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   Advice on process from scientist to IP
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   Author  Topic: Advice on process from scientist to IP  (Read 988 times)
watoosi
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Advice on process from scientist to IP
« on: Jun 23rd, 2005, 4:36pm »
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I am interested in working in the IP field either as Patent Agent or Scientific Specialist.  I have a B.S. in Biology and a M.S. in Physiology.  I have been working 10 years in Molecular and Microbiology and Biochemistry.  What are the steps one should take to gain access into this field?
Do companies hire people as trainees with experience in science but no experience in the patent field?
Should I try to take to Patent Bar Exam first?
 
 
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Wiscagent
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Re: Advice on process from scientist to IP
« Reply #1 on: Jun 24th, 2005, 8:32am »
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  “What are the steps one should take to gain access into this field?”  
 
Since you have no background in the patent field, I’d suggest that you read several general books and perhaps take a course on intellectual property and patents before studying for the patent bar.  I’d also suggest speaking to several patent agents or attorneys to learn more about the type of work they do.  (The USPTO website provides a directory of patent practitioners which you can search by city or zip code, among other fields.) When you have a better understanding of patents, then you can make a better decision on whether or not to change careers.
 
     “Should I try to take to Patent Bar Exam first?”
 
Based on many of the postings in this forum, it appears that some people with no more background in patents than you have, just jump right in and start studying for the patent bar.  I don’t think that’s a good idea.  If you first do some more general learning, you’ll be better able to understand the overall picture and put things into context when you study for the exam.
 
The patent bar exam is based on the Manual of Patent Examining Procedure (MPEP).  The MPEP is NOT designed as a text book, and for someone unfamiliar with patents, it is not a good place to start.
 
     “Do companies hire people as trainees with experience in science but no experience in the patent field?”
 
There are some positions for technical experts in law firms.  I believe they are few and far between.  If you have any contacts, at work, through family or friends, perhaps in a professional organization, you might be able to get your foot in the door.  Have you authored and published technical articles?  That might help demonstrate your writing ability.
 
Good luck,
 
Richard Tanzer
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Richard Tanzer
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Re: Advice on process from scientist to IP
« Reply #2 on: Jun 24th, 2005, 11:26am »
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I would guess that taking the bar and becoming an agent would make anyone more marketable.  The difference in salary costs for pre- vs. post-par for an agent cannot be much of a difference with under 5 years experience in the field, so that would not be much of an issue.
 
If one has a PhD and is looking for a patent agent position to get started/get a foot in the door, is the process any different?  It seems to me that anyone with zero (or close to it) law experience, regardless of technical background, should apply to firms directly as there are never listings for, "patent agent with 0 years experience."  Just a thought.  The only way I can then see someone getting a foot in the door is via the long publication list + PhD (probably.)  
 
Can anyone gauge a rough percentage of PhD to MS amongst patent agents?  Would be an interesting stat even if it is a rough estimate.
 
« Last Edit: Jun 24th, 2005, 11:33am by PiP » IP Logged
watoosi
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Re: Advice on process from scientist to IP
« Reply #3 on: Jun 24th, 2005, 4:01pm »
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Thank you for the comments so far.  I really appreciate the direction.  Now I have some place to start.
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DB
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Re: Advice on process from scientist to IP
« Reply #4 on: Jun 30th, 2005, 2:59pm »
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This is a hard question to answer and several posts within these message boards deal with this question in many ways.  Nonetheless, here is my synopsis.  
 
Getting into patent law without a JD is difficult.  Namely, going to law school allows one to network (alumni networks or other law students); law schools have intensive interview programs where firms come to interview students; and a JD that allows firms to bill top dollar for your services.
 
In addition, the days when a PhD and a smile landed you a job with a top firm is gone.  The reality of it (especially in biotechnology) is that there are a large number of PhDs looking to get out of the lab and into IP.  Moreover, over the last decade (or perhaps longer) the numbers of PhD/JDs have been increasing, thereby making it harder for newly minted PhDs to land jobs.
 
Furthermore, in your case, not having a PhD will hurt your chance to land a biotech IP job at a firm or company.   Mainly b/c of both the desirability of a PhD within law firms and the large numbers of PhDs currently looking.  
 
Now the good news is that its not impossible to get a IP job with no patent experience straight of out school.  And yes, a number of firms and companies hire technical specialists.  
 
The key then is, how do you land those jobs?
 
In my experience, you have 3 options.
 
1.  Network.  Although the most difficult of the 3 options, I belive this will get you the most bang for your buck.  Ask everyone you know and everyone you currently work with if they know anyone in patent law.  Go to the tech transfer office at your university(?) and meet the folks there.  If you are at a university, go through the career center's alumni network.  Email biotechnology partners at local IP firms to ask for career advice/informational interviews (DO NOT ASK FOR A JOB!!!).  The best way to get a job these days is via a personal reference.  Since you dont have a PhD its going to be a tough road ahead and you will likely get people telling you that you should get your PhD, but I do know a number of MS level scientists who work in the IP field so its not impossible.  
 
2. Go to law school.  Given the difficulty in competing against PhDs, going to law school will help you in a number of ways.  First, it will allow you to expand your biotech niche to a number of other fields (perhaps copyright/trademark/other patent field?).   Second, it will give you a better chance to land a job b/c of all the networking and potential interviewing you will do.  Third,  it will open the possibility of doing a clerkship at an IP house, thereby alleviating the high cost associated with school.  However, try to get into the best law school possible.  If you go top 20 and do well, having a MS will likely not hurt you.  If you go to a tier 3 school, getting your JD might not help you at all (even if you had a PhD)! (I know it sounds crazy but given that so many lawyers are being pumped out these days, its the sad reality).
 
3. USPTO/Company.  Becoming an examiner is a great way to transition into IP.  Alternatively, you can try to leverage your technical skills and do a couple of years of bench work at a company and then try to transition into their IP department (if they have one or do a significant amount of work).  This might be helpful if you currently work at a company, but otherwise it really is a shot in the dark.
 
 
One final note...clearly taking the patent bar (and passing) would demonstrate your comitment to making the switch as well as help distinguish yourself from other MS level scientists.  However, in my opinion the opportunity costs are high.  In the end, patent experience trumps all.  Thus, I would focus all my energy into trying to get a job vs. taking the patent bar and kinda look for a job.  Try to be as creative as possible to get some patent experience on your resume (internship? temp position?).  As a previous poster noted, getting a general sense of the field by reading some general books on patents is also a great suggestion.  The more you know about patent law the more it will help you in the long run.  
 
Good luck!
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