From Ph.D. to Patent Lawyer

This post is the first in an occasional series about specific alternative career paths for STEM Ph.D.’s. I probably know 50 Ph.D.’s who are now practicing intellectual-property law; it’s the most-followed alternate path among my colleagues. A few of them decided on that career path during graduate school, but most turned to intellectual-property law later, after deciding that they’d had enough time at the bench but still wanted a job that would allow them to use their scientific background.

Many full-service law firms have an intellectual-property practice that is one branch of a much larger organization; some boutique firms specialize in intellectual property, which includes patents, copyrights, trademarks, and trade secrets/know-how. Is a Ph.D. required to become a patent lawyer? No. Is it desirable? Yes, especially in biotechnology, and having more technical expertise can raise your salary. At boutique intellectual-property law firms, 20 to 30 percent of the lawyers typically have Ph.D.’s.

So how do you find a job in IP law? You can become a patent agent or a patent lawyer. Law firms occasionally hire Ph.D.’s in the role of scientific adviser or technical adviser. According to Kate Rigaut, Ph.D., J.D., and a partner at Dann Dorfman Herrell and Skillman, in Philadelphia:

“During this time, the technical adviser will be ghost-writing for another patent agent or patent lawyer at the firm. Anyone with 30 credit hours in a technical field can obtain the exam materials and sit for the patent bar exam. Patent agents who successfully pass the patent bar can write, file, and prosecute applications before the United States Patent and Trademark Office, but there are significant restrictions on what other services patent agents can provide to a firm’s clients. They cannot render legal opinions or practice law, and they won’t be eligible to become a partner in the firm.”

Since the technical-adviser job is a temporary role on the way to becoming eligible to file and/or litigate patents, the hiring negotiations often center on whether you will go to law school or stop at patent agent, where you’ll go to school, how you will manage going to school and working full time, and on what terms the firm may offer financial assistance for your law degree. If you land a job as a scientist in Corporate America and your company has in-house intellectual-property counsel, your employer may sponsor you to attend law school.

A word of caution: It would be very risky to incur debt for law school on your own, without knowing whether a firm would want to hire you afterward. Entering the field is very competitive for biotechnologists, but engineers (especially electrical engineers) are in demand, according to Ms. Rigaut.

Patent-agent and patent-lawyer compensation varies widely, depending on technical background, years of experience, billed hours, and many other factors. Recent data on salaries can be found here. In general, it’s safe to say that patent lawyers are well compensated, with earnings that are often double or triple that of research scientists. Patent lawyers usually specialize in either prosecution (writing and filing for patent protection) or litigation (bringing or defending against lawsuits over intellectual property). Patent agents earn $85,000 to $90,000, on average.

Ms. Rigaut says she loves being a patent lawyer because the inventors come to her at the eureka moment. “I’ve had the privilege of writing patents on work that appears in journals like Science and Nature. It’s brilliant, cutting-edge science, and I get to see it first!” she explains. She offers this advice to scientists interested in transitioning to a career as a patent lawyer:

“Pick the geographic location of your choice—flood all IP firms, universities, and biotech companies in the area with your résumé. Network at local intellectual-property-law associations. Contact law-school career-services offices, and, most importantly, ascertain whether you know someone who knows someone …. A warm introduction goes a long way.”

Additional information from Ms. Rigaut on this career path can be found here.

Gina Stewart has a Ph.D. in organic chemistry from the University of Texas at Austin. She is the chief executive and a founder of Arctic Inc., which develops sustainable methods of weed control for turf and agriculture. She is writing a series of posts about nonacademic careers for Ph.D.’s in the sciences.

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