnology patents on transgenic plants and human embryonic stem cells," she said.
She said Seay continues to be an integral component of some of Wisconsin's largest biotechnology and IT business transactions to date.
Paulanne Chelf, the senior intellectual property manager at WARF, called Seay a "broad picture kind of guy who is very good at the patent game.
"He mostly does stem cell work for us now, but he has the ability to span a wide range of technology and effectively patent in all those areas," she said.
Seay's first legal career choice was to be an environmental lawyer. And in the 1980s, he was on the board of group called Wisconsin's Environmental Decade.
"When I came to Wisconsin, I wanted to represent the earth, not companies," he said. "Of course, there aren't many jobs and not much money in doing that."
When he arrived in Wisconsin, he applied for a job at the Department of Natural Resources and was one of two finalists. But he didn't get the position.
"In retrospect, I think they concluded that I was perhaps too radical. And at the time, that may have been the correct assessment."
Ironically, his work on transgenic cotton made some consider him a turncoat, a charge he rejects.
"It was controversial and some people called me names, but that's life," he said.
"I tried to argue the case on the merits, which were that it cut the use of pesticides dramatically," he said. "I still consider that a great untold environmental story."
To help keep him financially solvent, his old boss in D.C. sent him legal work and suggested he apply at the one Madison firm that did patent law.
So Seay went to Lathrop & Clark unannounced and learned that one of the three attorneys who did patent law had just committed suicide.
Seay was hired. He and his first wife built a house on the western edge of Dane County. Madison said the business community in Madison was a different in those days and most of Seay's work in the general mechanical and electrical areas. As Seay recalls, there really wasn't enough work for three private patent attorneys. (Madison now has more than 30 intellectual property lawyers, a 10-fold increase since Seay started.)
In 1980, things changed when the U.S. Supreme Court – in Diamond v. Chakrabarty – ruled that genetically engineered biological organisms could be patented.
As a result, biochemist Ananda Chakrabarty got a patent not only on the technique he used to create a bacteria to consume oil slicks, but the living, genetically altered bacterium itself.
At the time, Seay recalled, biotechnology was just developing as an industry in the United States. Suddenly, investors perceived that biotech companies could get patents that might be worth something.
"It had a catalytic effect," said Seay, who moved to Quarles & Brady in 1989.
Two different companies, one of them with the moniker "Cetus," started branches in Madison to work on applying the new biology to plants.
There were no biotech patent lawyers at the time and a biologist -- even one with a Ph.D. -- did not qualify to take the patent bar.
"We were the only patent shop in town," he said. "I told the guys who ran my firm that somebody was going to come to us eventually and that I wanted to learn about this."
So he did, at first attending a seminar and then walking the short distance from his office to the University Bookstore to buy fat tomes on biochemistry, molecular biology and genetics. He read them cover to cover.
Eventually, he became the lead patent attorney for the company that evolved into Agracetus – one of the pioneers in plant genetic engineering. Agracetus produced scores of patents, including one for the first genetically engineered cotton, which some dubbed a "megapatent." As a result, Seay said, the amount of pesticides sprayed on cotton has dropped dramatically.
"I can't say how much it has declined," he said. "But since the early 1990s, the ag chemical business has been a bad business to be in."
When Monsanto purchased Agracetus for $150 million, the company had a building worth $3 million, a dozen scientists on the payroll and no products in its pipeline.
What it had, though, was a potent intellectual property portfolio for which Seay was largely responsible.
"I don't want to devalue the researchers' technical know-how because they knew how to do some stuff that was very valuable," Seay said.
One thing led to another and Seay began doing work for WARF. He figures he successfully filed for 400 U.S. patents.
"But I tell people this isn't a numbers game," he said. "That's because 30 marginal parents are worth a fraction of one good one. You'd much rather have a stem cell patent or a transgenic cotton patent than a bunch that aren't marketable."
In addition to WARF, Seay has also worked for the University of California and the University of Arizona.
Seay said he finds it inspiring to work with researchers who are on the verge of finding new drugs and therapies to treat life-threatening diseases. Those same professors he works with have become more bold in starting their own firm with the technologies they discovered, he said.
"I probably worked for WARF for a decade before I heard of a professor starting a company," he said. "Now it's common and there are spinoffs of spinoffs."
Seay has worked closely with UW-Madison biologist Thomson and specifically predicted in the university's patent application that techniques used on monkey embryos would work on human stem cells.
"The best part of this job is seeing people create stuff out of nothing, creating new technologies and making things happen," he said.
Seay said Thomson was a non-tenure track researcher working on stem cells when I Seay first was called into WARF to meet him.
"Jamie asked me if I thought what he'd done was patentable, if there was anything we could do with this," he said.
"My reaction was 'yes,'" he said. "My first thought was, 'How can I make this happen?' because I am a mechanic at heart."
Stem cells from young embryos can replicate indefinitely and give rise to any of 220 kinds of cells found in the body. Scientists believe that such cells could yield treatments and cures for hundreds of diseases, including diabetes, cancer and Parkinson's.
Though Seay said he respects the views of those who oppose stem cell research, he supports both public and private funding.
"I think of those embryos as cells in a dish, not people," he said. "They were created as part of the in vitro fertilization process and would ultimately be flushed down a drain.
"I do not see the harm of using what will otherwise be wasted."
Over time, Seay said he believes science will trump moral reservations.
"In the United States, we believe it is improper to create transgenic people because we shouldn't be playing God," he said. "But technology has a way of leaking out no matter. And the world being what it is, I have a hard time imagining that in some time or place – perhaps in Asia - there won't be efforts to make people smarter, faster or bigger."
Seay also believes the future of biotechnology is nearly unlimited.
"The best analogy is transistors," he said. "They weren't invented until 1947. Personal computers arrived in 1977, the Internet was around 1990.
"Genetic engineering was invented in the 1980s, so we are still early with biotech and all the ramifications are not yet apparent.
"There are still technologies that we can't see. Stem cells were not predictable 15 years ago. Who knows what is around the corner?"