From bench to bar: careers in patent law for molecular biologists

Leaving science to pursue a career in patent law requires a considerable invest- ment of time and energy, and possibly money, with no guarantee of finding a job or of return - ing to science should the decision prove infelicitous. Yet the large number of former scientists now practicing patent law shows that it can be done. I provide suggestions for investigating the potential opportunities, costs, risks, and rewards of this career path. The molecular biologist wishing to retool herself or himself as a pat- ent law professional has a number of specific career options to choose from. CAREERS FOR NONATTORNEYS One need not become an attorney before beginning a career in patent law. Some patent law fi rms hire scientists or engineers with advanced degrees or training in a technical field to train as patent agents (sometimes using other names, such as patent scientist or technical specialist). Patent agents must take and pass the same U.S. Patent and Trademark Office (USPTO) registration exam (infor - mally called the patent bar exam; discussed below in Careers for Attorneys) as patent attorneys, and they perform many of the same duties as a patent attorney, but with certain important limitations. Patent agents are, by defi nition, not attorneys, and so are legally prohibited from practicing law beyond those "tasks which are inci- dent to the preparation and prosecution of patent applications be- fore the Patent Office" (Sperry v. Florida, 1963). This limits the activi - ties they can engage in without attorney supervision. Also, in the United States, nonattorneys are prohibited from becoming partners in the law firms in which they work, except in Washington, DC, al - though the American Bar Association is considering whether to urge the state bar associations to follow the District of Columbia's exam- ple (American Bar Association, 2011). But many patent agents are quite satisfied with their careers and are highly valued by their em - ployers, and should an agent wish to become an attorney, matricu- lation at a part-time law school program might be possible. Patent examiners work for the USPTO or the patent offi ce of another country or region. Patent examiners are tasked with deter- mining whether the patent applications assigned to them meet the requirements for patentability. The examination of a patent applica- tion often goes through multiple rounds of review, with the exam- iner rejecting it and the applicant (or, more typically, the applicant's patent attorney or patent agent) amending the application and/or rebutting the grounds for rejection until either the application is al- lowed to issue as a patent or is abandoned by the applicant. USPTO employees must be U.S. citizens (USPTO, 2013). The USPTO hires new examiners for their technical expertise and com- munication skills but does not expect them to know patent law, so every new examiner receives a considerable amount of paid on-the- job training. Traditionally, examiners were required to work at the USPTO's headquarters outside Washington, DC, but the USPTO is opening satellite offices in other cities and expanding its telecom - muting options. The USPTO also allows for a range of creative alter- natives to the traditional nine-to-five, Monday-through-Friday work schedule.