From Graduate School to Patent Law

Surely, no budding scientist imagines him/herself as ever working in the legal field. Interestingly, though, both graduate school and law school overlap in at least one regard. Defending one’s stance with appropriate data in a compelling manner is a skill that everyone, scientist or lawyer-to-be, is forced to pick up along the way. This skill’s utility makes scientists attractive prospects for careers in intellectual property law. Intellectual property law primarily involves securing and enforcing legal rights for those who create original works – inventions, designs, etc.

The road to intellectual property law after graduate school varies depending on what one studied in graduate school. For individuals who pursued a PhD in a non-technical field, entering intellectual property law directly after graduate school is difficult, as many firms are understandably looking for candidates with experience in the natural sciences or engineering1. However, a PhD in the humanities or social sciences primes one as a top candidate for law school, after which intellectual property law becomes a viable option for those with a non-technical PhD.

On the other hand, for those who pursue technical PhD’s, it is possible to enter as a technical specialist or scientific advisor at law firms with an intellectual property practice immediately. Not only does this position allow for a comfortable salary, but most firms will also reimburse such individuals for law school and allow them to work part-time. Moreover, work as a technical specialist does not require a Ph.D., as many firms will hire candidates with simply a B.S. In general, all technical specialists are required to enter law school within a year of beginning at the firm1. Following completion of law school, technical specialists must take the United States Patent and Trademark Office examination to become a registered patent agent.

For the scientist at either the graduate or undergraduate level considering a career as a technical specialist, firms value experiences that garner teamwork, critical thinking, and intellectual curiosity. For graduate students, simply successfully completing the PhD and publishing manuscripts in journals is generally enough to demonstrate these desired attributes1. For undergraduates, potential extra-curricular activities to develop these qualities include scientific research, collegiate debate, and writing for a journal. Demonstrating one’s capacity to act as a part of a team is critical, so activities done with a group are particularly beneficial.

One hallmark difference between work as a scientist versus work as a technical specialist turned patent agent is the breadth of science one encounters. The scientist working as a post-doctoral scholar after graduate school deals with a very narrow scope of material, whereas patent agents regularly handle material that spans the full gamut of basic science. For many scientists, focusing on a certain topic in depth is desirable; in this case, a career as a technical specialist will perhaps be unrewarding. However, for scientists who enjoy heterogeneity in their work, the technical specialist route may be recommended, as they get to witness innovation in a variety of fields on a daily basis.

Another potential venue for a career in intellectual property law lies within the federal Patent and Trademark Office. Here, one with technical expertise at either the undergraduate or graduate level may work as a patent examiner. In short, patent examiners work to review patent applications to determine which applications should be granted a patent. This involves determining whether the invention being considered offers a new technical contribution to the public. Many employers are interested in hiring patent examiners, so it is often considered a transitional position in one’s career1.

For many scientists, becoming involved in patent law does not equate to leaving the forefront of one’s field behind. According to Kate Rigaut, Ph.D., J.D., a partner at Dann Dorfman Herrell and Skillman, “I’ve had the privilege of writing patents on work that appears in journals like Science and Nature. It’s brilliant, cutting-edge science, and I get to see it first!”2 For the scientist-turned patent lawyer who grows disenchanted with life working in a law firm, many corporations seek to hire such individuals as in-house counsel.

In summary, transitioning from a career in basic scientific research to intellectual-property law may not be as difficult as many think. The graduate student considering this career path need not do anything different now but consider the various venues for involvement in intellectual property law. Many opportunities exist within the field, and if one is not happy on the legal side of the fence, the bench is still waiting on the other side!

References

Ouellette, Lisa L. Transitioning from Science to Patent Law. Written Description. March 15, 2015.

Steward, Gina. From Ph.D. to Patent Lawyer. The Chronicle of Higher Education. June 19, 2013.

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