Mark Bach – Navistar Inc.

Should Mark Bach take in a Chicago Bears game, he’d be reminded of his exclusive professional status. Not that he’s one to feel special, but at last count there were fewer than 51,000 patent practitioners in the United States, and he and the others would fall more than 10,000 short of Soldier Field’s capacity.

“The number of us hasn’t increased much since I passed the patent bar in 1990 as Number 34,766,” he tells Vanguard in July. “This lack of supply has been the case for over 200 years. The demand is always increasing because a patent allows its owner to stop anyone else from making, using or selling what’s covered by that patent in the U.S.”

Mark Bach | Senior Counsel | Navistar Inc.

For that reason, Bach goes on to say, patent lawyers are essential for securing an innovator’s research and development, and how increasingly important this is with so many companies—including his own employer Navistar—investing in cutting-edge technologies. Lest anyone willingly infringe on a Navistar patent, Bach warns that he’ll go to the mat to recover, as the law allows, three times the offender’s proceeds.

Still, nothing’s so cut and dry when it comes to Navistar’s literally trailblazing R&D. This manufacturer of trucks and buses is among the companies in the high-stakes race for innovating sustainable and fossil-free mobility.

Bach, who joined Navistar in 2008 as counsel, minds the details in the company’s global portfolio as well as its complex contractual arrangements for joint ventures. What a fulfilling and challenging endeavor he says this is for that rare breed with the appropriate legal and scientific/technological credentials.

Simply electrifying

“It’s been thrilling to see the evolution from diesel fuel to electric vehicles,” Bach says. “This will be such a great benefit to all humanity.”

Still, he’s quick to remind, Navistar must protect its interests. E-vehicles actually aren’t new—Thomas Edison patented a prototype 100 years ago—and while they show much potential, they’re a long way from perfect. For Navistar, as well as its competitors and sometimes partners, Bach says that represents opportunity as well as issues to spare when joint ventures are involved.

While he won’t discuss Navistar’s joint ventures in detail, he explains how in a general sense, companies that might be competitors become partners on a particular project. Company A might do the hard structure while Company B handles controls and software, and they’ll cross-license each other’s innovations.

Magnets, for example, typically are fashioned from rare minerals, and anything with an electric field depends on magnets. But Bach explains there might be ways of creating a magnet by inserting a metal wire in a silicon-based material.

Then there’s the photon vs. electron debate, Bach describing how the former particles might enable faster response but what implications this will have on software engineering. Navistar not being the final authority on all matters automotive—nobody is—it may find that a Japanese partner could best collaborate on a solution. If so, he’ll be particularly vigilant about contractual language, there being nuances between English and Japanese.

“When you file a U.S. patent you can say ‘first’ but in Japan, you’d better say ‘first of a finite series,’ but so much really is infinite,” he says. “You’ve got to be careful of the different aspects of all languages.”

And the company had better take its innovations to the next step because patents are only good for 20 years. Sustainable mobility being high-risk, high-reward, competing companies are watching their patents and everyone else’s, and Bach counsels his Navistar colleagues to keep raising the bar with its R&D.

“First thing to remember: If you are an expert in a certain field, by definition you are out of date,” he says. “Everything’s moving so fast in science and technology that you’d better be learning every day.”

Always inquisitive

Bach continues his education not just by reading professional journals but by poring through pre-published services online. Dig deep into websites and he says you can keep pace with developments before they appear in the “Science” or “Nature” publications. But time was when he might have been more hands-on on the science and technology fronts.

As a Northwestern University undergrad from 1984 to 1988, he studied to be an astrophysicist but with the Space Shuttle Challenger tragedy of Jan. 28, 1986, it didn’t seem a practical career.

“Coming from a working-class family in Chicago, I was conditioned early that I’d need a job and put food on the table,” he says.

Aptitude in physics and applied math always in demand, Bach continued with that curriculum but enhanced it with a class in engineering law. From this, he learned about patent law and upon graduating Loyola University of Chicago School of Law and passing the patent bar on his first try, he’s made it his career.

First came a stint as patent counsel at Abbott Laboratories, but the life sciences wouldn’t be where he’d continue. Snap-on Inc., a high-end tool manufacturer in Kenosha, Wisconsin, proved a better fit, what with Bach managing a global portfolio for a $2 billion family of companies and even weighing in on how tools could be tweaked for efficiency.

“An incredible experience with an incredible company where my knowledge of the physical movement of parts was so helpful,” he says. “What broad applications there were for applied math and physics as well as law.”

That may be even more the case at Navistar, which has undertaken such cutting-edge projects. So many cities opting for electric or hybrid buses, there’s much opportunity to satisfy the public sector. With trucks still being a practical way of moving freight, the need is there for more economical engines—and for more patent lawyers.

Bach freely advises prospective students to immerse themselves in the STEM curriculum necessary to take the patent bar exam. He also won’t be surprised if his 8-year-old son, Peter, goes down that route.

Already the boy is displaying critical thinking by programming games as well as playing those of others through the online platform Roblox. While Peter won’t be forced into anything, his father’s sure to emphasize the rewards of patent law.

“Being a patent attorney allows me to stay up to date on science, technology and math, and I’m also able to take those technical skills and translate them into plain English,” Bach says. “If I were to talk about ordinary differential equations, that conversation would be limited to a very small group of people. But if I’m able to get that down to, we’re talking about different rates of burning fuel in a vehicle and how you change the fuel burning rate to generate more power and greater mileage for your vehicle, more people would understand that.”

View this feature in the Vanguard Fall I 2023 Edition here.