"Now, I get to deal with novel ideas and discoveries on a daily basis." --Peter
Brown
After almost a decade at university training to be a scientist, I decided about a
year ago to change careers to become a patent attorney. You might wonder why I left
behind my lab bench and trusty pipette and made a leap into intellectual property
(IP) law.
I first decided to become a scientist because I had always been interested in
unraveling the complexities of human disease to facilitate the development of new
therapies. However, it soon became apparent that almost any scientific research with
an industrial application--not just medical applications--grabbed my attention.
Now is an exciting time for biomedical science. Rapid technological advancement has
prompted genomic sequencing projects and the like to produce masses of data with
invaluable secrets waiting to be revealed. So, scientific research could have
provided the opportunity to really leave my mark in this world. Of course, this is
almost every scientist’s dream.
In my doctoral studies at the University of Auckland, I made a substantial discovery
in diabetes research. To cut a 5-year story short, I solved the detailed atomic
structure of an important enzyme called MIOX. In people with type 2 diabetes, MIOX
activity is abnormally high; this is believed to be one of the major causes of
insulin insensitivity. We hope the structure of the MIOX active site will allow us
to design compounds that bind and inhibit it in order to restore insulin signaling
in type 2 diabetes. This research made me a runner-up for the MacDiarmid Young
Scientist of the Year Award in 2007.
So why did I decide to change careers, given the positive outlook of the profession
and my years of arduous training?
I was serendipitously introduced to the IP world in the 4th year of my Ph.D. when we
filed a patent application to protect the MIOX structure for drug development. It
was fantastic to witness lab research progress from a mere concept to a discovery
that could potentially improve the lives of millions of diabetics down the line. As
all scientists know, it is tempting to publish the results quickly to prevent being
"scooped" by any competitors. However, amid the excitement, we knew IP protection
was needed before we published our results to the scientific community. Ultimately,
this step may be critical to the potential impact of the research. This experience
opened a brand-new door for me: I saw that a career as a patent attorney would truly
allow me to contribute to the progression of science into the marketplace.
Just like biomedical research, I could clearly see that there has never been a
better time to be involved in the commercialization of science. In New Zealand,
greater emphasis is now being placed on IP as we acknowledge that modern science is
much more than blue-sky discovery. In many cases, research needs to translate into
useful applications; yet without IP protection, there is little financial motivation
for organizations to discover, let alone go to the trouble and expense to develop,
engineer, and market, a new product or service. Even university research institutes
are weighing IP more heavily these days; in the past, emphasis was placed almost
entirely on scholarly research publications and teaching.
In early February 2008, I accepted a position as a patent-attorney-in-training.
Getting a position in the profession was a fairly grueling task that required
considerable determination and patience. In hindsight, these traits were no doubt
taken into consideration as they translate to important characteristics needed for
the job.
Now, my science background gives me sufficient understanding of the technical and
theoretical aspects of scientists' inventions to enable me to prepare and defend
their patent applications through the patent "prosecution" process.
I also help clients decide an appropriate IP-protection strategy, which depends on
the invention and its potential market. In New Zealand, most of our products are
destined for export, so an international approach is often necessary to gain the
required overseas protection. Alternatively, if a client is resource-poor, a
targeted approach toward key markets can be vital not only for IP protection but
also for gaining interest from potential investors.
In my new role, the daily work--and even the science--varies widely, as my clients'
inventions cover a range of scientific disciplines. This is in complete contrast to
my research past, during which I often studied a particular topic in great depth. I
find it particularly satisfying when I'm able to identify new applications for
scientific inventions, essentially broadening the scope of the client's protection.
My work, of course, also requires a good knowledge of law. One of my jobs during the
patenting process is to convince an examiner that a client's work is novel and
inventive--something new compared with the "prior art"--using current legislation,
relevant case law, and my scientific background. This provides a great opportunity
to practice my debating skills, and I am, surprisingly, enjoying that challenge.
Further, I find that achievement can be more easily measured in IP protection than in
scientific research. In science, I often felt there was little chance to gauge your
achievement--often only measurable when your work is published. In the patent world,
reaching targets such as drafting a patent, overcoming an examiner’s objections, or
getting a patent application granted gives an almost daily sense of achievement.
And, of course, part of your clients' commercial success can be attributed to your
efforts.
Sure, as a patent attorney, the inventions are not your own. However, you do develop
a sense of pride and accomplishment for an invention during the patenting process,
which can take several years. I am involved with many patent applications, so the
dynamic stream of work keeps me more than motivated.
Finally, in my new role, I am still right at the forefront of the discovery process.
For me and many other scientists, this is undoubtedly the most exciting aspect of
research. Now, I get to deal with novel ideas and discoveries on a daily basis.
I recently attended a lecture given by Nobel Prize winner Peter Agre that resonated
with my experience. He emphasized that a scientist should not feel guilty for
removing himself from the traditional role of lab work. Instead, we should seek a
career that allows us to contribute best to scientific discovery, depending on our
skills and interests.
No doubt, I have found my place.