Alumni Profiles
Stephanie Miller Mansfield, Ph.D. |
Serendipity and Career Selection: How a Mutual Friend and a Love of Writing Steered Stephanie Mansfield Toward her Ideal Career in Patents
Stephanie Miller Mansfield (BME PhD '97) always knew she wanted to go into biomedical engineering. What surprised her was the path her career would ultimately take.
"I grew up in Midland and worked at Dow Chemical during high school," she says. "There I was exposed to more traditional engineering areas. I knew I wanted to take my interest in engineering and combine it with biology/medicine Luckily someone put a name to that combination for me early on."
U-M didn't have an undergraduate degree in BME at the time, so Mansfield chose Northwestern. But she returned to Michigan for graduate school, where she joined John Faulkner's muscle mechanics lab. En route to her PhD, she supplemented her BME work with a master's degree in mechanical engineering, to give herself a foundation in a more "traditional" engineering discipline.
Faulkner gave her lots of creative latitude in his lab, and she developed a thesis examining the recovery of skeletal muscles transplanted into the plantar flexor muscle group in rats. "The clinical relevance of this research," says Mansfield, "is that if a muscle becomes diseased or damaged, plastic surgeons might replace it with a donor muscle from a site elsewhere in the body. It's important to assess both the function of the transplanted muscle and also the ability of muscles remaining at the donor site to compensate for the removal. This provides an indication as to the overall efficacy of the transplantation procedure."
Mansfield felt fortunate to be able to amass a variety of expertise on her doctoral committee – a physiologist, a biomechanist, a plastic surgeon, and a cell biologist. She also valued the opportunity to hone her writing skills under Faulkner's mentorship and to develop her oral communication skills, in one instance by creating and teaching a physiology review course for student-athletes.
"When I started graduate school," says Mansfield, "I thought I'd have a very traditional career trajectory: I would complete my doctorate, do a post-doc, then look for a faculty position at a university." But when she completed her PhD, she started to question whether a staying in academia was a fit for her.
So, she began to consider industry, and was contemplating a move from the Midwest. "As luck would have it," she says, "a friend of a friend was a patent attorney and said, 'You know, you don't have to be an attorney to work in the patent field. You're an engineer; if you like to write, you might enjoy this." She'd never considered combining engineering with the law, but she was quickly convinced after meeting with attorneys from his firm, Brooks Kushman P.C. in Southfield, MI. She studied for and passed the required patent bar, and she's been at Brooks Kushman ever since.
"I've been a patent agent for 12 years now," says Mansfield. "In the general sense, my job involves obtaining patents for my clients. This includes assessing a client's technology, comparing it to what others have published or patented previously, and deciding whether to pursue patent protection for the invention. If we decide to file a patent application, I work with the client to draft the application and then to file and prosecute it which involves back and forth negotiation with the U.S. Patent Office. The goal is to obtain a patent that gives the client the broadest possible protection for the invention."
That's the creative challenge she thrives on. "A client might have an invention within a very narrow area of technology," says Mansfield, "but there may be applicability to a larger problem he or she might not have initially considered. With that in mind, I try to draft an application that captures not only the client's specific disclosure but also the space between the new invention and what's been done previously.
A good example of this occurred when an inventor (who also completed his PhD and post-doc at U-M BME) sought a patent in the area of tissue engineering. The original invention disclosure was for a system emulating the in vivo environment of skeletal muscle. She was able to broaden the patent claims so as not to be limited to skeletal muscle, but also to cover engineered tissue more broadly. "It became apparent that there was nothing like this stimulator and controlled feedback system for engineered tissue in general," says Mansfield. The inventor ended up acquiring much broader protection than was originally envisioned, leading to successful licensing of the patent.
In addition to the challenges of obtaining intellectual property protection for her clients, Mansfield finds satisfaction in the business development and client relations aspects of her work. She enjoys supporting clients' strategic growth, helping them to answer questions such as: Should our business go into this new area? What's the competitive environment? Where should we file patent applications around the world?
"One thing that's been a good fit for me," she says, "compared to research focused in one specific area, is the different technical and business challenges I encounter every day." She has also found it very rewarding to work with inventors who are BME alumni – particularly those who were supportive to her during her own graduate work. In addition, she gets a special charge out of working with smaller businesses and entrepreneurs, helping those without the resources of a large company behind them to acquire patent protection and commercialize their inventions.
Though she believes that those eager to work in the patent field would do well to consider law school, Mansfield feels her PhD in biomedical engineering has been an asset – particularly in her ability to develop rapport with both engineering and scientific research clients alike. "As far as patent practitioners go, there are those with an engineering background, and there are those with a basic science background," she says. "But I really feel I have the best of both worlds."