Beyond the Ivory Tower

Careers for Scientists in Patent Law

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By Robin Wagner

Wanted: Scientists, especially in chemistry, biology, engineering, and computer science, who are interested in working with cutting-edge researchers in universities, large research corporations, and technology start-ups. Candidates must love -- and we mean really love -- to write.

The biotech and infotech booms of the past decade have fueled demand for young scientists in an unexpected field: law, specifically intellectual property law. To help secure patent rights to inventions, law firms need scientific experts to help articulate the basis upon which their clients' ideas are novel and deserving of legal protection.

Numerous intellectual property law firms have emerged around major research areas such as Boston, San Francisco, Seattle, New York, Austin, Chicago, San Diego, and the Research Triangle, to name some key locations. And scientists, ranging from those fresh out of Ph.D. programs to tenured professors, are joining these law firms as technical advisers.

Because one may sit for the patent bar examination without having received a law degree, a scientist can join a firm as a technical adviser without any legal training. Then, while the technical adviser helps with patent applications and litigation, he or she can prepare to pass within a year or two the exam that allows them to "prosecute patents" (that is, prepare the formal applications) with the U.S. Patent and Trademark Office.

Most enter law school part time soon after they begin this new career, and sometimes their employers pay for this schooling. After graduating and passing the bar examination, they can handle the legal work needed to protect patents from infringement.

Roger Zimmerman was a tenured faculty member when he embarked on a new career in intellectual property law. Mr. Zimmerman trained as a neuroscientist, receiving his Ph.D. from Yale University in 1977. After a two-year postdoc at Harvard University, he moved to Chicago to take up a professorship at Rush University. He slowly realized, though, that he "didn't want to do this for another 25 years." He found the "grant game" discouraging, and his approach to research didn't mesh with the priorities of grant agencies.

In the meantime, his wife, a biologist, was working in industry and often came home complaining that the patent process took too long and prevented her company from moving quickly to market with new products. "There seemed to be room for a few more patent lawyers in a climate like that," he says.

While keeping his day job as a professor, Mr. Zimmerman began attending law school at night. He passed the patent bar in his second year of law school, and then quit his professorship to work full time at a law firm while he finished law school.

Mr. Zimmerman now works for a three-year-old firm in Chicago, McDonnell Boehnen Hulbert & Berghoff, which divides its practice between two specialties: the telecommunications and computer industries and the biotech, pharmaceutical, and chemical industries.

He says he is always employing his scientific knowledge on the job, but warns, "if you like to get your hands dirty and do the lab work, you'll miss that." The best part of his work? "It's rewarding to work with small start-ups, helping them build their patent portfolio. They're providing jobs that weren't there before."

"I'm getting paid to learn new aspects of biology and be exposed to a lot of creative ideas," adds Minako Pazdera, a young scientist, still in her first year as a technical adviser for the firm Marshall, O'Toole, Gerstein, Murray & Borun.

Ms. Pazdera received her Ph.D. in 1998 in molecular genetics and cell biology from Carnegie Mellon University. She had learned about patent law from several graduate school acquaintances and a career-services presentation. She also did research on the field via Next Wave, a site developed by Science magazine for young scientists. However, she hadn't yet made up her mind about a career path, so she accepted a postdoc at Northwestern University. "It's impossible to go back to bench work once you leave," she explains.

Less than a year into her postdoc, though, Ms. Pazdera was still very interested in patent law. She decided to test the waters by sending off a few job letters to law firms. For information about firms, she recommends the Martindale-Hubbell Law Directory, since it allows you to search by legal specialty and location.

Ms. Pazdera used the list from Martindale-Hubbell to find out which firms did biotechnology patent work and which hired technical specialists, since not all firms do so. Little did she know, though, that one of her first two letters would land her an interview and a job offer within only a few weeks.

Another difference between law firms and academic employers: the pace of hiring. If a firm is interested, you will hear from it quickly. Many patent agents say the hiring process, from mailing a C.V. to receiving an offer, often takes less than a month.

Ten months into her new career, Ms. Pazdera truly enjoys her job and finds herself "still very much engrossed in science." She says that patent law is more exciting for her than science research, since "instead of focusing on one protein in one pathway, you see the big picture." She also cites working with well-respected experts as another plus to her new career.

She warns, though, that patent law is not a career for someone who does not like to write. Patent applications are often 30 to 60 pages or more, with long explanations of the science involved. "You need to write fast and be very flexible," she says, since sometimes a client may need to have work done extremely quickly.

While technical advisers most often begin their careers working almost exclusively with patent prosecution, Ms. Pazdera has been able to work on litigation for her firm, as well. When one of the firm's court cases involved German-language laboratory materials, she assisted with trial preparation and attending depositions, since she speaks German fluently.

For scientists predisposed to a career that involves a lot of writing and who are not opposed to yet another graduate program, intellectual property law presents a stimulating and exciting career that keeps one close to science. As Ms. Pazdera points out, "You're seeing the cutting edge of technology a couple years before anyone else will."

Note: Margaret Newhouse is on sabbatical.