We brought in Dr. Kathleen Chaffee from WashU’s Office of Technology Management (OTM) to speak with us about her path from science to patent law. Dr. Chaffee has a PhD in Chemistry, did a postdoc at WashU in imaging, then switched gears and joined Dentons Law, finally landing at OTM. She has been practicing Patent Law for the past 9 years as a Patent Agent.
Q: Can you explain the titles/positions in patent law?
A: A Patent Scientist is anyone with experience in a specific field (often has a PhD but not necessarily) and they assist registered patent practitioners to write and prosecute patents. A Patent Agent generally has an advanced degree, such as PhD, and has also passed the Patent Bar (the USPTO must review every applicant’s qualifications to determine if they qualify to sit for the patent bar). Agents can practice independently, and provide advice regarding patent prosecution, but generally a Patent Agent works with one or more Patent Attorneys. A Patent Attorney has a JD and has passed the Patent Bar. Patent Attorneys can be litigators (go to court) and provide legal advice.
Q: What got you interested in law in the first place?
A: I went to a postdoc “non-traditional career” seminar about being a patent attorney/patent agent and I thought, well that’s cool. I applied for a few “patent scientist” positons, landed a job, and loved it.
Q: What makes patent law different from bench research (apart from the obvious)?
A: Pretty much everything is different. In academic research, things can move slowly, at your own pace. In patent law, you have hard deadlines you have to meet. In academia, you can set your schedule. If you want to spend all day on something, you can. In patent law, you have a set amount of time to finish the task before you have to move on to the next one.
Q: How was it getting used to patent law?
A: It was really challenging during the first couple of years. You feel like you can’t even keep your head above water. I knew what I wanted, though, and that was to make myself valuable for the company, so I put in the extra hours which meant I spent a lot of my own “free” time to learn and catch up. It takes time and practice. I trained essentially as a paralegal for the first year, filing and filling out paperwork, and learning the process and structure of patents. I would also provide scientific analysis for attorneys and draft sections of patent applications and draft response templates.
Q: What are the average steps a patent takes from beginning to end?
A: The general process starts with the idea which is given to a Patent Agent or Patent Scientist who will analyze it for its patentability. To be deemed patentable the idea must be new and non-obvious, and if it is determined to be patentable a patent application is drawn up and filed. Then it goes to prosecution, where a person who is an expert in that area (the examiner) reviews the application and decides if they think it is patentable. This step occurs multiple times, as you’ll get rejections, but you get to argue them with the examiner. If you can convince the examiner after the many back-and-forths that this is patentable, you are granted a patent. This whole process can take 3-5 years.
Q: Are things varied or the same?
A: It’s all different, all the time. I have 300 patent cases going at one time, all at different stages. I have to know a little about a lot of different technologies and I need to be incredibly efficient – you can’t go down a rabbit hole, you need to find the answer and move on. On top of that, patent rules are supposed to be applied evenly to all patents, but they usually aren’t. Certain technologies are predictable (like engineering) and others, like biology usually are not, so these standards are slightly different for every invention.
Q: Sorry, did you say 300 patents at once?
A: Haha, yes! When you first start out you won’t have that many. When you work as a Patent Agent you also have a paralegal that helps you plan your day and keep your deadlines in order.
Q: Do you get to innovate at work?
A: Patent Agents can absolutely innovate and help in the creation of the concept. Some Patent Agent jobs have you hired specifically to help researchers innovate their product so that it can be patented. A friend of mine has this type of job, where they go in and sit in lab meetings and helps shift the lab work toward patentability.
Q: What is your favorite part of being a Patent Agent?
A: First, I don’t love patentability analyses much, but I really enjoy arguing with the examiners and telling them (politely) how wrong they are. And when you win (a patent gets allowed), that feels fantastic.
Q: What grad school skill was most transferrable when you switch to patent law?
A: Easily taking criticism. I don’t mean verbal attacks, but rather when someone tells you that you did something wrong or could have done it better or more efficiently. These are important things to take in and learn, but not take personally. They are trying to help you improve and you have to be ready to hear those things.
Q: What makes a law office different from the OTM office?
A: In my experience, law firms are a lot tougher. The hours are longer, and they put a lot more pressure (especially on people with families). If you want to work at a law firm ask them how many hours a week they expect you to bill. OTM is super flexible, I just have to bill a certain number of hours per month that keeps the return on investment high. It took me about 5 years to have full autonomy to practice patent law without any oversight (this is typical). The other great thing about being a patent agent is you can make it what you want. If you are an extrovert, then you can be more client facing. If you are an introvert, you can be primarily paperwork facing.
Q: How would I go about getting an internship in patent law?
A: OTM has these opportunities, so keep an eye there. Otherwise, I recommend studying the patent bar, even if you don’t take it for the internship. It gets you familiar with the terms and documents you’ll see while working and gives you a leg up on the field.