non-traditional careers

[Othello]

I'm contemplating a career in patent law upon graduation with a PhD in Immunology and I was curious to know if anyone can direct me to a place (e.g. book, web, etc.) where I might be able to obtain more information.

I've also heard from other people that job market is very slim for a PhD graduate in biological sciences for the field of patent law. Graduates in chemical or electrical engineering are more in demand supposedly. Anyone know if this is true and if so, how "slim" is slim?

Obviously I do not have much experience in law or patent since I spend a good 23.5 hours a day in lab. What exactly do people look for (e.g. undergrad gpa, grad gpa, publication record?) when they hire individuals for patent agents and what can I do in the meantime (0.5 hours i'm not in lab) to help better qualify myself for such a career?

Thanks

[Shawn]

Here is a good web site to start with.

www.intelproplaw.com

My advice would be to get some experience anyway you can. You are correct in assuming that the job market for biotech JD's isn't what it was 4 or 5 years ago.

You could prep for and take the patent bar to become a patent agent. With a PhD and that you may find a job. There are also Jobs as technical advisor positions at Big Firms such as morgan and finnegan. Both patent agent and tech specialist jobs are tough to come by with no experience. If you are at a Big institution such as Harvard or Yale you may have an easier time because (unfortunately) law is a field that loves to name drop.

In order to get experience you may want to approach your School's tech tranfer office and see if they have post doctoral position's if not ask them if you can volunteer to do work evaluating the marketability of potential technologies.

If you want to go to law school then there could be plenty of opportunities for a JD/PhD assuming you can go to a top law school. There are a number of biotech JD/PhD's who went to law school and can't find work. In general this is a function of attending a middle of the road (or worse) law school.

[Othello]

Thanks for the advice Shawn. Much appreciated.

Upon graduation, my tentative plans are to take the patent bar and apply for a position as a patent examiner with the USPTO or a patent agent/technology specialist position with a law firm in the hopes of going to law school at nights and eventually becoming a patent attorney.

I guess I\'m just baffled at what the USPTO or different law firms look for and value (undergrad gpa, grad gpa, publications??) when considering an applicant for such positions.

Anyway, thanks again for the advice.

[Dave Jensen]

Hello Othello,

We have frequent posters by the name of Jill and Chris. They are scientists who moved over to IP Law. You'll find their comments on this topic are very interesting and spread out among various threads, such as this one:

Informational Interview/Patent Agent/IP Law

Dave Jensen, Moderator

[Chris Buntel]

The USPTO looks for people with a strong technical background to be examiners. They train new examiners very well, and you don't need to take the patent exam beforehand.

Law firms want people that can help provide service to their clients. Your technical background must reasonably match their client base. Think about the big industries -- pharma, petrochemical, electronics, and so on. Analytical chemistry may not be as marketable for instance.

It is more difficult to land a job in a firm than it was 5-8 years ago, as many more people are aware of this career choice. Still, it can be done with some effort. Go to meetings (I'm at AUTM's national meeting this week), network with attorneys and patent agents, talk to your university's tech transfer office. If you can pass the patent exam, it should make you more attractive to a firm. Can you take an IP survey course at your university, or a basic licensing course through AUTM?

Chris Buntel.

[J.J.]

I second what Chris has said. Anything that you can do to separate your resume from the pack will be helpful, and he has suggested a number of the ways that people traditionally do that.
One thing that I have seen on some resumes is an internship with a law firm during grad school. Remember that your school is a client of at least one firm. Some schools have worked out internship programs at their preferred law firms as a career development tool for their grad students. If your school doesn't have this, you can work to set it up. Talk to your tech transfer office about the law firms that they like with whom they have good relationships.

[Chris Buntel]

Great timing - the USPTO just issued a press release that it anticipates hiring 900 new patent examiners in FY 2006, bringing the total to 4500. While not all will be chem/bio, it is still a really big number.

The link is:
http://www.uspto.gov/web/offices/com/speeches/05-09.htm

Chris Buntel.

[Val]

> USPTO... anticipates hiring 900 new patent examiners in FY 2006

Caveat emptor. I heard that USPTO puts high intellectual demand on its examiners -- it requires the examiners to complete searches and examining in a too short period. The burn-out ratio is high. This is why they hire lots of new examiners each year.

I presume, one can use thusly obtained background in patents to become a Patent Engineer at an R&D company, or a Technical Consultant to Patent Attorney. If one goes the law route, the next step is to become Patent Attorney Trainee, sit for bar exams and become the money-sweeping Patent Attorney himself.

Regards,
Val

[Yvonne]

Val- thanks for the insight- I am considering applying at the USPTO. I did go to their recent job fair. I have also heard the burn-out rate is high there. However, there appear to be avenues to follow through, as you mentioned.

[Dave Jensen]

As a recruiter, I can tell you that USPTO experience is a great start to a career in IP. Companies, hiring managers, etc, all respect and admire that experience. You don't have to make it a career,

Dave Jensen