Alumnus finds formula for fascinating practice
Matt Zisk ’97 works with clients in today’s cutting-edge industries: renewable energy, clean technologies, pharmaceutical, and even next-generation fertilizers.
“I am one of the luckiest lawyers around for being able to work in this area,” said Zisk, a partner at Skadden, Arps, Slate, Meagher & Flom LLP. “The clients share with me insights into technology that are game-changing and, in the case of pharmaceutical and medical devices, life-changing. I often learn about new developments long before they become public. The new technology is fascinating.”
Zisk describes himself as a hybrid of a corporate law attorney and an intellectual property attorney – working in patent law, licensing, marketing agreements, and mergers and acquisitions. His clients are primarily investors in technology and other companies. Zisk’s practice focuses on counseling clients about the risks associated with transactions, as well as the scope of the technologies being transferred as part of the transactions.
Because he is a former scientist, Zisk is uniquely equipped to delve deeply into the intricacies of the ideas and products at the core of his client work. Zisk earned a Bachelor of Arts in chemistry from Boston University and his Ph.D. in organic chemistry from Stanford University. He thought he would become a professor and research chemist, but he realized in graduate school that he preferred the classroom over the solitude of intense lab work.
Soon after grad school, he and his first wife moved to Columbus, Ohio, where she had accepted a teaching position at The Ohio State University. Zisk taught chemistry at Wittenberg University and Otterbein University until he was recruited by a large chemical company outside of Columbus to lend his expertise in a patent matter.
As a graduate student, Zisk worked on a variation of a design for a differential scanning calorimeter. The device measured the way a material absorbs heat as a function of temperature and can derive information about crystallinity, melting points, impurities and other physical attributes of a material. The Ohio company was accused of patent infringement based on a study by this type of instrument, and Zisk spent a summer working full-time as an expert witness with patent lawyers from Porter Wright.
“It was the most interesting thing I had done since graduate school,” Zisk said. “Those lawyers encouraged me to think about going to law school. It wasn’t a hard sell.”
Zisk applied to law school and never looked back. Now, his background in science is a fundamental part of most everything he does in his practice. “What’s required in my work is a strong foundation in science and a willingness to dig in as the matters require,” he said. “Someone who works hard and is able to integrate the fundamental scientific principles into the way he or she thinks can do this.”
Zisk’s clients’ most common legal issues revolve around the status, protection and transfer of their and their target’s intellectual property portfolios. His work typically entails preparing clients for diligence by investors and for initial public offerings, counseling them regarding intellectual property transactional risks, and structuring and negotiating transactions to avoid those risks.
Zisk often is called upon to clear up misconceptions about what intellectual property can and cannot do, he said. For example, a company with a patent on its core technology cannot assume that the patent gives the company everything it needs to market and develop a product, as patents, like most other intellectual property, give no affirmative right to practice, but only to prevent others from practicing what is patented. Competing patent portfolios can affect a company’s freedom to operate in the marketplace. Along that vein, companies not infrequently fail to take appropriate measures to protect their trade secret technologies prior to entering transactions.
“Much of the rest of it boils down to risk-shifting,” Zisk said. In the context of licensing technologies or handling mergers and acquisitions, the damages related to these risks could add up to hundreds of millions of dollars. “The biggest part of my job is to try to minimize my clients’ exposure to those risks. It can be a very time-consuming and difficult process, and it’s fraught with compromises that clients need to consider with as much information and insight as possible.”
Outside of his legal practice, Zisk has a “very full and pinch-me kind of life.” He lives in Princeton, N.J. with his wife, Isabel, and 5-year-old daughter, Alexandra. “They are at the center of my universe. When I’m not working, and I work very hard, I am with them,” he said.
It is a point of pride for Isabel to tell people that her husband dedicates about one month a year to pro bono work. It’s important to both of them, and Zisk said he is fortunate to work for Skadden Arps, which places a high value on pro bono service.
The Lawyers Alliance for New York honored Zisk with its 2011 Cornerstone Award in November. Since partnering with the alliance in 2007, Zisk has worked with four clients on 11 different intellectual property matters, from straightforward contract agreements to complex trademark registration issues.
The Financial Clinic, a nonprofit that builds financial security for the working poor, and the Literacy Assistance Center, a nonprofit dedicated to helping public schools in New York City and English language learners struggling with literacy attain GEDs, have benefited from Zisk’s volunteer work. Both needed help with protecting intellectual property investments they had made. With the nonprofits, it wasn’t a matter of keeping their programs hidden in a box, but it was critical that ground rules were established and agreed to so others would use the programs for their intended purpose.
“It’s important to me that I help bring legal services to people and organizations who simply can’t afford to hire a lawyer. And in New York, most people have difficulty hiring a lawyer. It’s very expensive,” he said.
Zisk added that he would not have been able to launch his career as successfully without the training he received from The Ohio State University Moritz College of Law. His professors and then-dean Nancy Rogers molded the way he looks at legal issues today.
“There’s a lot of criticism of the legal academic community today. Some of it is well-merited,” he said, “but I think most of it would miss the mark if aimed at Ohio State.”
This article was written by Monica DeMeglio.