New York Lawyer
June 24, 2002

Q:
I am a patent attorney who specializes in biotech and pharmaceuticals.

I want either to leave the law or switch practice areas.

What options do I have and what aspects of my background or most marketable?

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A:
Lawyers, by definition, are subject-matter experts. They are defined within the profession by their areas of particular expertise, be it labor law, administrative law, environmental law, trusts and estates, etc.

Patent lawyers are super-specialists: they compound one area of expertise -- usually called an "art -- in electrical, mechanical or chemical engineering -- with another esoteric area of expertise: the prosecution of patents. It is a form of practice that generally is extremely detail-oriented, conventional and routinized -- once you have the basic skill set down, you do not increase appreciably in competency merely by doing it over and again.

This leaves patent lawyers in a major bind when they want to transfer out of their narrow niche and into the world at large: they have nothing to transfer of generic value to a marketplace that is interested in breadth more than depth. Merely by virtue of having completed law school, most lawyers (or ex-lawyers) will be presumed to have competent situation analysis skills and decent written and oral communication ability.

Patent lawyers -- who often are "quants" schooled in engineering rather than the liberal arts -- may not even get the benefits of these inferences. Fairly or not, they are widely viewed as people who put even tighter technical definitions into ever tighter boxes -- not the hottest ticket in a world that claims to treasure people who think and operate "outside the box."

Accordingly, patent lawyers leaving the law often have to significantly re-credential themselves via the acquisition of another technical skill-set. A lot of them also do fine in areas that apply their particular engineering "art" or where the can make a relatively smooth transition into another technical discipline -- especially information science. This re-credentialling is expensive in terms of time, money and effort -- and it may not provide the economic leverage the career shifter hopes for.

If you're going in this direction, be sure to examine the employment climate for your intended discipline and review a bunch of salary surveys describing compensation at various levels of your intended new profession.

Patent law is, of course, a subset of the larger domain called intellectual property, and many patent lawyers have "broadened their brief" to become "IP experts" in such areas as trademark, service mark and corporate identity, confidentiality, licensing, etc.

Moreover, many corporations use IP as a strategic weapon -- a tool not just for patenting and pushing product, but also for acquiring rights that deny competitors a strategic advantage. This often is done by withholding products from the market, not by marketing them.

Those patent lawyers -- especially in biotech, pharmaceuticals and specialty chemicals -- who can boast of strategic IP planning experience may find themselves as attractive adds, and not necessarily as lawyers, to the corporate strategic planning, new business development, market/competitor analysis and/or product planning functions.

The answer to your question there depends on what role you've had in biotech and pharmaceuticals.

Were you primarily prosecuting and protecting patents?

Were you involved in commercialization or technology transfer?

Do you participate in the intellectual currency of the IP and patent planning function?

In short, the bigger your past conceptual picture, the more transferable your abilities. As a general legal practice area, IP is "hot," notwithstanding the death spiral of the dot-coms. Look for areas where product is king -- and market your ability either to help define the product, market the product, or protect the product.

Sincerely,
Douglas B. Richardson
President, The Richardson Group