I began to consider patent law as a career after working closely with a patent attorney to help prepare a patent application based on the research reported in my doctoral dissertation. During this process, I learned that the scientific standards for peer review (on the one hand) and patenting (on the other) were different, and that the two writing tasks -- a scientific paper and a patent application -- required different approaches. I also learned that the analytical skills I gained from my scientific training were directly applicable to assessing whether an invention was patentable.
A patent law career offered practical advantages, I realized, over a career in academia. In academic science, funds for conducting research were -- and continue to be -- very limited, and the requirements for obtaining funding are exceptionally high. Capable and qualified scientists were not being funded, and many talented postdoctoral scientists were ahead of me in the long line for an academic position. Meanwhile, there was a shortage of people qualified, in science and in law, to work in patent law, and in the biotech industry the need for new patent expertise was -- and is -- increasing.
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Yet, making a transition into patent law didn't require blazing a new trail, since patent law is a well-established career path for scientists. I was not aware of it at the time, but nearly every examiner in the biotechnology group at the United States Patent and Trademark Office (USPTO) has a Ph.D. and has conducted scientific research. Indeed, most attorneys working in biotechnology patent law have science Ph.D.s, and many have impressive postdoctoral experience.
Developments in bioscience occur frequently, making the work dynamic and unpredictable. Patent attorneys are exposed to many new discoveries well before they are available to the public, providing a rare glimpse into our future.
The legal aspect, too, is dynamic. Congress and the courts are still sorting out the legal framework for biotech patents. Recently, the courts decided a controversial case that asked a fundamental question: Are isolated genes patentable? The judges relied extensively on scientific findings to reach their much anticipated decision: Isolated genes are indeed patentable, at least for now.
That decision -- and its tenuousness -- directly impacts those working in (and depending on) patent law. The future of many biotech companies depends on the gene patents they own and the strength of those patents. The potential for a dramatic revision of patent law makes it essential for biotechnology attorneys to stay abreast of developments in the law so that they may advise their clients appropriately.
Another example of the need to keep up with the law is the recent establishment of a new law related to “biosimilars.” The Food and Drug Administration (FDA) has not yet issued guidelines for licensing biosimilar products in the United States; biotechnology patent attorneys must nevertheless be prepared to review information from FDA and USPTO and to advise clients without these guidelines. Skills in the biological sciences and the law help attorneys understand what the new U.S. biosimilar law means and how it is likely to be applied. I recently organized a conference and wrote a treatise on the new biosimilar law, which shows that a career as a patent attorney offers opportunities similar to those offered by a career in academic science.
Biotechnology patent law requires the communication of complex scientific ideas, so excellence in writing and speaking is essential. While conducting postdoctoral studies to identify and modulate the activity of the NPM-ALK oncogene, I practiced and developed the skills necessary to explain the relevance of my work to lay people and nonspecialist scientists. Some grant-review panels -- such as those for cancer research grants -- include a layperson whose opinions must be considered when preparing an application.
Practicing patent law requires managing a demanding schedule. Fortunately, my postdoc (and my graduate work) helped me learn this skill, too. As a postdoc, I coordinated experiments, taking into account the availability of personnel, machines, viable reagents, and so on. Missing a time point could have set the research back for weeks, or longer. The requirements in patent law are similar: It's necessary to juggle several projects, each with several deadlines and many people involved. Failing to keep to a schedule can have a serious impact on the success of client companies.
I have a law degree, but a law degree isn't required to work in patent law. Ph.D. scientists who move directly into patent-related careers may work as technology specialists or as agents. Typically, these jobs require passing an exam. To be eligible to take the exam, you simply must have formal training in a relevant science.
But many people who enter this field with Ph.D.s -- including me -- choose to become attorneys: attending law school, passing the patent bar examination, and gaining admission to a state bar association. A formal legal education is expensive and demanding and requires years to compete, but it will make you more marketable. Some firms will pay for law school tuition, but even if you can locate such an arrangement, your employer/sponsor will probably expect you to work as you study, which will delay the completion of your degree.
Patent law jobs exist in many settings, not just at law firms. Patent professionals work in companies, state and federal governments (including USPTO), private institutes, and nongovernmental organizations. Each organization has different objectives and functions.
Within a company, you're likely to specialize, since most companies are focused on a narrow area of science (i.e., therapeutic human monoclonal antibodies). The objective of patent attorneys working in companies is to protect and expand the intellectual property assets of the company by developing new patents and helping to protect existing ones.
Examiners at USPTO, on the other hand, read patent applications, study the technology described in the applications, and assess the state of the art (i.e., the science) to determine whether a proposed invention is new and not obvious. Here, you may be called upon to evaluate a fairly wide range of technology, but you will still have a specialty.
Another option is working at an institution, such as a university. Here, you may work with an even wider range of technology, with patentable ideas emerging from disciplines as far apart as, say, physics and microbiology. In my work at New York University in the technology transfer office, I evaluated the potential of university research and attempted to identify companies that might be interested in licensing the technology.
If you are considering biotechnology patent law as a career, talk to as many people as you can: to someone at USPTO about taking the patent examination, to admissions counselors about your law school options, and to attorneys about their day-to-day work. Professional associations, including the American Bar Association and the American Intellectual Property Law Association, are outstanding sources of information and are usually happy to connect interested people with practitioners in the field.
Making the decision to switch to a career in patent law requires weighing and balancing many factors. But if you have the appropriate skills and enjoy analyzing and communicating about scientific innovations, patent law could be your ideal career.
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