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My transition to patent law

Posted by , on 22 May 2011

I am now a Patent Attorney at Clark & Elbing, a Boston boutique patent law firm specializing in biotechnology and pharmaceuticals. I have been at Clark & Elbing since 1998, and am now a partner.

Prior to becoming a Patent Attorney, I was a graduate student in Connie Cepko’s laboratory at Harvard Medical School. For my research, I studied intrinsic and extrinsic cell fate choices in the developing vertebrate retina. Even prior to attending graduate school, I had been interested in retinal development; during my undergraduate career, I worked in a laboratory studying development of the retina in teleost fish.

My time in the Cepko lab was fun and fulfilling. During my time there, several exciting discoveries were made by other lab members, including identification of a photoreceptor-specific transcription factor as well as several other genes assymetrically expressed in the developing retina. Additionally, we shared lab space and lab meeting with the members of Cliff Tabin’s lab. It was at this time that Cliff and his colleagues identified the Sonic Hedgehog gene.

I had been interested in patent law even before attending graduate school. Prior to attending Harvard, I had taken the LSAT law school admission examination. From discussions with patent attorneys, I learned that completion of a Ph.D. was nearly an essential requirement, so I delayed law school and instead pursued my doctorate degree.

During my final months in the Cepko lab, I explored the possibility of joining another lab as a post-doc. I interviewed in several prominent developmental neurobiology labs and was offered a position in each of them. In the end, my heart wasn’t completely committed to continuing with scientific research, and I chose to resume my pursuit of a career in law.

Fortuitously for me, Connie was working with a Patent Attorney at Clark & Elbing, who invited me to interview at the firm. Additionally, pursuing my own leads resulted in other interviews. In each case, the position for which I was interviewing was “Technology Specialist.” In the Boston area, and in other U.S. cities, law firms hire Ph.D. scientists who are interested in becoming Patent Attorneys, train them, and assist with the expenses of attending law school.

It was 1998 when I was transitioning from science to law. At that time, universities were not particularly supportive of their graduates pursuing “alternative careers.” There were no panel discussions of alternative careers, no events hosted by companies. Even joining a biotech company was frowned upon. But Connie and Cliff were always 100% supportive, as they were throughout my graduate tenure. Equally supportive were my new colleagues, who had made a similar transition from the bench and thus knew of the difficulties associated with the move.

What I do now as a partner is quite different from what I did as a Technology Specialist. In the early years, relied heavily upon my scientific knowledge. Having a broad knowledge base was important, as there were few patents relating to retinal development. My first projects at Clark & Elbing related to the production of transgenic fungus capable of efficiently producing antibiotics. Now, I rely more upon knowledge of the law than my knowledge of science, although the latter certainly remains important. The one aspect of my scientific training that has continuously served me well is the ability to critically analyze a collection of facts. The ability to do so is critical to the success of scientists and Patent Attorneys alike.

I am now the Hiring Partner at Clark & Elbing. It is my job to review resumes submitted by those pursuing a career in patent law. From my vantage point, it appears universities are more supportive of careers away from the bench. I am a frequent visitor to local universities as a participant in a discussion of career alternatives. What remains a challenge for the scientists is determining whether a career in law will be a fulfilling one. Certainly, I am exposed to science on a daily level. In some ways, the science is more fulfilling, as it is generally being applied to improving human health. The work environment is certainly different–suits and ties have replaced the shorts and sandals of my earlier days. How can a scientist considering a transition to patent law determine whether this career would be fulfilling? In short, there is no easy way. What was recommended to me, and what I recommend to others, is to talk with as many people as you can. Through these discussions, look to identify people who share your values. And feel free to write to me. As someone who made a similar transition (albeit quite a while ago), I’d be more than happy to help.




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3 thoughts on “My transition to patent law”

  1. Great post. I often use your story as an example of what scientists can accomplish following an atypical career path. Perfect example of a phenomenally successful career. Also, thanks for the trip down memory lane (Michael and I spent many hours talking science and other things in those years, most often with a good pint in hand).

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  2. Hi Michael,
    I am a recent graduate from University of Michigan Medical School. I have obatained my PhD degree in Biological Chemistry and am looking for an alternate career.I know that you are at University of Michigan today and giving a talk about careers in patent law, however, due to time conflict I am not able to attend your talk. I so much wanted to meet you and I sincerely apologize for not being able to attend the talk. I am highly interested in the career in patent law. Could you please provide me your valued guidance.My email ID is nirupama@umich.edu

    Best regards,
    Nirupama Gupta

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  3. Hi Michael,
    I am a Graduate student in Biology hoping to Graduate soon and was hoping to learn more about how to go about finding positions as patent agent/technical specialist in law firms. It would be helpful if you could share your advice on this and also help me network and know more people in this field from life sciences background. Thank you

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