Chemists in Patent Law

Getting bored with routine lab work? Like to write? Ready for something new? How about combining chemistry and law?

While there are no figures on how many chemists have careers in the legal world, about 1150 are members of the ACS Division of Chemistry and The Law (CHAL). Of these, the most common specialty is patent law or intellectual property (IP).

Now retired, Howard Peters had his own “boutique law firm” specializing in patent law. He explained his specialty this way: “I was like a British solicitor; I listened to ordinary people who had inventions. They told me about their extraordinary invention; I filed the application with the US Patent Office and then battled with the examiners to get the patent issued.”

Peters had a PhD and was working full-time in industry before going to law school. As part of his job, he spent four months in the Dow Patent Department. “I became fascinated – and I liked to write.” Later after settling in California, he started law school but didn’t quit his job in explosives at SRI International. Eventually, he worked for a law firm and then started his own.

Becoming a patent agent is another option for those considering Patent Law, and you don’t need a PhD or even a law degree (JD). A patent agent at Wyeth Research, Barbara Lences is not an attorney. She explains that a patent agent is authorized by the US Patent and Trademark Office to file and prosecute patent applications. “Becoming a patent agent requires an undergraduate or graduate degree in the sciences and a passing grade on the patent bar exam. Patent agents and patent attorneys differ in that patent attorneys have completed a law degree in addition to a science degree and are qualified to ajudicate a patent or patent application in a court of law, in addition to filing and prosecuting a patent application.”

With a bachelor’s degree in chemistry, Lences did organic synthesis in agrichemical and pharmaceutical research groups, eventually reaching the point where it was no longer challenging. “I had gone about as far as I could go in chemistry without a graduate degree. Grad school was not an option because I had young children at that time.” Through her company’s patent liaison office, she switched careers from chemistry to patent law. During this transition she took an ACS Short Course on patent law and a bar review course, eventually taking the patent bar exam and becoming a registered patent agent.

Lences finds that often young scientists don’t know about alternative career options such as hers. “When you are a science major, except for medical school, careers outside of academic or industrial chemistry are not emphasized.” When students hear of her career, they are surprised: “Oh – you can do that! You don’t have to choose between teaching and research?” She points out that in addition to careers in patent law, regulatory affairs, and chemical health and safety, a chemist can become a technical expert at a law firm and work with attorneys in patent drafting and in litigation.

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Anne Kuhlmann Taylor, PhD (ACS ’67), is a consultant and technical writer based in Baton Rouge, LA. Previously, she was an analytical chemist in the pharmaceutical industry. Working with CTD Quality Consulting, she writes, edits, and critiques documents for the pharmaceutical industries. She is Councilor from the Baton Rouge Section of ACS and serves on the Committee on Community Activities.