Intellectual Property Law Down to a Science Legal Careers for Scientists in the Biotech and Pharma Industries Rose M. Thiessen, Ph.D., Attorney At Law May 12, 2007

2 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

3 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

4 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

5 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

6 Attorney (Litigator)  Discovery  Memoranda  Requests  Motions  Depositions  Trial and appellate briefs  Settlement negotiations  Mediation  Arbitration

7 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

8 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!

9 Other careers?  Patent Agent  Patent Examiner  Technical Consultant  Patent Searcher  Law Librarian  IP Manager (in-house)

10 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

11 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

12 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

13 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

14 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)

15 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

16 How do I sign up?  Forms and information available from USPTO website  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

17 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

18 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

19 Review Courses, cont.  Where do I sign up for a Patent Bar review course? PLI Patent Bar Review  PATBAR .COM  Patent Resources Group, Inc. 

20 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

21 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 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)

22 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  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

23 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

24 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)

25 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

26 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)

27 Job Hunting Tools  USPTO Roster of Agents and Attorneys  Law Firm Websites  General Information FindLaw’s Infirmation (message boards, job listings, firm information)   American Bar Association 

28 My Background  B.A., Chemistry (Minor in Computer Science), 1986 Willamette University  Ph.D. in Chemistry, 1991 Purdue University  Research Chemist Exxon Research & Engineering Company  J.D Rutgers University School of Law – Newark, NJ  Knobbe Martens Olson & Bear, LLP Associate ( ) Partner (2005)

29 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

30 Questions? Rose Thiessen, Ph.D. Partner Knobbe Martens Olson & Bear LLP 550 West C Street, Suite 1200 San Diego, CA Phone Fax Website:

Intellectual Property Law Down to a Science 2040 Main Street, Fourteenth Floor, Irvine, CA Tel Fax kmob.com 550 West C Street, Suite 1200, San Diego, CA One Sansome Street, Suite 3500, San Francisco, CA Avenue of the Stars, Suite 1500, Los Angeles, CA Tenth Street, Suite 700, Riverside, CA Marsh Street, San Luis Obispo, CA 93401