By Emily C. Kelly-Castro
On October 2, 2019, I attended the iJOBS Simulation: How to be a technical specialist. So, what does it mean to be a technical specialist you ask? A technical specialist works closely with patent lawyers to advise on specific patents. A patent lawyer will examine an invention, guide an inventor through the patent application process and help an applicant get a patent for your invention. So, you might ask yourself, what is a patent and why is it important? Based on the definition given by the Webster dictionary a patent is a written document securing for a term of years the right to exclude others from making, using, or selling an invention. What makes an invention patentable? The invention must:
- Encompass “patentable subject matter”
- Be useful
- Be new
- Be non-obvious
- Be supported by a written description of the invention, written by any person skilled in the art, and show the best way to do it.
This session was directed by two technical specialists, Victor Ghidu, Ph.D. and Thomas H. Walls, Ph.D., along with Shean Johnson, a legal staff recruiter. Victor Ghidu, Ph.D. is currently an associate at Morgan Lewis law firm while Thomas Walls, Ph.D. works as a Patent Attorney for Bausch Health. Shean Johnson is the Director of Legal Staff Recruitment for Elm & Broad Recruiting Solutions. For more information about the speakers, you can check out their bios on our iJOBs event webpage.
During the first part of this session, participants directed questions at each of the guest speakers. Here I will discuss some of the questions asks and a brief summary of what their collective responses were.
- What are some of the skills you look for when recruiting a technical specialist?
- The applicant must have a clear understanding of the technical background of a patent or a field, whether it is in engineering, pharmacology, or in the biochemistry field.
- A prospective technical specialist should have a willingness to be trained.
- Being able to “talk nerd”. It is important for technical specialists to have the ability to communicate the science written by a Ph.D. or MD to a lawyer and to a public audience.
- As a prospective technical specialist, you will need to educate yourself about topics outside your field of expertise. Some topics might not be within your technical field, but because you are the specialist you will be expected to learn about the topic and communicate your knowledge to the patent lawyer.
- You should be able to write a proper, organized document using the correct language that describes the invention. It is important to find opportunities to improve your writing ability while completing your Ph.D. before seeking a position in technical writing.
- Is there a demand for technical specialists in the biological/health field?
- Right now, there is a high demand for technical specialists with technical expertise in electrical engineering, molecular biology, and physiology.
- Could you explain the interviewing process?
- Getting an interview is already a big step. When you get called for an interview you may be asked to discuss your research work, get quizzed on technical questions on your field, and demonstrate that you can communicate using appropriate technical language. The type of interview you get depends on the company, but you should be prepared for any of these scenarios. It’s also important to convey why you want to work in patent law.
- How would you describe the workload for a technical specialist?
- It depends on the type of law firm you work for. It would be really hard to tell you will be strictly working a “9 am to 5 pm” shift. It all depends on your workload and organization. Sometimes you will have to put in extra hours whether it is extended work nights or during the weekends. Small law firms are usually based on productivity, while large law firms get billed by the hour.
During the second part of this session, Victor and Thomas discussed two patent cases: a drug method case and a chemical compound case. A method patent doesn’t cover something physical or tangible, it covers the steps that need to be performed to complete a process. On the other hand, a chemical compound patent will cover either the chemical name or the chemical structure, or both. This comprises a core chemical structure with several optional chemical groups that may be attached to the core structure.
The first case discussed was about isobutyl gaba, or commercially known as Lyrica, and its derivatives for the treatment of pain. This is method case, where it describes how this one compound can be used to treat different types of pain. The patent was first filed in 1996, approved in 1997, supposed to expire in 2017, but it was extended until June 30, 2019, due to granting pediatric exclusivity.
The second case was about a γ-aminobutyric acid analog and its optical isomers. This is considered a chemical compound case, where you patent the whole compound, for any type of use. Having a compound patent weighs more than a methods patent because it covers a broader description when it comes to patenting an invention.
In both situations, a technical specialist will be responsible for studying in detail the invention that is desired to be patented. They will translate the science to the lawyer and work closely together to write up the patent document for the researcher’s invention.
This was a great event to learn about being a technical specialist in a patent law firm and how patents work are applied to scientific inventions. Personally, I was not aware of this type of opportunity as a researcher. Through this workshop, I learned that there are more ways of communicating science in environments outside of academia. If you are passionate about communicating science to a diverse audience, you should consider pursuing a career as a technical specialist.
Junior Editor: Eileen Oni
Senior Editor: Tomas Kasza