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Technical Specialists in Law Firms [by A. Harrison Barnes] During the height of the technology boom, law firms were increasingly taking on technical specialists who could provide valuable help on patent work. Is this a viable job option for people with scientific backgrounds and no legal degree?
Question
ed these practices with technical advisors
something which even a first year associate
I have a Ph.D. in molecular genetics with an
and patent agents, scientists who typically
in a law firm will tell you takes some getting
emphasis on population biology. I have been
hold Ph.D.’s but who don’t necessarily have
used to. In addition, depending on how far
a post-doc for several years and I am inter-
law degrees. Sometimes, these advisors/spe-
along you are in your career (and it sounds
ested in changing careers and moving into
cialists come on board with no legal training.
like you have been a post-doc for several
law. I have thought about law school but I am
With or without training, these specialists
years), beginning a career as a patent agent
intimidated by the thought of acquiring more
are employed by the firm to assist with the
or specialist in a law firm may require you to
debt, at least for now. I have been told that
preparation of patent applications. Technical
take a step back in compensation in order to
patent law is in need of technical specialists
specialists will generally also prepare to take
achieve your long-term career goals. Howev-
in the sciences and that this might lead to fi-
the patent bar exam, which allows them to
er, the earnings potential you would achieve
nancial assistance later for law school. What
prosecute patents before the United States
as a patent attorney is most likely far greater
is the reality of this and how much of a need
Patent and Trademark Office (“USPTO”). Law
than that which you could ever achieve as
is there for someone with my background in
firms usually require their specialists to take
a Ph.D. In your role as a patent agent or
IP? My training is suitable for cases involv-
this exam within the first year or two of com-
specialist, you will be required to deal with
ing forensic evidence, as well. What are the
ing on board.
a wide range of individuals, from attorneys and paralegals within the law firm to clients
opportunities there? How difficult might it be for someone who has spent most of their
Most Ph.D.’s find the law firm environment
and professionals outside of the law firm, so
career in an academic setting to make the
extremely stimulating and quite challeng-
flexibility and good communication skills will
transition into law?
ing. Ph.D.’s often comment that they are very
be essential components for your success.
attracted to making the transition from the
Finally, law firms are extremely demanding
Answer
lab to the law firm environment because of
environment, but also intellectually stimulat-
Your question is interesting and one that
the increased opportunities to write - and
ing and rewarding. Most Ph.D.’s who contact
I encounter quite frequently as law firms
write more abundantly. Interestingly enough,
us are already well-published in their fields
continue to expand their Intellectual Property
we have found that after passing the patent
and, thus, like the idea of “getting out of the
(“IP”) practices and Ph.D.’s look for options
bar, many patent agents decide to go on
lab,” being exposed to new ideas, and having
outside of the lab environment.
to law school for the career advancement
the added plus of doing different types of
and the increased compensation the law
writing and analysis.
People holding doctorates in the biotech,
degree affords them. To assist them in their
biology, chemistry and the computer sci-
efforts, many law firms have in place both
We believe that as more scientists are
ences areas are in high demand by law firms
formal and informal law school reimburse-
exposed to the law firms and the career op-
with strong IP practices. Over the past five
ment programs to enable these specialists
portunities there, that these types of jobs will
to ten years, the biotech field has grown
to obtain a law degree. In fact, some Ph.D.’s
become increasingly competitive. However,
dramatically and, as a result, law firms, and
have successfully completed their law school
for Ph.D.’s with chemistry (especially organic
particularly IP boutiques, have developed
degree at night while working full-time in the
chemistry) and biochemistry backgrounds
fairly sophisticated IP practices, successfully
IP department of a law firm.
and strong academic records, we believe excellent opportunities are fairly abundant.
filling their ranks with attorneys with under-
This is especially true given the recent devel-
graduate and graduate degrees in computer
Transitioning from an academic setting to
science, mechanical engineering, electrical
the law firm environment can be a challenge.
opments in the genetics area, namely stem
engineering and chemical engineering. Many
Many agents are faced with billable hour
cell research and cloning.
(but certainly not all) firms have supplement-
requirements (which vary among law firms),
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