Career Capsule: Patent Law
By Jocelyn Lippman-Bell, Ph.D.
Has a recent query into what you want to be when you grow up thrown you into a state of panic? Do you want to leave academia but have been on the path for so long that you don’t know if other paths exist? Do you want to learn about jobs other Ph.D.’s perform? Then sit back and enjoy our next installment of the BPC Newsletter’s continuing series, Career Capsule, where we take a look at what’s beyond the ivory tower to help you decide which career suits you best.
Last time, we discussed Life Science Consulting (https://bpcnewsletter.wordpress.com/2015/07/11/career-capsule-life-sciences-consulting/), a career ideal for scientists interested in business. If you are business-minded, but also fascinated about how ideas move beyond research to become products, therapeutics, or machines, intellectual property (IP) and patent law might be for you. Luckily, I happen to know someone in the field who was willing to teach me all about it.
Even before completing his Ph.D. in neuroscience, Mark Bell, a third-year patent agent at the law firm Pepper Hamilton LLC, knew he would not take the typical academic track. Though he loves science, he has a mind for business. Therefore, he began a venture capital internship to learn how applications from labs spin off into companies and real-world products. After receiving his Ph.D., Bell moved straight to working with biotechnology start-ups, and in the process, met several IP lawyers, as IP is crucial for the development of these small companies. Soon Bell realized that IP might be the field for him. In his words, IP/patent law “is where science meets law meets business, and that’s a great place to be. I’m always learning something new. Most people appreciate the speed [with which] science and technology change, but business and law change too, more than you might expect.”
So what does a patent agent do? Patent agents create patent applications and defend those applications to the United States Patent and Trademark Office (USPTO) in a process called patent prosecution. Not all applications are successfully issued as patents. Unlike patent attorneys, patent agents focus solely on patents, and cannot deal with other forms of IP, such as trademarks or copyrights, or litigate the use of patents. Bell says his typical day involves speaking with clients (especially inventors), writing new patent applications, and assisting attorneys with patents and other analysis and diligence projects such as mergers and acquisitions involving biotech companies. Although Bell works at a law firm, patent agents can also find jobs in technology transfer offices at universities or directly working for companies. Regardless of the setting, they have the same primary function: writing and prosecuting patents and assisting with the process of moving scientific and technological ideas into the business sphere. Bell particularly loves working with inventors and new ideas in a broad range of applications, as patent law by its nature deals with cutting edge technology in many fields. One downside, for those who continue on to become patent attorneys, as Bell plans to do, is that they will likely work long hours, but in return they are better compensated and can perform a wider variety of tasks.
A normal career arc in patent law is to get a science Ph.D., do a postdoctoral fellowship, and then become a technical specialist. One can also get to this point with a masters degree in something such as engineering. The next steps are passing the USPTO registration exam, commonly known as the “patent bar” to become a patent agent, and then if one so chooses, to attend law school and become a patent attorney. Not all patent attorneys take this track. For example, if you know you want to go into patent law, you can take the patent bar on your own before getting a law job. Bell explains that while passing the patent bar exam prior to your job search will make getting a job easier, “what I learned while working made passing the patent bar exam much easier. Either way, take a training course before you take the test!” Also consider that if you take the patent bar while working as a technical specialist, your employer may cover many of the associated costs.
How do you know if you would be a good fit for patent law? Bell described three main characteristics needed to succeed in the field. First, you need an analytical mind with a love of fine details, especially technical details. “Most postdocs already know that accurate details matter, and have honed their critical thinking skills,” Bell says. Second, because of the strong financial component – patents cost money to make and enforce – if you don’t inherently like business, patent law will not be the best fit for you. Finally, communication skills are key to understanding and translating ideas between the diverse vernaculars of technology, law, and business. Bell explains, “Most postdocs have written grants and papers. In a career dealing with patents, you are similarly writing to communicate … not for a general audience, but for the audience of the patent. For example, a biochemistry patent describes something in a manner that will allow it to be replicated by another biochemist, but not necessarily by a mechanical engineer.”
If this sounds like you, start learning more. The USPTO website and sciencecareers.com are good places to start, with articles such as this: http://sciencecareers.sciencemag.org/career_magazine/previous_issues/articles/2011_10_14/caredit.a1100113. Bell also recommends, “look up patents in your scientific area of specialization using Google Patents and see if you have any interest. They read like science papers but with law in them. If you read it and … think it’s an interesting way to describe a new product or invention, that’s a good indicator that you might enjoy a career in patent law.”
So how do you get started on your path to patent law? We have an amazing network as part of the UPenn community. Take advantage of it! Do alumni searches on LinkedIn or contact the career office to help you locate alumni who are in patent law. Bell says, “Write to them nicely to ask for an informational interview. Face time is really important. That person can point you in the right direction, and provide you with contacts or information. Get to know people.” You can also join business events involving startup companies, as patent attorneys often attend. Bell emphasizes that “once you move past being someone just looking for a job to someone who has taken the time to learn and meet with people, your chances go up dramatically.”