From entrepreneur to patent agent: Michael Yamin.
As a lawyer with a background in science, Jennifer Gordon has skills that allow her to switch from the courtroom to the laboratory bench without any problems. Gordon was among the first wave of life-science PhDs who joined firms that concentrate on patent law. In the early 1980s, while she was doing her PhD in biochemical engineering at the Massachusetts Institute of Technology in Cambridge, she met Leslie Misrock, a partner at Pennie & Edmonds in New York, who wanted to build a law practice that would focus on biotechnology, a field that was then in its infancy.
Gordon joined the firm as a law clerk in 1981, working in the office during the day and attending Fordham University School of Law at night. The firm's clerk programme covered the cost of law school and allowed her to gain valuable work experience.
Now a partner at the New York office of law firm Orrick, Herrington & Sutcliffe, Gordon has watched patent law relating to biotechnology develop. When she started out, there was no biotechnology-specific case law or legislation; now, US patents cover everything from single genes to multicellular organisms. Looking back, the opportunities for growth seemed obvious. "It became clear that we were in an area that needed its own law," Gordon says.
As the law has evolved, so have the options for graduates wanting to pursue a career in science-related law. Clerk programmes that sponsor a PhD through law school now exist both in the United States and across Europe. But there are also opportunities for scientific PhDs who don't want to do any formal education at law school — they can become registered patent agents or technology-transfer specialists.
To become a US patent agent, scientific graduates must pass the exam set by the US Patent and Trademark Office (PTO). If successful, they are allowed to write patents and represent clients before the PTO. Law firms, universities and pharmaceutical and biotechnology companies routinely employ patent agents.
Michael Yamin, a registered patent agent, took an entrepreneurial approach to his career. After his academic training, stints with two biotech companies and the non-profit Picower Institute for Medical Research in Manhasset, New York, exposed him to various aspects of patent law. As he enjoyed those encounters, he decided to join a law firm. Several years later, Mojave Therapeutics, a biotech company in Hawthorne, New York, recruited him as director of intellectual property and licensing.
At Mojave he manages the company's patent portfolio and licensing agreements. He advises graduates who want to pursue a career in a legal field to manage their expectations. Patent agents tend to have a less clearly defined role inside a company than patent lawyers, and need to have realistic expectations of their duties. For example, a patent agent without a law degree would not be allowed to handle litigation.
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Becoming a patent agent in Europe also involves sitting a qualifying examination. But the exam covers more ground than its US equivalent. Passing it confers the rank of European patent attorney, rather than agent, which allows you to take on additional responsibilities such as writing opinions on patent infringements.
Andrea Carreira-Staubli is well aware of the differences. She is a patent agent in the United States, works at a law firm in Switzerland, and is studying for the European qualifying examination. She was born in Switzerland, where she received her masters in chemistry. After earning her PhD in applied biological sciences at the Massachusetts Institute of Technology, she did two postdocs at the California Institute of Technology in Pasadena, where she realized that she wanted to be involved in science, but didn't want to stay at the bench.
As she enjoyed her work preparing patent applications during her postdoc, Carreira-Staubli decided to take the patent agent's exam in the final year of her fellowship. After certification, she worked at a Los Angeles law firm with the intention of eventually attending law school at night.
But after one year she moved back to Switzerland, where she worked as a trainee patent attorney for three years with drug firm Novartis in Basel before joining Isler & Pedrazzini, a Zurich law firm, in 2001. She is responsible for all of the firm's biotechnological and chemical patent applications.
Carreira-Staubli describes the work in Europe as less hectic than in the United States. The hours involved allow the attorneys to invest the appropriate time in client care, as well as leaving time for continuing their personal education, she says.
For graduates who want to avoid both law school and patent-agent exams, the role of technology-transfer specialist offers another route into law. This kind of work provides a link between intellectual property and business for companies or universities, and the individuals involved tend to be self-taught — and self-motivated.
Trail-blazer: Jennifer Gordon was one of the first scientific PhDs to move into biotech law.
That profile fits Jahanara Ali, associate director of business development at Mojave Therapeutics. Ali obtained a PhD in molecular biology from New York University and then did two postdocs, one at Rockefeller University and the other at the Cleveland Clinic in Ohio. While in Cleveland, she contacted the director of the technology-transfer office at New York University and asked about the type of work performed there. He gave her a market-research project on different inventions coming out of the university, and she was hooked. Through this work, she landed a position at Mount Sinai School of Medicine's technology-transfer office in New York.
Her responsibilities at Mount Sinai included ensuring patent protection for scientist inventors, and licensing inventions to biotech and pharmaceutical companies, in addition to reviewing and drafting material-transfer agreements, sponsored research and collaboration agreements.
Ali believes that having a broad legal experience has helped her current role in business development, which combines reviewing legal agreements, identifying partnering opportunities, and monitoring activities of the company's key competitors. She and Yamin work closely together and agree that business development and intellectual property are intimately related, especially in a small company.
Careers in law tend to remain flexible, as Hayley French's experiences illustrate. After she finished her microbiology PhD in London, she decided not to do a postdoc. "I just knew I didn't want to be at the bench," she says. Instead she turned to the commercial-law department and took a master's degree in intellectual property law. That led to jobs in intellectual property management, first with the agriculture ministry, then with University College London. But she eventually decided to become a fully fledged lawyer, meaning that she had to take a conversion course (see 'English options') and complete a two-year apprenticeship.
Although career paths in law for scientists are now more varied than they were 20 years ago, they still share a common origin. Scientists who choose law careers — whether as lawyers, patent agents or technology-transfer specialists — first establish a foundation in science, then apply their technical expertise to the law. Those who choose law-related careers emphasize that they have not abandoned their roots. Instead, they say that they have found a way to learn about new fields and technologies. And what true scientist wouldn't like that?
