Former Patent Office Judge Kristi Sawert Joins Fish as Principal

Kristi Sawert has joined Fish & Richardson PC as a principal in the firm’s post-grant practice group after 14 years as an attorney in various roles at the US Patent and Trademark Office, the firm announced.

Sawert has served as an administrative patent judge on the PTO’s Patent Trial and Appeal Board since 2016, including one year on detail to the House Judiciary Subcommittee on Courts, Intellectual Property, and the Internet. Her private practice focus will be on representing life sciences clients, particularly in biotech and pharmaceuticals, according to Fish.

“I’ve loved working for the government,” Sawert said in an interview with Bloomberg Law. “I just came to a point where I really know a lot about PTO practice, both in the PTAB side and the Solicitor’s Office side, and I really want to use that information to the benefit of clients.”

She said Fish is known to be an “excellent” and “dominant” firm at the PTAB, and said she chose it for her transition to private practice because “they were excited about me the same way I was excited about making this new step in my life.” More than 50 attorneys at Fish focus their practice in post-grant and over 140 attorneys have post-grant experience, according to the firm.

Kristi Sawert

Fish & Richardson PC

During her time on Capitol Hill in 2022 and 2023, Sawert worked for Rep. Henry C. “Hank” Johnson Jr. (D-Ga.) while he was the chair of the House’s IP subcommittee. She was a PTAB expert for the subcommittee, she said, and she now plans to use that experience to advise clients on potential changes in patent law as lawmakers and agencies focus on the Bayh-Dole Act, patent continuations, and drug pricing.

Sawert said she will use her Hill knowledge to help biotech and pharma clients “understand how all these venues interact and how to anticipate probably changing laws or changing policies.” She said she examined the Patent Office’s April 2023 advanced notice of proposed rulemaking regarding PTAB reform and worked on hearings concerning USPTO oversight and the PTAB during her detail.

At the PTAB, Sawert was “very intentionally boots on the ground” by working on different types of proceedings covering a myriad of technologies beyond her Ph.D. in biochemistry. The former judge estimated she’s worked with about 80 PTAB judges on various panels during her career. Her work at the board has included an ongoing dispute between 10x Genomics and startup Parse Biosciences Inc. over the validity of cell-analysis patents.

“If you’re on the outside, it’s a very important thing to understand that you’re not necessarily going to get an expert judge in the particular technology that you are fighting about before the PTAB,” Sawert said. “You really need to understand how to argue generally or describe things generally so that people with lots of different backgrounds can understand and then really get into the nitty gritty.”

She also noted her work on the PTO’s Legal Experience and Advancement Program for less experienced attorneys practicing at the PTAB, and said she hopes to continue mentoring young attorneys at Fish. Sawert clerked for now-retired US Court of Appeals for the Federal Circuit Judge Paul Redmond Michel, and said he inspired her to go into public service. “Mentoring is something that I really take to heart,” she said.