Intellectual Property LawDown to a Science

Legal Careers for Scientists in the Biotech and Pharma Industries

Rose M. Thiessen, Ph.D., Attorney At Law

May 12, 2007

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Career Options

Attorney

Patent Agent

Legal Assistant / Paralegal / Patent Specialist

Law Librarian

Patent Examiner at the USPTO

Patent Searcher / Technical Consultant

Intellectual Property Manager/Coordinator

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Employers of Attorneys, Agents, Assistants

Law Firms Associate (7-10 years) (experience not required) Partner (part owner of the firm) Hire attorneys, agents, assistants (experience not

necessarily required)

Industry Biotech, pharmaceutical, chemical, high tech Hire attorneys, agents, assistants (experience typically

required)

University Tech Transfer Offices Hire attorneys and agents

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Where can I find a job in the legal profession?

Top markets include: San Francisco, Boston, New York, Washington

DC, San Diego

Secondary markets include: Chicago, Minneapolis, Austin, Seattle, Los

Angeles

Smaller markets all over the country

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Attorney (Client Practice)

Patent drafting and prosecution

Patent infringement and validity opinions

Licensing agreements

Employment contracts

Advise on trade secrets, patent strategy, business plans

Interact with foreign patent counsel, litigation counsel, venture capitalists, auditors

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Attorney (Litigator)

Discovery

Memoranda

Requests

Motions

Depositions

Trial and appellate briefs

Settlement negotiations

Mediation

Arbitration

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Client Practice versus Litigation

Litigators don’t need a technical background

Technical degree not required for trademark attorneys

Most M.S./Ph.D.’s end up in client practice

Easier for patent attorneys with client practice background to job-hop, especially to in-house (industry) positions

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Attorney salaries

Starting salaries of >$140,000 (SoCal Law Firms)

Billable Hours / Bonuses

Firms have “Personalities” “Quality of Life” Firms

Prosecution Firms vs. Litigation Firms

IP Boutique vs. General Practice Firms with IP Departments

Small, Medium, or Large?

Will it look good on my résumé?

Choose Carefully!

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Other careers?

Patent Agent

Patent Examiner

Technical Consultant

Patent Searcher

Law Librarian

IP Manager (in-house)

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Patent Agent

Patent prosecution Research legal issues / technical and patent

literature Draft memoranda for attorney Any “practice of law” is off-limits Salaries - similar to what scientists/engineers in

industry make Advancement - not without a law degree Patent agent by day / law student by night Most employers are law firms

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Legal Assistant / Patent Specialist

Assist attorney

Coordinate patent application filings in US and foreign countries

Salaries – $45k to $75k

Advancement – limited opportunities for supervisory positions

Most employers are law firms, but companies will hire experienced patent specialists

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Other Options

Patent Examiner Must work in Washington D.C. (site of U.S. Patent

and Trademark Office) Patent examiner by day / law student by night Government job (with all the associated perks /

drawbacks)

Technical consultant / Patent Searcher

Law Librarian

Intellectual Property Manager / Coordinator

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What do I need to do to be able to work as an Assistant, Agent, Attorney?

Patent Assistant / Specialist Get a college degree

Patent Agent Get a degree (Bachelor’s or higher) in a technical subject Pass the patent bar

Patent Attorney Get a degree (Bachelor’s or higher) in a technical subject Pass the patent bar Get a law degree Pass a state bar exam

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The “Patent Bar”

Officially known as: The Examination for Persons Seeking Registration before the United States Patent and Trademark Office as Patent Attorneys and Agents

Administered by the U.S. Patent and Trademark Office (USPTO) Necessary if you want to practice before the USPTO

The Patent Bar tests your knowledge of U.S. patent law, not your technical knowledge

Manual of Patent Examining Procedure (MPEP) Title 37 of the Code of Federal Regulations (CFR) Consolidated Listing of Notices in the Official Gazette

The Patent Bar is a tough exam Lower pass rates than most state bar exams! No shame in taking it more than once (most do)

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Requirements for Admission to Examination

Bachelor’s degree in recognized technical subject Chemistry, biology, engineering, physics, etc.

Computer Science (program must be accredited by the CSAC)

Bachelor’s degree in another subject and minimum credit hours in selected technical subjects

Practical experience

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How do I sign up?

Forms and information available from USPTO website http://www.uspto.gov/web/offices/dcom/gcounsel/oed.htm

Exams offered year round $200 examination fee

$150 examination administration fee

$40 nonrefundable application fee

File application at least three months before you plan to take the exam

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What’s the exam like?

1 day long 3 hours in the morning / Lunch break / 3 hours in the afternoon

Multiple choice (50 questions a.m. / 50 questions p.m.)

You are provided a copy of the Manual of Patent Examining Procedure (MPEP)

You must receive a passing score of 70% on the scored questions (90 questions scored)

Pass rate usually <50%

Exam administered by Thompson Prometric at locations throughout California

www.prometric.com

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How do I study for the exam?

Go it alone Order copies of MPEP, Title 37 of the CFR, Consolidated

Listing of Notices in the OG, old exams (all available from USPTO) and study, study, study

Cheapest option (your only costs are for the government publications and examination fees)

Recommended only for people with extensive practical patent experience

Review Courses Can be expensive (~$500 to >$3000) Generally fewer tries required to pass the exam Some courses may not charge you to re-take the course if you

don’t pass the exam on the first try

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Review Courses, cont.

Where do I sign up for a Patent Bar review course? PLI Patent Bar Review

http://www.patentbarreview.com/

PATBAR.COM http://patbar.com/index.html

Patent Resources Group, Inc. http://www.patentresources.com/

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What do I need to know about law school?

Is it something I really want to do at this time in my life? Major commitment of time and money (3-4½ years, ~>100k) Supportive spouse, significant other, relatives? Family, financial commitments (young children, mortgage)?

What’s attending law school like? Stop thinking like a scientist (no absolutes) Writing skills, memorization, note taking skills Notebook computers, study aids, study groups First year is the most work, third year is the most tedious Law can be fun, exciting, intellectually challenging Make time for “you” - watch for burnout

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What do I need to do to before applying to law school?

Get a good score on the Law School Admissions Test (LSAT) Information available at http://www.lsac.org/

Next Exam is June 11, 2007

Deadline to Sign-up by Mail is October 31, 2006 (late registration deadline by phone or online is May 18, 2007)

$123 Registration Fee (extra fees may be involved)

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How do I choose a law school?

Reputation, reputation, reputation Top tier, second tier, third tier, fourth tier Ranking in U.S. News and World Report

http://www.usnews.com/usnews/edu/grad/rankings/law/lawindex_brief.php If at all possible, attend school ranked highest

Accreditation American Bar Association California Committee of Bar Examiners (generally not recommended) Unaccredited (not recommended) Correspondence (not recommended)

California Law Schools http://www.bhba.org/law_school_links.htm

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Local Law Schools (top tier, ABA accredited)

USC Law School $36,732 per year

Top tier, competitive admissions

UCLA School of Law Residents $25,289 per year / Non-Residents

$36,213 per year

Top tier, top IP law, competitive admissions

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Local Law Schools (ABA accredited)

Chapman University School of Law $34250 per year (tuition only)

Loyola Law School $33,515 per year (tuition only)

Pepperdine University School of Law $33,590 per year (tuition only)

Southwestern School of Law $33,410 per year (tuition only)

Whittier Law School $30,750 per year (tuition only)

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How do I pay for law school?

Student loans

Scholarships (especially recently ABA accredited schools)

Evening school Evening and/or weekend classes for 4+ years

Don’t expect summers off

Clerk at law firm (part time or full time)

Some employers pay tuition or offer other incentives

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What can I do to get a good job after graduation?

Why do law firms decide to interview you? Reputation of law school

GPA in law school

Law review, judicial clerkships, moot court (minor importance)

Why do law firms decide to make you an offer? Summer clerkship with firm

Strong technical and/or legal background

Good “fit” with firm culture

Good timing (firm’s current needs)

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Job Hunting Tools

USPTO Roster of Agents and Attorneys http://www.uspto.gov

Law Firm Websites

General Information FindLaw’s Infirmation (message boards, job listings, firm

information) http://careers.findlaw.com/

http://www.infirmation.com/bboard/clubs-top.tcl

American Bar Association http://www.abanet.org

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My Background B.A., Chemistry (Minor in Computer

Science), 1986 Willamette University

Ph.D. in Chemistry, 1991 Purdue University

Research Chemist 1991-1999 Exxon Research & Engineering Company

J.D. 1999 Rutgers University School of Law – Newark, NJ

Knobbe Martens Olson & Bear, LLP Associate (1999 - 2004) Partner (2005)

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My Firm

Knobbe Martens Olson & Bear, LLP

Founded in 1962

IP Law Only (boutique) 180+ Attorneys

Chemical/Biotech EE and Computer Science ME and CE Physics MD Nontechnical

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Questions?

Rose Thiessen, Ph.D. Partner Knobbe Martens Olson & Bear LLP550 West C Street, Suite 1200San Diego, CA 92101Phone 619-525-8301Fax 619-235-0176 Email: rthiessen@kmob.com Website: www.kmob.com

Intellectual Property LawDown to a Science

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