Career paths with a background in biotech and clerking? Forum

[SDviaVA]

What are some enjoyable and lucrative career paths for someone with my background?

I graduated from law school in May, started clerking in August and I am applying for post judicial clerkship jobs right now. However, I am somewhat unsure what direction I would like my career to go in and what types of legal positions I would be best qualified for. Any pros and cons of each area of law suggested would be great. Below are some facts about my background. Thanks so much!

Prior to law school:
B.S. in Biotechnology
1 year of coursework towards a M.S. in Cell and Molecular Biology
5 years of experience prior to law school working in biotech manufacturing labs in the areas of protein purification, medical devices, and fermentation.

In law school:
Moot court
Paid internship for 1 year in the area of export control law
Concentration in business law: took classes such as Community Development Clinic, Transactional Drafting, Patents and Trademarks, Copyright, Antitrust, Federal Income Tax, Business Organizations.

Currently:
Clerking for a trial level judge in Maryland

[Dr. Review]

Trial level... is this AIII or state court?
Also (and less relevant) when you say you worked in manufacturing labs, do you mean like the large scale stuff with giant vats or bench level work? One is a little more science-y than the other.

[SDviaVA]

Trial level... is this AIII or state court?
Also (and less relevant) when you say you worked in manufacturing labs, do you mean like the large scale stuff with giant vats or bench level work? One is a little more science-y than the other.

Trail level.

Mostly bench work.

[Dr. Review]

Trial level... is this AIII or state court?
Also (and less relevant) when you say you worked in manufacturing labs, do you mean like the large scale stuff with giant vats or bench level work? One is a little more science-y than the other.

Trail level.

Mostly bench work.

I am going to assume state court, then? Although trials do occur in both state and federal courts. Trails, notsomuch.

[SDviaVA]

Trial level... is this AIII or state court?
Also (and less relevant) when you say you worked in manufacturing labs, do you mean like the large scale stuff with giant vats or bench level work? One is a little more science-y than the other.

Trail level.

Mostly bench work.

I am going to assume state court, then? Although trials do occur in both state and federal courts. Trails, notsomuch.

Oh, I'm sorry I meant to say State court, yes.

[Dr. Review]

My natural response to a patent bar eligible person with clerking experience is patent litigation. I am not sure how this advice varies when the clerkship is at the state court level though, as patent litigation takes place in federal court.

Perhaps even generic commercial litigation could be feasible, given some coursework in business and state court clerk experience. Depending on the court, state court clerks are sometimes recruited by firms who litigate there frequently.

[SDviaVA]

My natural response to a patent bar eligible person with clerking experience is patent litigation. I am not sure how this advice varies when the clerkship is at the state court level though, as patent litigation takes place in federal court.

Perhaps even generic commercial litigation could be feasible, given some coursework in business and state court clerk experience. Depending on the court, state court clerks are sometimes recruited by firms who litigate there frequently.

Do you think I would need a masters to do patent prosecution? I should add I actually have completed 1 year of a 2-3 year masters program in Biology. Do you have any thoughts on pros and cons of patent litigation vs. prosecution?

[Anonymous User]

If you go with the litigation route, a M.S. degree would not help much and a B.S. is sufficient.

If you go with the prosecution route, you need a Ph.D. in biology.

Your best option, IMHO, is to join USPTO and become an Examiner for two years, then jump out to big law doing either prosecution or litigation.

Finally, patent work in biology field has fierce competition, relative to chemistry (the second worst), engineering, and computer science.

Another option: get a B.S. in computer science ($30k cost, online program at Oregon State for 16 courses) and you will have much better chance in Big Law.

[Dr. Review]

Your best option, IMHO, is to join USPTO and become an Examiner for two years, then jump out to big law doing either prosecution or litigation.

I spoke to a biglaw (Vault) partner who chairs the patent lit group about this specific issue, and he agreed that being an Examiner generally, although not 100% of the time, pigeonholes you into prep/pros work. If you do this, there's a good chance the patent lit ship sails, as well as most general lit opportunities as well.

I do agree somewhat on the advanced degree front, though. It might not be a bad idea to find an alum who is doing prep/pros somewhere and see what they tell you about prosecution. As a pros guy myself, I can tell you it is not for everyone.

It's also worth noting that if you haven't spent much time with IP, particularly pros work, it can be a bit jarring compared to the rest of your law school experience. Prosecution really is its own animal, and much (if not all) of law school does little to prepare you for the skillset required.

This is not to say that it is any harder or easier than other legal work, just that it is quite different.

[SDviaVA]

If you go with the litigation route, a M.S. degree would not help much and a B.S. is sufficient.

If you go with the prosecution route, you need a Ph.D. in biology.

Your best option, IMHO, is to join USPTO and become an Examiner for two years, then jump out to big law doing either prosecution or litigation.

Finally, patent work in biology field has fierce competition, relative to chemistry (the second worst), engineering, and computer science.

Another option: get a B.S. in computer science ($30k cost, online program at Oregon State for 16 courses) and you will have much better chance in Big Law.

Do you think the USPTO would hire someone with only a B.S. (even with some masters coursework and experience?)

Also what patent work does not have fierce competition then? It sounds like you hit all the areas of patent law in your description of fields with fierce competition? Or maybe its all fierce?

[SDviaVA]

Your best option, IMHO, is to join USPTO and become an Examiner for two years, then jump out to big law doing either prosecution or litigation.

I spoke to a biglaw (Vault) partner who chairs the patent lit group about this specific issue, and he agreed that being an Examiner generally, although not 100% of the time, pigeonholes you into prep/pros work. If you do this, there's a good chance the patent lit ship sails, as well as most general lit opportunities as well.

I do agree somewhat on the advanced degree front, though. It might not be a bad idea to find an alum who is doing prep/pros somewhere and see what they tell you about prosecution. As a pros guy myself, I can tell you it is not for everyone.

It's also worth noting that if you haven't spent much time with IP, particularly pros work, it can be a bit jarring compared to the rest of your law school experience. Prosecution really is its own animal, and much (if not all) of law school does little to prepare you for the skillset required.

This is not to say that it is any harder or easier than other legal work, just that it is quite different.

What is jarring about it? I have heard it can be boring for some? Do you mean jarring in the sense of the difficulty level? Dealing with clients? Time demands? Or something else?

Also, its seems from what you have seen that no one really goes from patent pros to litigation but is it possible to go from litigation to pros?

[Dr. Review]

What is jarring about it? I have heard it can be boring for some? Do you mean jarring in the sense of the difficulty level? Dealing with clients? Time demands? Or something else?

Also, its seems from what you have seen that no one really goes from patent pros to litigation but is it possible to go from litigation to pros?

It is jarring in the sense that you generally work within a framework of regulations and statutory guidelines that you do not encounter elsewhere in the legal world (save perhaps some aspects of patent lit).

You do not often (if ever) do legal research (as on Lexis/Westlaw). You spend a great deal of your time finding technical differences in certain aspects of a technology. Most "adversarial" portions of the work are correspondence with the Examiner, and you argue patentability over rejections that he/she presents to you. The type of writing you do is quite different than what you did in LRW (and while clerking), and is pretty different than what you do in patent lit. Your clients are generally engineers or scientists, often at large companies, rather than the corporate IP counsel or executives you might work with on patent lit.

It really is a very different sort of work. In some ways, it is preferable to many people. Hours are easier to regulate. Timelines are generally well known and rarely very short. In some ways, it is less preferred. The work can be very science-intensive. You generally spend most of your day at your desk slugging away at drafting patent applications and responding to office actions, sometimes with little outside interaction (although many other areas of law experience similar work).


As for switching to/from pros and lit, I don't know of many (if any) people who have done this. Some people do both, but rarely do people go from doing one exclusively to the other. Many of the skills complement one another, but most skills do not carry over from one type of work to the other.

[Anonymous User]

Agreed. One wrinkle in this problem is the new AIA procedure change for challenges to patents. A lot more litigation cases will happen at USPTO because it would be cheaper that way. Whether that change would translate into more requirement for prosecution knowledge/experience for a litigator is an open question.

Back to OP's question, the first thing for him/her to do is to print out a few biology patents, sit down, read the patents, and see if he/she will not be bored in 4 hours. That would be the minimal requirement for a patent prosecutor. If he/she passes the test, log onto public PAIR, print out a recent office action for a biology application, and write a draft for response/amendment. Wait a few months and compare his/her response to that filed by the true practitioner in charge of the case. That would be a kind of "clinical" trial for OP's skill as a prosecutor.

To test OP's litigator potential, he/she may try to answer the following question:
In the recent Supreme Court case AMP vs. Myriad Genetics, when explaining the relationship between a gene and human genome, Myriad's attorney suggested that it's like making a baseball bat out of a tree. Justice Alito disagreed: the baseball bat could be simply a tree branch fell off a tree, ended up in ocean and then washed back to shore by waves. Do you agree with any of these two analogies? If not, what would be your analogy to fight back Justice Alito's reply?

I spoke to a biglaw #Vault# partner who chairs the patent lit group about this specific issue, and he agreed that being an Examiner generally, although not 100% of the time, pigeonholes you into prep/pros work. If you do this, there's a good chance the patent lit ship sails, as well as most general lit opportunities as well.

I do agree somewhat on the advanced degree front, though. It might not be a bad idea to find an alum who is doing prep/pros somewhere and see what they tell you about prosecution. As a pros guy myself, I can tell you it is not for everyone.

It's also worth noting that if you haven't spent much time with IP, particularly pros work, it can be a bit jarring compared to the rest of your law school experience. Prosecution really is its own animal, and much #if not all# of law school does little to prepare you for the skillset required.

This is not to say that it is any harder or easier than other legal work, just that it is quite different.

[Dr. Review]

I think that both strategies above are a little off. Reading patents to see if you will be bored is a decent way to see what you are getting into, but if you just handed me a random patent and told me to read it, I wouldn't be hugely interested. Reading it critically for a specific purpose changes the task. As for responding to the OA and comparing it to the real response later, this is strange advice to someone who probably hasn't spent any time with the MPEP, or Title 35. You wouldn't even know what to say that makes sense within the framework of those things without at least basic patent bar study.

The other advice is also a bit off, because patent litigation usually hinges on fact specific interpretation of claim language and product design, not the type of abstractions that are discussed in SCOTUS subject matter eligibility oral arguments.

I think a good way to see what you think you'd like is to schedule informational interviews, perhaps over coffee or lunch, with people who practice in these areas. Use your law school's alumni network or your career services connections (if they have any) to reach out. Ask lots of questions about what their job entails. See if those things sound appealing. I think you get a much better picture of day to day that way than you would from either of Anon's (why Anon for generic career advice?) plans. Another option is to attend a CLE on either topic, but that could sometimes be a little difficult to jump into without much of a frame of reference.

[SDviaVA]

Agreed. One wrinkle in this problem is the new AIA procedure change for challenges to patents. A lot more litigation cases will happen at USPTO because it would be cheaper that way. Whether that change would translate into more requirement for prosecution knowledge/experience for a litigator is an open question.

Back to OP's question, the first thing for him/her to do is to print out a few biology patents, sit down, read the patents, and see if he/she will not be bored in 4 hours. That would be the minimal requirement for a patent prosecutor. If he/she passes the test, log onto public PAIR, print out a recent office action for a biology application, and write a draft for response/amendment. Wait a few months and compare his/her response to that filed by the true practitioner in charge of the case. That would be a kind of "clinical" trial for OP's skill as a prosecutor.

To test OP's litigator potential, he/she may try to answer the following question:
In the recent Supreme Court case AMP vs. Myriad Genetics, when explaining the relationship between a gene and genome, Myriad's attorney suggested that it's like making a baseball bat out of a tree. Justice Alito disagreed: the baseball bat could be simply a tree branch fell off a tree, ended up in ocean and then washed back to shore by waves. Do you agree with any of these two analogies? If not, what would be your analogy to fight back Justice Alito's reply?

I spoke to a biglaw #Vault# partner who chairs the patent lit group about this specific issue, and he agreed that being an Examiner generally, although not 100% of the time, pigeonholes you into prep/pros work. If you do this, there's a good chance the patent lit ship sails, as well as most general lit opportunities as well.

I do agree somewhat on the advanced degree front, though. It might not be a bad idea to find an alum who is doing prep/pros somewhere and see what they tell you about prosecution. As a pros guy myself, I can tell you it is not for everyone.

It's also worth noting that if you haven't spent much time with IP, particularly pros work, it can be a bit jarring compared to the rest of your law school experience. Prosecution really is its own animal, and much #if not all# of law school does little to prepare you for the skillset required.

This is not to say that it is any harder or easier than other legal work, just that it is quite different.

I had to chuckle because I wrote my seminar paper in law school in this exact issue: the patentability of genetic material, using the AMP vs. Myriad Genetics case as a case study. I wrote the paper before the SC decision came down and argued for the patentability of genetic material, however as you probably know the Supreme Court disagreed with my position in a unanimous decision.

Therefore, I would agree more with Myriads analogy, though no analogy is perfect. I would disagree with Alito's reply because unlike the tree example, where the branch just falls off, in order for Myriad's BRCA gene to be used as a marker for breast cancer in its diagnostic test, the covalent bonds must be broken by human intervention through the use of very specific restriction enzymes that cut the DNA at specific base pars to separate the BRCA gene from the rest of the human genome. Thus, the gene as it is used in the Myriad's diagnostic test is no longer a product of nature but sufficiently transformed by a human hand because it does not naturally exist in nature in a useful form until processed by Myriad.

[Hipster but Athletic]

^^
which is why strict 101/103 distinctions are dumb. taking nature and using generic chemistry methods to cleave bonds shouldn't be patentable...but restricting it to 101 analysis really makes it harder to see that.

[Anonymous User]

Well done. I totally agree with your analysis. I bet the clerk for Justice Alito does not study biology as well as you.

My analogy for the comparison would be a particular thread from a colorful yarn (four random colors!) As you said eloquently, human intervention is needed to cut the correct thread as in cutting a gene from the genome.

Further I would comment that from a distance, one can see the branch on a tree BEFORE it falls off or is cut off. However, even at a close distance, there is no way a person can SEE the gene from a genome even with the help of a microscope!

Agreed. One wrinkle in this problem is the new AIA procedure change for challenges to patents. A lot more litigation cases will happen at USPTO because it would be cheaper that way. Whether that change would translate into more requirement for prosecution knowledge/experience for a litigator is an open question.

Back to OP's question, the first thing for him/her to do is to print out a few biology patents, sit down, read the patents, and see if he/she will not be bored in 4 hours. That would be the minimal requirement for a patent prosecutor. If he/she passes the test, log onto public PAIR, print out a recent office action for a biology application, and write a draft for response/amendment. Wait a few months and compare his/her response to that filed by the true practitioner in charge of the case. That would be a kind of "clinical" trial for OP's skill as a prosecutor.

To test OP's litigator potential, he/she may try to answer the following question:
In the recent Supreme Court case AMP vs. Myriad Genetics, when explaining the relationship between a gene and genome, Myriad's attorney suggested that it's like making a baseball bat out of a tree. Justice Alito disagreed: the baseball bat could be simply a tree branch fell off a tree, ended up in ocean and then washed back to shore by waves. Do you agree with any of these two analogies? If not, what would be your analogy to fight back Justice Alito's reply?

I spoke to a biglaw #Vault# partner who chairs the patent lit group about this specific issue, and he agreed that being an Examiner generally, although not 100% of the time, pigeonholes you into prep/pros work. If you do this, there's a good chance the patent lit ship sails, as well as most general lit opportunities as well.

I do agree somewhat on the advanced degree front, though. It might not be a bad idea to find an alum who is doing prep/pros somewhere and see what they tell you about prosecution. As a pros guy myself, I can tell you it is not for everyone.

It's also worth noting that if you haven't spent much time with IP, particularly pros work, it can be a bit jarring compared to the rest of your law school experience. Prosecution really is its own animal, and much #if not all# of law school does little to prepare you for the skillset required.

This is not to say that it is any harder or easier than other legal work, just that it is quite different.

I had to chuckle because I wrote my seminar paper in law school in this exact issue: the patentability of genetic material, using the AMP vs. Myriad Genetics case as a case study. I wrote the paper before the SC decision came down and argued for the patentability of genetic material, however as you probably know the Supreme Court disagreed with my position in a unanimous decision.

Therefore, I would agree more with Myriads analogy, though no analogy is perfect. I would disagree with Alito's reply because unlike the tree example, where the branch just falls off, in order for Myriad's BRCA gene to be used as a marker for breast cancer in its diagnostic test, the covalent bonds must be broken by human intervention through the use of very specific restriction enzymes that cut the DNA at specific base pars to separate the BRCA gene from the rest of the human genome. Thus, the gene as it is used in the Myriad's diagnostic test is no longer a product of nature but sufficiently transformed by a human hand because it does not naturally exist in nature in a useful form until processed by Myriad.

[SDviaVA]

^^
which is why strict 101/103 distinctions are dumb. taking nature and using generic chemistry methods to cleave bonds shouldn't be patentable...but restricting it to 101 analysis really makes it harder to see that.

Are you making a policy argument or a legal/scientific agreement?

[SDviaVA]

Well done. I totally agree with your analysis. I bet the clerk for Justice Alito does not study biology as well as you.

My analogy for the comparison would be a particular thread from a colorful yarn (four random colors!) As you said eloquently, human intervention is needed to cut the correct thread as in cutting a gene from the genome.

Further I would comment that from a distance, one can see the branch on a tree BEFORE it falls off or is cut off. However, even at a close distance, there is no way a person can SEE the gene from a genome even with the help of a microscope!

Agreed. One wrinkle in this problem is the new AIA procedure change for challenges to patents. A lot more litigation cases will happen at USPTO because it would be cheaper that way. Whether that change would translate into more requirement for prosecution knowledge/experience for a litigator is an open question.

Back to OP's question, the first thing for him/her to do is to print out a few biology patents, sit down, read the patents, and see if he/she will not be bored in 4 hours. That would be the minimal requirement for a patent prosecutor. If he/she passes the test, log onto public PAIR, print out a recent office action for a biology application, and write a draft for response/amendment. Wait a few months and compare his/her response to that filed by the true practitioner in charge of the case. That would be a kind of "clinical" trial for OP's skill as a prosecutor.

To test OP's litigator potential, he/she may try to answer the following question:
In the recent Supreme Court case AMP vs. Myriad Genetics, when explaining the relationship between a gene and genome, Myriad's attorney suggested that it's like making a baseball bat out of a tree. Justice Alito disagreed: the baseball bat could be simply a tree branch fell off a tree, ended up in ocean and then washed back to shore by waves. Do you agree with any of these two analogies? If not, what would be your analogy to fight back Justice Alito's reply?

I spoke to a biglaw #Vault# partner who chairs the patent lit group about this specific issue, and he agreed that being an Examiner generally, although not 100% of the time, pigeonholes you into prep/pros work. If you do this, there's a good chance the patent lit ship sails, as well as most general lit opportunities as well.

I do agree somewhat on the advanced degree front, though. It might not be a bad idea to find an alum who is doing prep/pros somewhere and see what they tell you about prosecution. As a pros guy myself, I can tell you it is not for everyone.

It's also worth noting that if you haven't spent much time with IP, particularly pros work, it can be a bit jarring compared to the rest of your law school experience. Prosecution really is its own animal, and much #if not all# of law school does little to prepare you for the skillset required.

This is not to say that it is any harder or easier than other legal work, just that it is quite different.

I had to chuckle because I wrote my seminar paper in law school in this exact issue: the patentability of genetic material, using the AMP vs. Myriad Genetics case as a case study. I wrote the paper before the SC decision came down and argued for the patentability of genetic material, however as you probably know the Supreme Court disagreed with my position in a unanimous decision.

Therefore, I would agree more with Myriads analogy, though no analogy is perfect. I would disagree with Alito's reply because unlike the tree example, where the branch just falls off, in order for Myriad's BRCA gene to be used as a marker for breast cancer in its diagnostic test, the covalent bonds must be broken by human intervention through the use of very specific restriction enzymes that cut the DNA at specific base pars to separate the BRCA gene from the rest of the human genome. Thus, the gene as it is used in the Myriad's diagnostic test is no longer a product of nature but sufficiently transformed by a human hand because it does not naturally exist in nature in a useful form until processed by Myriad.

That is a good analogy and point as well. Are you a bio patent prosecutor or litigator?