The excitement of cutting-edge research, learning about new technologies, and helping new inventions come to life attracts numerous trainees to the field of intellectual property. To succeed in this career field, candidates must understand the implications of a discovery, research what makes it different from past advances, and communicate these nuances in a succinct way. Having a strong science background is required, and having a PhD is highly desirable.
Law firms often hire PhDs as technology specialists or patent agents. These positions are gateways into the field. Within academia, technology transfer offices also hire PhDs to work as technology specialist and licensing officers. Below we provide a brief overview of the difference between these positions as well as resources to prepare for a career in intellectual property law.
Routes from PhD training to Patent Law or Technology Transfer:
- Technical advisers assist patent agents or patent lawyers with research and writing tasks. They perform background research for a patent, investigate competing patents and figure out ways to work around them. They also write patent applications.
- Patent agents who successfully pass the patent bar can write, file, and prosecute patent applications before the United States Patent and Trademark Office. They cannot render legal opinions or practice law, and they aren’t eligible to become a partner in a firm.
- Patent lawyers specialize in either prosecution (writing and filing for patent protection) or litigation (bringing or defending against lawsuits over intellectual property). While it’s possible to remain a patent agent, or even a technology specialist, a law degree is needed for career advancement and salary increases.
- Licensing officers review new inventions (from academia) for patentability and commercial viability. They also connect with industries to seek opportunities to license the patent.
Keys skills to succeed in this field:
- A degree in life science, physical science or engineering
- Strong research skills
- Adaptable to changing projects
- Ability to communicate with a wide range of individiuals
- Concise writing skills
UCI resources that provide training, address skill gaps & build networks:
- Invention Transfer Group Fellowship. The Invention Transfer Group (ITG) offer graduate students, post docs, or professional students at UCI a hands-on introduction to university technology transfer and intellectual property management. Under the direction of a Licensing Officer at ITG, fellows will assist the office in conducting technology assessments, prior art searches, writing invention summaries, and initiating market research of UCI inventions.
- Life Beyond the PhD in Patent Law. Presentation for GPS-BIOMED by Ellen Smith, Ph.D., Attorney at Perkins Coie
Additional resources to address skill gaps & build networks:
- United States Patent and Trademark Office. Information and test prep for the patent bar. The exam is offered year-round via computer at test centers across the country and on a date and time chosen by the applicant.
- National Association of Patent Practitioners (NAPP). A nonprofit organization dedicated to supporting patent practitioners and those working in the field of patent law. Offers resources, events and networking opportunities.