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European Patent Attorney New York


Science and LawSwapping the lab for the lawAs a lawyer with a background in science, Jennifer Gordon has skills that allow her to switch from the courtroom to the laboratory bench without any problems. Gordon was among the first wave of life-science PhDs who joined firms that concentrate on patent law. In the early 1980s, while she was doing her PhD in biochemical engineering at the Massachusetts Institute of Technology in Cambridge, she met Leslie Misrock, a partner at Pennie & Edmonds in New York, who wanted to build a law practice that would focus on biotechnology, a field that was then in its infancy.

Gordon joined the firm as a law clerk in 1981, working in the office during the day and attending Fordham University School of Law at night. The firm's clerk programme covered the cost of law school and allowed her to gain valuable work experience.

Now a partner at the New York office of law firm Orrick, Herrington & Sutcliffe, Gordon has watched patent law relating to biotechnology develop. When she started out, there was no biotechnology-specific case law or legislation; now, US patents cover everything from single genes to multicellular organisms. Looking back, the opportunities for growth seemed obvious. "It became clear that we were in an area that needed its own law, " Gordon says.

As the law has evolved, so have the options for graduates wanting to pursue a career in science-related law. Clerk programmes that sponsor a PhD through law school now exist both in the United States and across Europe. But there are also opportunities for scientific PhDs who don't want to do any formal education at law school — they can become registered patent agents or technology-transfer specialists.

Science and LawSwapping the lab for the lawTo become a US patent agent, scientific graduates must pass the exam set by the US Patent and Trademark Office (PTO). If successful, they are allowed to write patents and represent clients before the PTO. Law firms, universities and pharmaceutical and biotechnology companies routinely employ patent agents.

Michael Yamin, a registered patent agent, took an entrepreneurial approach to his career. After his academic training, stints with two biotech companies and the non-profit Picower Institute for Medical Research in Manhasset, New York, exposed him to various aspects of patent law. As he enjoyed those encounters, he decided to join a law firm. Several years later, Mojave Therapeutics, a biotech company in Hawthorne, New York, recruited him as director of intellectual property and licensing.

At Mojave he manages the company's patent portfolio and licensing agreements. He advises graduates who want to pursue a career in a legal field to manage their expectations. Patent agents tend to have a less clearly defined role inside a company than patent lawyers, and need to have realistic expectations of their duties. For example, a patent agent without a law degree would not be allowed to handle litigation.


Becoming a patent agent in Europe also involves sitting a qualifying examination. But the exam covers more ground than its US equivalent. Passing it confers the rank of European patent attorney, rather than agent, which allows you to take on additional responsibilities such as writing opinions on patent infringements.


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