By Shreya Madhavarapu
In the dynamic landscape of post-PhD and post-doctoral career choices, the traditional trajectory of academia is no longer the sole path for those STEM disciplines. The rich skill set cultivated during a PhD training can be a key asset in diverse and intellectually stimulating fields. For those seeking a career path that combines their technical expertise with legal acumen, intellectual property (IP) and patent law are compelling options. Intellectual property encompasses legal protections for innovations, inventions, and creative works, with patent law specifically focusing on the safeguarding of novel and non-obvious inventions.
On October 9th, 2023, iJOBS hosted a career panel featuring individuals working in IP and patent law. The panelists were Hao Wu, an in-house patent agent at Exelixis, Inc.; Jayita Guhaniyogi, an IP Litigation Attorney at McDermott Will & Emery; and Victor P. Ghidu, a Partner at Morgan, Lewis & Bockius LLP.
Hao Wu holds a Ph.D. in molecular biology from Rowan University. During her doctoral studies, she participated in the iJOBS SciPhD workshop and explored potential career transitions. One notable path she pursued was a technology transfer internship, providing her with valuable insights into the patent system, business development, and document drafting. It also illuminated ways for her to leverage her background and training in other avenues and played a pivotal role in showcasing her interest in patent law to future employers, Howson & Howson, LLP. Serving as a technical specialist, she focused on patent prosecution in the field of cell and gene therapy technologies. Patent prosecution is focused on helping clients obtain patents for their inventions. Technical specialists work with clients to determine if something is patentable and assist with drafting patent applications and navigating the patent filing process. After 3 years in this role, seeking a change, Hao relocated to the west coast and joined Foley & Lardner, LLP, transitioning towards patent litigation. While patent prosecution deals with helping secure patents, patent litigation is focused on resolving conflicts, enforcing patents, and defending patent rights via the legal system. Despite passing the patent bar and working as a patent agent, her immigration status limited the recognition in this role. Approximately a year and a half ago, she took on her current position at Exelixis, Inc as an in-house patent scientist using her scientific expertise to contribute to internal research and development and the patenting process.
Rutgers University Alumna, Jayita Guhaniyogi initially encountered patent law during her doctoral studies in biochemistry but went on to pursue two postdoctoral degrees before making the transition to patent law. During her second postdoctoral training, a colleague approached her with an enticing offer - matching her postdoc salary and handling in-house and outside counsel responsibilities. This prompted her to take the risk and make the switch to patent law. In 2008, she started as an IP manager at a small biotech spin-off from Princeton, transitioning from the bench to drafting examples for patent applications. Collaborating with outside counsel, Jayita found mentors who fueled her passion for patent law, fostering lasting friendships. Support from the company CEO and involvement with the technology transfer office at Princeton University further enriched her experience. Motivated to deepen her legal knowledge, she pursued law school part-time over four years while working full-time. Through on-campus interviews, Jayita joined an IP boutique firm as a summer associate, specializing in pharmaceutical patent litigation. Her role allowed her to leverage her scientific background and assist experts in navigating the litigation process, embracing the multifaceted nature of litigation—an aspect she values. Jayita switched firms a few times before landing in her current position.
Victor Ghidu began his journey in Romania as a product manager before moving to the United States to pursue a PhD in Chemistry at Case Western Reserve University. This was followed by postdoctoral trainings at Vanderbilt University and Temple University. It was during his time at Temple that he discovered an interest in patent law and decided to pursue law school part-time. Upon graduation, he started at a boutique law firm, becoming a patent agent after about two years. Eventually, he transitioned to his present company starting as an associate and recently earning a promotion to partner.
To help the audience understand some of the positions individuals venturing into patent law can explore, the panelists provided detailed information. Victor delved into the differences between technical specialists, patent agents, and patent attorneys. Despite their shared focus on patent law intricacies, the roles differ significantly. Technical specialists, often holding PhDs, play a vital role in drafting and submitting patent documentation, utilizing their technical expertise. In order to become a patent agent, they must pass the USPTO patent bar. Patent attorneys are those who have completed law school and offer a broader perspective, handling disputes, providing legal advice, and guiding clients through the entire patent process, from application to enforcement. The distinctions underscore the complementary nature of these roles in the multifaceted field of intellectual property.
Jayita provided a comprehensive overview of the patent litigation process, which is one of the tasks of a patent attorney. The patent litigation process has four distinct phases:
- Phase 1 involves scrutinizing patent file histories and formulating case theories, with restricted communication between litigators and prosecution attorneys. In phase 1, the case is initiated, complaints are filed, and patent attorneys manage the case docket, deadlines, and overall coordination within the team.
- Phase 2 encompasses evidence collection through written discovery, fact depositions, claim construction, and collaboration with experts for trial preparation.
- Phase 3 involves collaboration between patent attorneys and experts on report drafting, expert depositions, and simplified court presentations.
- Phase 4 focuses on trial preparation, pre-trial submissions, motion practice, and post-trial submissions, including findings of facts and conclusions of law.
Following the detailed description of various roles, panelists were given the opportunity to reflect on and provide valuable insights into various aspects of pursuing a career in IP and patent law. They stressed the importance of passing the USPTO bar and shared some practical advice about preparing for it, emphasizing the importance of strategy, practice, and resources like the PLI course. Hao stressed that her internship experience with the technology transfer office was pivotal to her journey and encouraged anyone interested in transitioning to a career in IP in pursuing it. As someone who has done this internship, I can attest to it being an excellent starting point for exploring alternate careers in research commercialization, business development, marketing as well as IP and patent law. During my internship, I was exposed to different facets of identifying, protecting, and commercializing innovations generated by Rutgers University researchers. I had the opportunity to engage with patent attorneys and learn about the process of patenting innovations. I also had the opportunity to learn about licensing agreements and understand the intricacies of transforming research into marketable products.
These invaluable words of wisdom offered by the panelists serve a critical role in helping graduate students and postdoctoral researchers take steps towards a career in patent law. If you are interested in a career in patent law, now is the time to be proactive!
This article was edited by Junior Editor Joycelyn Radeny and Senior Editor Natalie Losada.
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January 12, 2024