If you’ve just spent five years at the bench in graduate school and are looking for another way to use your science doctorate, you will be relieved to know that a patent agent doesn’t need to add a JD to the PhD. Instead, a patent agent has to pass a separate patent bar exam to become registered, and a formal law school degree is not a prerequisite. That’s the first piece of good news from Kyle Gurley, who built an orthodox scientific resume—PhD in developmental biology from Stanford, postdoc at the University of Utah, and then a faculty appointment at the University of Pittsburgh—before becoming a patent agent.
Both patent agents and patent lawyers are licensed to represent clients at the United States Patent and Trademark Office (USPTO), says Gurley. But without a JD, patent agents stay out of the courtroom, though they may assist lawyers preparing a case, Gurley said. A patent agent’s job duties include preparing, filing, and prosecuting patent applications, and providing patentability opinions. It can be intellectually exciting work, Gurley reports.
With an assistant professorship at Pitt, Gurley says that his academic career was going well but he was unhappy. In 2012, he swapped his lab coat for a suit and tie, and began his new career as a patent agent for Bozicevic, Field & Francis LLP, an intellectual property (IP) law firm in the San Francisco Bay area. Gurley had friends in the field, so he talked to them extensively about their jobs before diving in himself. His contacts helped him get a job as a technical advisor before taking the patent bar exam. “It took a while to learn the language [for the exam],” he remembers.
It was worth the effort. Gurley says he especially appreciates the breadth of science to which he is exposed as a patent agent. “I get to use my brain in very different ways every day.” Gurley also likes the constant turnover of cases, “If there’s something I’m bored with, I know I’ll only have to work on it for a day or two.”
Another scientist who left the lab bench to be a patent agent is Amy Dunstan, who earned her PhD in molecular pharmacology from Brown University and went looking for a career with a fast pace and a rapid caseload. She started her career as a patent agent working for Jackson Walker LLP, one of the largest law firms in Texas, and now she works at Dentons, a global law firm.
Dunstan began her job search outside academia by trying to get as many contacts as she could outside of school. “I sent an email to a partner in a law firm and let him know that I was interested in a job as a [scientific] consultant, should the position become available,” Dunstan recalls. A year later the partner contacted her about a job, and less than a year later she passed the patent bar exam.
Many science PhDs take the patent bar exam before applying for IP jobs, figuring it will make them ready-to-go candidates anywhere in the country. There are study guides and online courses to help them prepare for the exam. But Gurley says that law firms will often hire PhD consultants while they’re studying for the exam. “It’s easier to get hired if you already passed the patent bar. On the other hand, it’s time consuming and expensive to study, and you don’t know that you will have a job… and being on the job helps you learn the language and the laws,” Gurley said.
A PhD is not required to be a patent agent, but it helps, he says. “All of our inventors are PhDs… so to be able to know the language and understand the science is a huge help.” Gurley added, “A lot of [what I do] comes down to being able to understand the science and arguing what we’re doing is different than what someone else has done in the past… it’s a lot like responding to reviewer comments.”
Your scientific training, according to Dunstan, prepares you well: “It’s the same diligence and attention to detail that’s helpful to both [research scientists and patent agents].” Plus both Dunstan and Gurley focus on biomedical inventions, so the expertise she gained during her PhD often comes in handy, Dunstan says.
Patent agency is largely deskwork, researching and writing for each step in the patent process. The first phase of a patent is a patentability analysis, Gurley explains. “To do that we look at [a client’s] invention and what we think we could claim, then we do a literature search and read and analyze anything that’s similar in the field, think about what’s been published before.” He continues, “I can then write up a summary of the types of the things in the field and what we think they could get out of the patent.”
The next phase is writing the application, which can be anywhere from 10 to 150 pages long. After the USPTO reviews the application, the government examiners may question the novelty. “I argue scientific points and the law to show the patent office the novelty,” says Dunstan. Responding to USPTO rulings and requests takes up the majority of working hours, according to Dunstan, with another quarter going to drafting applications. The rest of her time is spent interviewing inventors and clients about their inventions.
For graduate students and postdocs in science looking at patent agency as a career, both Gurley and Dunstan say they should not follow their own late starts. Look into IP as a career early on, they say. “The people that I saw who were most successful in getting into patent law decided early on that they were interested,” Dunstan says. Talk to IP officers at your university, says Gurley. An internship or part-time experience at a university IP office can give a candidate a leg-up. “That’s a great place to get your foot in the door,” says Gurley. “Start early, think about what you really want to do, talk to as many people as you can about as many things as you can.”