Intellectual property law can be a challenging second career for young scientists, but you’ll probably have to go back to school to advance that career.

David Holzman

Life as an academic scientist can be grueling and frustrating. And with faculty positions hard to come by for young life scientists, some have switched into intellectual property (IP) law. Making this move is a viable option in Boston, where several law firms practicing or specializing in intellectual property law are scooping up young scientists looking for a career change.

The reasons people cite for leaving the lab for law are varied. Some go to the heart of frustrations with academic life. Others involve the new intellectual challenges and the broad perspective on science one gets doing IP law.

“I do more science now than I ever did,” says Mary Murray, an attorney with Hamilton Brook Smith & Reynolds, in Concord, MA. Murray spent 10 years as a faculty member at Tufts University, where she codirected the National Institutes of Health–sponsored Center for Reproductive Research.

Murray reports a higher level of job satisfaction now than when she was a scientist. Unlike academia, where advancement often turns on politics, “in the law firm, your record is what rewards you,” she says. Success is measured with more objective criteria, such as the number of patents you filed that are issued by the U.S. Patent and Trademark Office (USPTO). And when the patent issues, “the client couldn’t be happier,” says Murray. “The thank-yous mean a lot to me.”

Murray’s path to becoming a patent attorney was fairly typical of PhDs. Murray joined Hamilton Brook in 1997 as a technology specialist without any experience in the legal world. Technology specialists do the background research needed before filing for a patent, such as investigating competing patents and figuring out a way to work around them. They also write patent applications.

After about a year, Murray took and passed the patent bar exam, administered by the USPTO, to become a patent agent. Patent agents have similar duties as technology specialists, but they are also able to sign off on patent applications.

Passing the patent bar exam is also a necessary step to becoming a patent attorney. Around the time Murray passed the exam, she began taking night classes at Suffolk University Law School in Boston and passed the state bar in 2002. Patent attorneys have the added responsibilities of litigating and helping clients make business decisions.

Firms often hire PhDs as technology specialists or patent agents, frequently with the understanding that they will pursue law degrees and the firm will pay for the tuition. While it’s possible to remain a patent agent, or even a technology specialist, a law degree is needed for career advancement, not to mention large salary increases. A patent agent can expect to earn between $60,000 and $90,000 a year, while a patent attorney just out of law school can earn $125,000 to $135,000.

James Olesen was a postdoc at Harvard in 1997 when Foley Hoag in Boston recruited him as a technology specialist. Assured that he would remain steeped in science, Olesen, who has a PhD in biochemistry and molecular biology from MIT, took the plunge, motivated by the need to support his child and the high cost of housing. He passed the patent bar exam and, in 2002, received his law degree from Suffolk University. He now works for WilmerHale in Boston.

Olesen considered working as an industry scientist, but “it appeared that entry-level scientist positions were too much like postdocs, but with less control of the project, and that advancement was extremely competitive,” he says. Being a patent attorney is “like being the principal investigator, waiting for the postdoc to come in with the great new results.”

Secret to success

The range of skills required in patent law is broad. In the case of patents filed for work done at universities, the invention in question is often in basic research. “It will take someone with a strong science background to understand the implications of the discovery and, hence, what should be claimed [on the patent],” says Olesen.

Patent attorneys must read up on the background for each invention their clients wish to patent, as well as the problem that the invention addresses. Murray says she reads Nature and Science. “As an academic scientist, my exposure was more narrow in my field of research. As a patent attorney, my exposure is more diverse, global, and enriching.”

IP lawyers need to be able to communicate with a wide range of people, from scientists to CEOs, who may not have a science background. “Your writing has to be very clear and concise,” says Olesen. Contrary to conventional wisdom, he says, “legal writing is about clarity and precision. When you are arguing in front of a judge, you have to be very clear.”

Scientists’ analytical abilities help them quickly grasp the nub of cases. And people skills are needed to deal with clients.

Nonetheless, the pace at an IP law firm is grueling, says Murray. “You give an ounce of blood every time you walk in the door.”

And the hours? “It’s definitely not just a nine-to-five job—although it can be,” says Olesen, who claims he never works on weekends. “There are reduced-hours options, and you can work from home remotely. Generally a nine-billable-hour day is a reasonable day.”

Future demand

The market for life science PhDs in patent law is expanding, though not exponentially, says Bruce Sunstein, cofounder of Bromberg & Sunstein in Boston and head of the firm’s patent practice group. “In general, patents make more of a difference today than they did 30 years ago,” he explains. And life science is a young and growing business.

Graduate students considering a career in IP should stick with finishing their PhD studies, says Lee Crews, a principal at Fish & Richardson and cochair of the Boston Bar Association Life Sciences Subcommittee. Before her career change, she was a postdoc at Tufts studying nervous-system development. “I feel strongly that [the PhD] is essential,” she says.

Not for everyone

Mathew “Willy” Lensch is one scientist who recently declined an offer to work for a law firm. Lensch does research on embryonic stem cells at Children’s Hospital Boston and is also involved in public policy, such as serving on Connecticut’s stem cell research advisory committee.

The offer came several months ago, after Lensch gave a talk at Suffolk University Law School, which was cosponsored by the law firm, Nixon Peabody.

“It was a very generous offer” and an intellectual temptation, says Lensch. For the husband and father of two, the salary was attractive, too. Lensch agonized but came to realize that being a scientist is a critical part of who he is.

Indeed, despite their enthusiasm for their second career, PhD patent attorneys say that not everyone would be happy in this career. The work “can be much more intensely time-stressful than a research or teaching position,” says Olesen.

Still, of the many fellow PhD patent attorneys he has met, Olesen says, “I can’t remember a single instance of anybody regretting their decision to leave science and become a patent attorney.”