Careers in Intellectual Property Management

posted Feb 2, 2017, 6:54 PM by wendy.hom@stonybrook.edu   [ updated Feb 2, 2017, 7:06 PM ]

On January 20, 2016, the Graduate Career Association hosted Dr. Ece Auffarth, a Stony Brook alum (PhD Molecular Genetics and Microbiology 2003) to talk about careers in intellectual property. Currently, Dr. Auffarth is the Intellectual Property Manager for Ludwig Institute’s Technology Licensing Team. 

                         

As IP Manager, she visits all their branches and meets with inventors/investigators to see what they are doing on a day-to day basis and works to send manuscripts before they are published. She enjoys the tech transfer world over working in an IP firm because she can deal with law and interact with investigators/commercial entities in licensing their IP.

She stressed that not every scientific finding (e.g. mechanism of action) that is helpful, may be an invention because it doesn’t translate to something that can be protected under US patent law. If an invention can be protected, they prepare a document called the invention disclosure statement where they distill the invention from manuscript/summary from inventor and interface with outside law firms to explain to the lawyers/patent agents what the invention is. By the time invention is introduced to lawyers, they have very little to do; all they have to do is prepare the technical language/writing of the claims. 

To get a patent, it needs to show novelty and be non-obvious (needs to have inventive sense). Patent examiners have technical expertise to determine this and their role is to define prior art (what is out there). Non-obviousness is not as easy to determine.

What are claims? 

They are very important in patent applications; claims = fence that protects your IP. Patents restrict other people from using your technology for 20 years. This does not give you ownership of the technology; it simply restricts others from using or commercializing that you are claiming your property for a restricted amount of time. After 20 years, it is given to public domain.

What is the difference between a patent agent and an attorney?

A patent agent is a registered professional with the U.S. Patent and Trademark Office (U.S. PTO) and have the right to communicate with the U.S. PTO and foreign PTOs. They can file and prosecute applications, but if there is any litigation about infringement on patent (e.g. lawsuits), they cannot litigate that case in a courtroom. Attorneys can litigate the case. 

Do changes in law affect tech transfer world?

They do! An example is for a diagnostic test. The questions she brought up were - Should they apply for a patent protection? What makes it different? 

The field of IP law has changed in the last 15 years and it is harder to get patents due to recent case law. You cannot patent something that is in nature (e.g. isolated gene even if it isn’t in your body) and it is very hard to patent diagnostics (e.g. Myriad Genetics). Since it is that much harder to get patents, companies and academic institutions are reluctant to spend money on patent applications that will not past muster. In general, there is not a lot of activity in the field, especially in the field of science (but it isn't the same in engineering). This slow down in science is due to the selectivity of applications and there is not a lot of eagerness to hire people with degrees in molecular biology. Back then, some firms used to pay for some law school. Those cases are more rare now as time goes on.

Going back to the diagnostic test, it must have a treatment modality to it, which is the extra step in the patent application. The scientist has to show that it works, which requires back and forth with the scientist to validate the diagnostic test. Once the provisional patent application is filed, the inventors can add additional data in that year. The patent needs to be very focused and this is very difficult because its hard for scientists to be focused on that specific thing (specific experiments). The technologies that go through Dr. Auffarth's firm use their firm's fund and not NIH funding so there is more room to focus on specific experiments. With NIH-funded research, it is harder to be direct in experiments, which is something to think about as a scientist. 

Her Career Path and Work/Life Balance

Towards the end of her PhD, she knew that she wanted to consider alternative careers to the bench so she spoke to her advisor. She decided to pursue an internship at a law firm because at the time firms were interested in scientists because of the technology going on in genetics. She bypassed the step from a law firm to a tech transfer office because it was irrelevant in her situation. At the firm, the goal is 1800 billable hours a year, which usually is for first year lawyers who are very young and very eager. It was hard after a while because she wanted to start a family. As a result she took 3-4 years off to take care of her kids and then decided that she wanted to be in an academic setting. There are not a lot of tech transfer offices within the NY area so there are not a lot of jobs. She eventually took a position in NYU as project manager to manage a multi-institutional consortium funded by the Gates Foundation, where she dealt with contracts between institutions, funding from foundation to institutions, and material transfers. Here she actually was losing money by working because she had to pay for daycare for her children but it was worth it because she had to start somewhere to move up. She stayed at NYU for about a year before finding an opportunity at Albert Einstein's tech transfer office. Her current position is a 9-5 position.

In terms of work-life balance, for some people if they are compensated very well, they can justify the hours. Working in IP is very technical and very repetitive. When she started at the law firm, she had to get the work and that began with getting face time with the partners and people that are your seniors to be able to get them to trust you so that you can bill those 1800 hours. She did her internship at the law firm for 2 years. It certainly was a different lifestyle and some people could be happy with it.

Is the patent part a requirement for tech transfer offices? Any tips on studying for the exam? International students?

She took exam in 2005-2006 and stressed that it is very dynamic at US PTO so guidelines/requirements change. Look for updates/regulations on U.S. PTO website. She took a PLI review course, which is not required but she didn’t have energy or discipline to study on her own. At the time, the test was multiple choice and tested your the knowledge of the NPEP manual, which has every single guideline that an examiner follows when reviewing application. You don’t need to know everything and the manual available during test so you need to know where to find the answers. The manual itself is very big and very specific and technical.

She mentioned that passing the exam doesn’t make you a good patent agent. Being a good patent agent is being able to write a good patent application – describe invention in the context of claims. Claim language construction is what makes a good claim. Read a lot of claims. Take an object. Put it on the table. Write claims to define it so that when someone reads it, they know what you are claiming; understand point of novelty in what you are claiming.

She highly recommends getting an internship and even working with a lawyer for no money for a time to get experience with the U.S. PTO. You get experience not only writing patent applications, but also get office interactions. For instance, you claimed with your fence, but your fence is too wide so afterwards the fence will get smaller. An examiner’s job is to show that the fence is too wide. Someone else already claimed it; so you have to narrow it down.

For her she was able to take the exam as a non-citizen but after getting a green card, she had to show that she was a resident in order to get the registration number.

Do check the U.S. PTO website for the legal, technical and scientific requirements for taking the exam. There are no huge hurdles for taking the exam but getting the registration number is a different story with different requirements. 

What skills are required for her career? How can students find transferable skills that she does as a PhD?

Writing and speaking well are the most important in any job search. The more you write, the more you start thinking. She says that any type of writing is extremely helpful. Being able to edit over and over again is very important. Those are the low resolution suggestions. 

High resolutions she had was that you have to be in it, to be able to find opportunities. Really keep your eyes open and ask around even if the opportunity is not paid. Getting your foot in the door is extremely important in getting yourself known in an institution or in a company, IP law firm, industry. 

Also keep connections alive because your graduate friend from 20 years ago may be the CEO of a company. She did not say to be opportunistic but keep in touch up with them because you never know. 

Enjoy what you do. If you really don’t like what you do, maybe it is a sign to pivot a little bit and find something you like doing.

If you were hiring someone, for an internship, what do you look for?

She was never been in the position to hire someone but she agreed with internship firm's approach of interviewing everyone that they receive a resume from. Seeing someone is very important. If you have the time, it is important to meet face-to-face with the person. Be approachable and again speak well. Knowing what you don’t know is a huge asset. Being upfront and honest, and your interest are very important. Again, internships are important because it gives the employer an idea of what you are interested in and how much of your free time you put into it.

Aside from the internship route, are there other entry level job titles that fresh PhD can go for besides full internship in places like IP offices, or tech transfer offices?

The job titles depend on the industry and if it is at a law firm. Some examples: at a law firm, scientific advisor, patent specialist; and in industry, project manager. The employer decides if you meet their technical requirements of the position.

She offered more advice and is a big advocate of cold calls because if you can present yourself in a very presentable way, then it doesn’t hurt. Be proactive and the more you apply, the more chances you have. She also mentioned that if you are very entrepreneurial, you can work as a consultant at a start-up company. At a start-up, you won’t be paid as much but it is a high risk, high reward type of situation. 

Salary?

Straight out of graduate school with a PhD, you could make around $70,000 as a scientific advisor. Some patent agents make six-figure salaries when they stay longer. 

One thing she enjoys and one thing she finds challenging.

She enjoys being at the interface of things and being able to interact with investigators because some of them are very eccentric and different and with interacting with IP lawyers, who are very technical oriented. It is nice to be able to explain to them, be the interface, intermediary of what the invention is. She loves the licensing process, which can be very long, but can bring funding to your institution. 

A challenge is to know that an invention has a small chance of being a therapeutic. Out of 1000 discoveries, perhaps 999 won't be developed because either it does not have enough funding, or it is not interesting enough. But if there is one and if you can get it in the hands of someone that can raise the funds to develop it, then that invention has the chance in becoming a successful therapeutic. You have to commercialize it. 


Ever wondered what a career in intellectual property management is like but missed GCA’s event on January 20th? Check out these resources:

U.S. Patent and Trademark Office 

Careers for Scientists in the Patenting World

Pursuing a Career in Science and Law

Careers in Intellectual Property… and Making the Transition

PhD Career Guide in Law (also good for non-technical PhDs!)

Swapping the lab for the law (older article 2003)

Careers in Technology Transfer and Business Development

PhD Career Guide in Tech Transfer

Transferring Skills to Tech Transfer

Innovation: The big idea of technology transfer

And don't forget, Stony Brook University has it's own tech transfer office: http://research.stonybrook.edu/otlir.


Interested in alternative careers? Look out for emails about GCA's events! 

Have a suggestion for a career event? Email us at sbu.gca@gmail.com.

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