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Environmental Factor, May 2013

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Brown bag lunch highlights careers in intellectual property and patent law

By Aleksandra Adomas

Mallikarjuna Metukuri, Ph.D.

For Metukuri, one of the more valuable pieces of information he learned was that the patent bar exam, which can make entering patent law easier, is an open book test that may be taken anytime. (Photo courtesy of Steve McCaw)

Laura L. Kiefer, Ph.D., J.D.

Kiefer said, young scientists interested in intellectual property law have had a harder time finding a job in Research Triangle Park, N.C. She recommended gaining additional law experience, such as through an internship, while still doing graduate or postdoctoral research. (Photo courtesy of Steve McCaw)

Rob Schwartzman, Ph.D., J.D.

Schwartzman did his postdoctoral research at the Carnegie Institution of Washington with John Cidlowski, Ph.D., current chief of the NIEHS Laboratory of Signal Transduction. Schwartzman said visiting NIEHS to talk about his career was like completing a full circle. (Photo courtesy of Steve McCaw)

The last brown bag lunch in the 2012-2013 series (see text box) explored career options available to scientists in intellectual property and patent law. Laura L. Kiefer, Ph.D., J.D., of Olive Law Group, and Rob Schwartzman, Ph.D., J.D., of Myers Bigel Sibley & Sajovec, two patent attorneys with research experience in the life sciences, spoke with NIEHS trainees April 11 about the responsibilities of a patent expert.

From researcher to patent lawyer

Mallikarjuna Metukuri, Ph.D., a research fellow in the NIEHS Laboratory of Signal Transduction, hosted the event. He and his fellow trainees were fascinated to hear that both guests obtained their J.D. degrees after earning their Ph.D.s and completing postdoctoral training.

After graduating from Duke University, Kiefer went to work as a biochemist for a startup pharmaceutical company. Being the only person working on a project led her to consider other careers, so she took a job as a patent agent for a while, before deciding to go to law school full time.

Dedicating 11 years to his research training, both at the University of North Carolina at Chapel Hill and as a postdoctoral fellow at the Carnegie Institution of Washington, Schwartzman found that focusing on a single aspect of a biological question limiting and unsatisfying. So, he changed careers to become a patent and trademark office examiner. Afterward, he entered law school and attended part time.

Patent law career options

Kiefer and Schwartzman explained that a scientist could be hired by a law firm as a technical specialist, patent agent, or patent attorney. A technical specialist has no law experience and is required to understand the science behind an invention.

“After all, it’s easier to teach a scientist some law than a lawyer some science,” Schwartzman pointed out.

While both a patent agent and an attorney need to pass a patent bar exam, only an attorney has a law degree. Although an agent is not able to sign off on all legal documents, both agents and attorneys prepare patent applications and communicate with the U.S. patent office. Many, but not all, law firms treat their agents and attorneys the same, and expect the same amount of work from them. Attorneys can anticipate their salaries to be higher, making the investment of going to law school worthwhile.

The fourth option of practicing patent law is to work as a patent examiner for the United States Patent and Trademark Office. Examiners, who must be U.S. citizens, review patent applications for compliance with basic rules and legal requirements. Referring to his own time at the office, Schwartzman called it a very valuable experience that makes finding the next job easy. He explained that law firms are looking for former examiners familiar with the patent application process, and reviewers with four years of experience are exempt from the bar exam requirement.

Qualities of a good patent specialist

Kiefer emphasized that writing well and communicating clearly is crucial for anyone entering patent law. Additionally, patent agents and attorneys frequently have to argue why their clients' inventions should be patented. It takes focus, discipline, and intelligent reasoning.

“You need to be able to pick up a new technology, understand it, and have a conversation about it,” Kiefer said.

Kiefer and Schwartzman described the job as hard and extremely deadline driven. The workload is expressed in billable hours that can amount to 1,800-2,100 a year. To bill an eight hour workday, an agent or attorney may need to put in 10-11 hours, which may include nonbillable meetings and lunch breaks. But, exceeding expectations could be a road to partnership in a law firm.

Both Kiefer and Schwartzman spoke highly of job satisfaction, such as the joys of having a patent application approved, talking to highly engaged inventors, or working for a startup company that is purchased by a bigger corporation for its profitable patents.

(Aleksandra Adomas, Ph.D., is a research fellow in the NIEHS Laboratory of Molecular Carcinogenesis.)

NIEHS Trainees

NIEHS trainees learned that a lawyer employed as an in-house counselor by a pharmaceutical company, rather than a law firm, may have a more diverse set of responsibilities, including reviewing licenses, and employee and contract agreements. (Photo courtesy of Steve McCaw)

Christopher Campos, Ph.D.

Christopher Campos, Ph.D., an Intramural Research Training Award fellow in the Laboratory of Toxicology and Pharmacology, added to the conversation, by saying the fields of computer and electrical engineering always need new patent lawyers. (Photo courtesy of Steve McCaw)

Brown bag lunch series

The NIEHS Trainees Assembly Steering Committee initiated the lunch series in 2011, as a way of highlighting career options in different areas of science (see story). Tammy Collins, Ph.D., the current director of the Office of Fellows’ Career Development, was, at the time, an Intramural Research Training Award fellow in the Laboratory of Molecular Genetics and in charge of selecting themes, inviting guests, and moderating meetings. Sonika Patial, Ph.D., a visiting fellow in the NIEHS Laboratory of Signal Transduction, took over in 2012 and chaired the series that featured a number of engaging topics.

Month TopicHost
Sept. 2012 Industry - BenchPriya Ramamoorthy
Oct. 2012 Academia -Teaching and ResearchMelissa Hausburg
Nov. 2012 Industry - NonbenchSheetal Thakur
Dec. 2012 GrantsmanshipJennifer Sims
Jan. 2013 NonprofitsAshley Godfrey
Feb. 2013 Scientific writing and editingSonika Patial
March 2013 Consulting and project managementGeorgette Charles
April 2013 Patent lawMallikarjuna Metakuri

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