I am a Canadian and U.S. patent agent working in Ottawa, Canada, with the Canadian law firm of Borden Ladner Gervais LLP. I write patents in the field of biotechnology, medicine, bioinformatics, and chemistry. I am not a lawyer. How did I get here? Read on.
Graduate school was a long haul. I could not have predicted that a 145-page PhD thesis would take me 5 years to complete. The first 2 years of data I generated never saw the light of day. By the fifth year, my funding had run out.
It was the fall of 1995. I was supporting myself with night-shift laboratory work analysing immune cells in blood samples flown in by helicopter, often arriving after midnight ... nothing related to my thesis. Laboratory work suited me well. I loved the meticulous preparation for and execution of an experiment. I relished the reward delivered when my data rolled off the dot-matrix printer, ready to be retyped into my stats program ... the answers to my questions just moments away. The nightshift proved to be a good time to read and write, and I completed my thesis. However, I looked forward to a future in which I could keep daytime working hours.
After defending my thesis, I began the search for a postdoc position. I had not considered leaving the laboratory and was hoping to find a postdoc that would lead me into an academic position at a Canadian university. I was, and still am, interested in the field of nutritional biochemistry. Upon discussing the positions available and salaries offered by various labs in the U.S. and Canada, I came to realize that these salaries in combination with my sizeable student loan repayment schedule would result in a take-home salary of less than I had received during the funded years of my PhD. The thought of working for a private company did not cross my mind. This all transpired prior to the popularity of spin-offs and start-ups.
During my decision-making process, I had occasion to lunch with an old friend from high school who was training as a patent agent in the field of mechanical engineering. He was enamoured with his new profession. I had little knowledge of patents, but he assured me that there was room in the world of patents for PhD scientists. He advised that the starting salary was a fair bit higher than the postdoc salaries I was considering. I looked in the telephone book the next day under "patents" and found a firm that was willing to interview me in Ottawa, Canada. I borrowed money for the train ticket and returned from Ottawa with a job as a patent agent trainee.
I vowed to myself that I would give this profession a 1-year evaluation period. If I did not like patent work, I would return to science. I rationalized the departure from science with the thought that a year spent learning about patents could make me more valuable as a researcher. Perhaps I would even be inspired to invent!
I heard rumors of a qualifying examination, but this did not deter my decision. The Canadian patent agent examination is held every year in April. It is a series of four written examinations relating to different areas of patent practice. In order to qualify to sit the exam, a candidate has to be a Canadian resident and must have worked in the field of patent practice for at least 12 months. In order to pass the exam, excessive preparation and a dose of good fortune is the best recipe. No law degree is required. Each year, over 100 candidates take the exam, and the pass rate is typically about 20%. Those candidates passing fewer than all four of the exams can retain their passing marks and rewrite the remaining exams in future years. However, a full pass is only granted after all four exams are passed with an average mark of 60%. I now know that the exams are a daunting task to look forward to for anyone wishing to become a Canadian patent agent. Many of us have taken more than 1 year to pass, myself included. However, the longer it takes, the more a candidate is forced to evaluate and affirm his or her own commitment to the profession.
After passing the exam, a Canadian patent agent can also register as a U.S. patent agent and is then able to represent Canadian applicants before the U.S. patent office. However, in order to work as a patent agent within the U.S., it is still a requirement to write and pass the U.S. patent bar examinations. I am frequently asked by U.S. law firms to consider relocating south of the border. But because of the emphasis most U.S. firms place on having a law degree, my career options and salary within a U.S. law firm would be somewhat limited without going back to school for a law degree. By way of contrast, Canadian patent agents without law degrees have no real career or salary limitations (except that we are paid in Canadian dollars) and we are eligible for partnership in most law firms that practice intellectual property law.
The quality I consider most essential to the success of a patent agent is effective communication. A patent agent must discuss the technology with the inventor to fully understand the invention. The agent must then expound on the invention in written form during the preparation of a patent application. In the patent application, the invention must be presented in such a way that a diverse audience, ranging from a person skilled in the arts to a judge with no scientific background, can understand it. Further, a patent agent has the task of explaining the patent application to the inventor so that they understand why the document is such a departure from a scientific publication. Other desirable qualities in a patent agent include: creativity to envision the invention for what it could be, not just what the inventor has already done; effective time-management skills to know how to efficiently use the limited time available to produce the best product possible; and determination to persevere through the pressures and difficulties of the profession, such as the exam process!
Sure, I miss the lab. However, I make frequent visits to the labs of my inventors, mining for patentable inventions. I believe that the profession of patent agency is one of the best-kept secrets in the world of science. There is little mention of the profession within academia, yet we all must come through that route. My advice to those drawn to patent agency as a career choice? Go for it!