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Careers in Intellectual Property… and Making the Transition

April 15, 2014

By Byron N. Roberts, Ph.D. (Guest Blogger)

PharmTalk - A Blog for Young Scientists is a new ASPET blog primarily written by postdocs Joanna Sandilos Rega (Fox Chase Cancer Center, Philadelphia, PA) and Uyen Chu (University of Wisconsin-Madison). The primary objective of this blog is to engage postdocs and graduate students in topics helpful to your experience as a young scientist, focusing on but not limited to communication skills and core competencies of leadership and management as defined by the National Postdoctoral Association's set of "core competencies." Our hope is that this blog will be a valuable source for pointers on how to enrich your experience as a young scientist.   

Byron N. Roberts 

Byron recently joined InnovationAccess (the technology transfer office at the University of California, Davis) as an Intellectual Property Officer. Prior to this, he was a Technology Transfer Intern at InnovationAccess and a postdoctoral fellow at UC Davis in the Department of Pharmacology. He received his Ph.D. from Cornell University as part of the Tri-Institutional Training Program in Computational Biology and Medicine and his undergraduate degree in Genetics from UC Davis.

Recently I made the transition from academic research to a career in intellectual property (IP). Specifically, I made the jump from postdoctoral fellow to my university’s technology transfer office as an intellectual property officer. Given that many of you are probably postdocs or grad students, and that at least a few of you might be interested in careers outside of academic research, I was asked if I could talk a little about IP careers and how I made the transition.

I’m going to put a disclaimer in here early on: do not take any of this is as gospel. Some of this is information I’ve come upon firsthand, while the rest has come via reading and conversations with others who work in various IP careers. This information is only intended to give you a brief introduction to IP careers, get you thinking about other possible options, and provoke you to undertake your own investigations. Also, nothing that I say here represents the views of my employer; all opinions are my own.

Okay, let’s get started…

Why might you be interested in working in intellectual property?
In my opinion, there are quite a few aspects of IP careers that scientists might find appealing. First, you’ll be working in, and learning about, many different areas of science and technology. Depending on your particular career, you might be working on a plant biology case one moment, then working on a cancer therapy or nanomaterials case the next. This is quite a contrast from many academic research careers, where you’re an expert in a relatively narrow area and spend most of your time working there. In addition, not only are you learning about a lot of different areas of science, but you’re also learning about what’s happening at the cutting edge.

Second, many IP careers operate at the interface of science/technology, law, and/or business. As someone who is happiest being at the intersections of things (previously, I was a computational biologist), I found this aspect particularly attractive.

Third, many IP careers involve a lot of communication, particularly writing. Much of this communication is highly technical, but it’s also necessary to present to different audience types, some of which may have very little technical knowledge. If you enjoy taking in technical information, digesting it, and then tailoring it for presentation to different audiences, IP careers may be of interest to you.

Fourth, working in IP requires a high degree of precision. Whether you’re reading a patent, drafting patent claims, or working on a license agreement, being precise is crucial. Many of the qualities that are related to the above—curiosity, strong communication skills, and the ability to perform highly precise work—apply to people who are already in science.

What kinds of IP careers are out there?
As for this next question, I’m actually still learning the answer myself, but there are a few that I can talk about here.

The first IP-related career that I became aware of was in patent prosecution. Simply put, patent prosecution concerns the application for and grant of a patent. This differs from patent litigation, which includes legal actions related to patent infringement (again, simply put). Going back to patent prosecution, anyone can apply for a patent and represent themselves before the United States Patent and Trademark Office (USPTO), but the reality is that applying for a patent and the numerous exchanges with the USPTO are quite complex. Therefore, inventors are often represented by patent attorneys and/or patent agents. In order to represent someone before the USPTO, you need to be registered, which means successfully passing the Patent Bar Exam (not to be confused with the state bar exams that attorneys must pass to practice in their respective states). If you’re an attorney and you’ve passed the Patent Bar (in addition to your state bar), you’re typically referred to as a patent attorney. If you’re not an attorney but have passed the Patent Bar, you’re a patent agent.

Many law firms and companies employ patent agents, so one option is to pass the Patent Bar on your own and apply for patent agent positions. Alternatively, some firms will hire people with scientific expertise and provide the necessary training to become a patent agent. I even know of people who have become patent agents while working at a firm, then gone to law school, eventually making the transition to patent attorney.

Another option is to go work for the USPTO as a patent examiner. This requires neither a law degree nor passing the Patent Bar. Of course, scientific expertise in an area desired by the USPTO is necessary.

In addition to patent prosecution/examination, there’s also technology transfer, which is where I ended up and overlaps strongly with the above. With technology transfer, the primary mission is to get technology that has been conceived in academic and government institutions out into the private sector, where it can be further developed, commercialized, and made available for public benefit. Oversimplifying a bit, technology transfer in the university setting consists of two parts: patenting university inventions and marketing/licensing of university technology. These are often done in parallel, and require a strong science background as well as knowledge of patent law, business contracts, and marketing.

How to make the transition?
So you’ve decided that you want to make the transition into a career in IP, or at least learn more about your options… what next? I quickly learned that there is no prescribed path. Everyone I’ve spoken with has come from a different background and taken a different route. However, there are still some suggestions that I can make...

1. Gain experience. I’d argue that this is the most important thing you can do, but is easier said than done. However, many universities have technology transfer offices, and quite a few of those offices have formal internship programs. For example, our technology transfer group at UC Davis has two internship programs: one for postdocs and grad students (typically taking 1–2 students per quarter), and another for law students (usually two students per semester). Even if your institution’s office doesn’t have a formal internship program, I’d suggest calling them up and asking if you can come in and volunteer for a few hours per week. If your institution doesn’t have a technology transfer office, you may be able to gain experience by volunteering (or asking about internships) at a nearby IP law firm or company.

2. Audit courses. If your institution has a law school, ask the professors who teach IP law courses if you can sit in and audit. Also, to the best of your ability, keep up with the assigned reading. Not only is this a great way to get exposed to basic concepts, but you’ll also get exposed to a lot of the relevant case law. In addition to being interesting material (I think so, at least!), familiarity with concepts and cases can help you during interviews, whether formal or informal.

3. Study for and take the Patent Bar Exam. Not all jobs require registration with the USPTO, but having passed the Patent Bar can help distinguish you from other job candidates. Just the fact that you’re in the middle of preparing to take the exam can be helpful, as it shows that you’re serious. In the interest of full disclosure, I’ve not yet taken the exam myself, although I’ve been actively preparing for a couple of months now. While it’s possible to prepare for the exam on your own with materials that are freely available for download from the USPTO, I highly recommend taking a prep course. Patent Bar prep courses come in different shapes and sizes, and can cost from a few hundred to over a thousand dollars. I don’t want to appear as if I’m endorsing specific programs, so I’ll just suggest that you do a Web search for “patent bar prep” or some other similar combination of keywords. Take a look at different programs and see which best fits your needs and budget.

4. Take online courses. Some organizations such as the World Intellectual Property Organization (WIPO), Association of University Technology Managers (AUTM), and National Council of Entrepreneurial Tech Transfer (NCET2) offer courses and webinars (these are just a few—there are other sources out there as well). Some courses are free, and many can be taken online. Some even offer a certificate of completion after passing an exam. Again, this will both increase your knowledge base and help demonstrate your resolve.

5. Network and engage. I’m pretty sure that this one is no surprise, although people are often afraid of doing it. Check out events hosted by your institution’s business school or local associations. As one form of networking, I recommend informational interviews. I’ve talked with people in tech transfer offices and law firms alike. Also, participate in forums such as LinkedIn’s “PhD Careers Outside of Academia” (there are other useful groups out there—this just happens to be the one that I used the most).

I hope that some of this will be helpful. As I said above, careers in technology transfer and other areas of intellectual property can be very rewarding, yet are unknown to many in graduate school. And again, there is no clear path to be followed, which can be either encouraging or discouraging, depending on your disposition. I went from postdoctoral research into tech transfer, while others have gone from law school into tech transfer, possibly by way of industry. Some in this career hold both a Ph.D. and J.D., while others only hold one or the other. Finally, as I also mentioned above, these are only a few of the possible careers within the realm of intellectual property, and my suggestions above are solely that…. suggestions. If you have suggestions, advice, comments, etc., we’d be interested to learn of them in the comments below.

Good luck!

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