by Vicky Kanta One of the most rewarding aspects of being a scientist is inventing new things. Indeed, often enough scientific inventions are so important that the inventor’s rights need to be protected. But how exactly does that process take place? This is where a recent iJOBS workshop comes in, which provided key knowledge on intellectual property and patent law. The invited experts were Elysa Goldberg, PhD, JD and Brian Cocca, PhD, JD. They are both part of a team practicing patent law for the pharmaceutical company Regeneron. As their titles indicate, Elysa and Brian hold both a doctorate and a law degree, something that is very rare among scientists, but also fundamental for their profession. In fact, most biotech companies require candidates to hold a JD and a PhD to be hired in similar positions. Their law degrees made them highly competitive in their current jobs and able to actually practice law instead of just working as patent consultants. Their paths to their current jobs are fairly similar: while in grad school, they both realized that they loved science, but did not enjoy practicing it in the conventional “bench” way. In fact, the aspect that they most enjoyed was communicating and writing about science, as well as collaborating with people with similar technical minds. They were exposed to patent law while in grad school and quickly found their dream job in that. Thus, they decided to enroll in law school after their PhD and specialized in intellectual property rights and patent law. After years of working in private practices, they joined Regeneron where they currently work on patents regarding genetic and bioinformatic discoveries. Before delving into details about patent law, Elysa and Brian compared their jobs to other related fields, such as tech transfer. The unique component of their jobs is that they are actual attorneys, i.e. they represent their clients in court proceedings over patents. That makes their field fundamentally different than tech transfer, where it is more about science communication and analyzing the novel components of an invention to make it more “sellable” to a wide audience. They emphasized that their job requires the same scientific method and meticulous analysis skills as most PhD jobs, but with the extra component of being deeply knowledgeable about the laws of patent writing and enforcing. Patenting inventions and protecting the inventor’s rights has been an important concept for a very long time. In fact, even Article 1 of the U.S. Constitution contains a “patent and copyright clause”. There are 4 categories of intellectual property:
- Patents: This is the process of securing the “right to exclude” someone from copying your work without permission. It is important to note that a patent contains details about the nature of the work and how it is performed but protects it in case someone claims it as their own.
- Trademarks: These can be words, symbols, sounds associated with a product that should not be used in any other context. As an example, most company logos are trademarked and cannot be copied by any other brand.
- Trade secrets: This is a category that includes proprietary information under lock and key. A great example is the Coca Cola recipe which is secret and highly protected.
- Copyrights: They are protecting original work such as writing, music, films, etc. Even a PhD thesis is automatically copyrighted as soon as it is made public.
Most intellectual property cases are what we call “self-policing”. Thus, it is essentially up to the owner to enforce them, usually in civil courts. The only exception is trade secrets, which fall under the criminal category of corporate espionage. 
Elysa and Brian gave some important tips about obtaining a patent. They emphasized the importance of novelty. In fact, disclosing any information about the patent topic before filing an application may affect the outcome. Since patent applications take a very long time (up to 18 months!) this means that the inventors cannot present anything about their work publicly, such as in social media, or even scientific conferences. Intellectual property (IP) is the cornerstone of every business. Anyone looking to invest in a new product will ask the inventors about their patent status. Thus, consulting with IP lawyers is very important for all startups and new businesses developments. An IP lawyer will advise their clients on whether they have sufficient grounds to file for a patent and also about the potential pitfalls of the application. To get some hands-on experience in IP law, Elysa and Brian split us in groups and engaged us in a role-playing exercise. In this fun case study, we were the inventors of a new type of chewing gum and had to find the “hook” for our new patent application. How is our product unique? What makes it different than our competitors and what are its characteristics? We quickly thought about our gum’s flavor, texture, long-lastingness and other similar things. Although it sounds easy, we quickly found out that our wording would matter a lot: we needed to make sure that our scope was not too narrow, so that competitors could easily infringe on our patent. On the other hand, we could not get too broad with our terms, because then we would lose the novelty aspect. Finding that balance spot proved complicated, but Elysa and Brian made sure that we realize the important take-home message: crafting a smart, well-worded patent application can help a company become very successful and push away competitors from doing something similar. At the end of the session, we all left with a better idea of what it means to be a patent attorney, but also got important tips on how to deal with novel inventions and take advantage of intellectual property to maximize our potential profit. Thanks to Elysa and Brian, we now know that patent law is a very interesting career choice that requires bright, talented scientists like many iJOBS trainees. This article was edited by Emily Kelly Castro and Helena Mello.