Working Effectively with your Firm’s Patent Attorneys

June 25, 2012

Working effectively with patent attorneys can both increase the number of patents you are awarded and improve their quality. An effective working relationship begins with understanding the basics of the patenting process and knowing when to alert your patent attorney that you may have developed an invention. Just as a major factor in a university faculty member’s career advancement is publishing research papers, the key to an industrial researcher’s advancement is developing profitable new intellectual property. Being the inventor on patents is a way to demonstrate your productivity.

Understanding the patent attorney’s mindset

Patent attorneys usually approach situations with a different mindset than researchers do even if they have an advanced degree in chemistry. While research managers and inventors tend to think about an invention’s interesting technical aspects, your patent attorney often is thinking about how your competitors will try to legally get around your patent and develop something very similar.  A better strategy for your firm may be to keep the knowledge a trade secret rather than patenting it.

The patent attorney, often asking pertinent questions, can help protect the firm’s interest by extending the scope of the invention. This can make it more difficult for others to legally circumvent your patent (when it issues). The lab work necessary to accomplish this and write pertinent claims often can be done in a more timely and cost-effective way early in a project than very late. By performing a timely “prior art” search, the patent attorney and the project team may be able to define potential competitors. You and the attorney can then monitor that particular firm’s patent activity and publications to determine if the firm is indeed working to develop similar technology.

The process of obtaining a patent does not end with the submission of a patent application. A patent examiner specializing in the technology area of the application will review it and issue an “office action” evaluating the validity of the application. Most patent applications are rejected in their first office action. Usually this office action will state what is described in the patent claims as “obvious to one skilled in the prior art.” While the patent attorney will consult with the inventor, the attorney usually takes the lead in rewriting claims and rebutting the patent examiner’s assertion that the proposed invention is obvious to specialists in the technology field of the application. After receiving a negative office action on one of my patent applications, attorney Richard Lemuth commented to me, “This is when I really earn my salary.” Repeated office actions may be needed to convince the examiner that the invention, or part of it, is valid resulting in the issuance of a U.S. patent.

Your own role in patenting

Understanding the basics of the patenting process aids researchers in defining the key features of the technology to be patented and how the new technology differs from previously known technology (the prior art). It helps them work more effectively with patent attorneys in preparing patent applications. The patent attorney may ask questions leading to the inventor to perform additional experiments to broaden the scope of the invention and to support the patent claims that define the invention.

Not understanding the patent process – particularly what constitutes an invention – can lead to adverse consequences. For example, when I began working in my first industrial position, I knew nothing about patents and assumed others would tell me what I needed to know at an appropriate time. I hadn’t realized that I had conceived an invention and reduced it to practice when I left the firm to accept another position. Another chemist who inherited the project submitted an invention disclosure to the company patent department but did not include my name as an inventor. A patent was issued and the invention became the basis for a profitable business for my former employer. Years later, a competitor entered into the same business and because my former employer did not provide the U.S. Patent and Trademark Office (USPTO) with the correct inventors, their patent was rescinded.  This action permitted the other company to use the technology to develop a competitive product, and I learned a very important lesson as young industrial chemist.

John Borchardt is a chemist and freelance writer who has been an ACS career consultant for 15 years. He is the author of the ACS/Oxford University Press Book “Career Management for Scientists and Engineers.” He has had more than 1200 articles published in a variety of magazines, newspapers and encyclopedias. As an industrial chemist, he holds 30 U.S. and more than 125 international patents and is the author of more than 130 peer-reviewed papers.

Temporary Jobs and Contract Assignments

June 18, 2012

Even in today’s highly competitive job market many employers are planning to increase their hiring of temporary employees and contractors. For example, in a 2011 McKinsey Global Institute study of 2,000 employers, 34% of Human Resource Executives surveyed said they expect to use more temps and contractors over the next five years. Some veteran chemists overlook temp and contractor job opportunities because they’ve held long-term staff positions most of their career according to Albuquerque, N.M career coach, Joy Moore. Instead they only focus on finding another long-term job, which can be short-sighted.

Given the current state of the job market, temporary jobs and limited term contract assignments can be productive and financially rewarding ways to develop industrial job experience. Another advantage is that working a temporary assignment can be a way to expand one’s professional network, an aid to future job hunting.

Employers’ perspectives

There is a temp-to-perm phenomenon in which managers evaluate people working temporary positions and offer the outstanding ones long-term positions. I learned this technique from one of my bosses at Shell and used it myself when I became a research manager. It reduces the risks associated with hiring new employees and allows the organization to “try before you buy” and allow the individual to prove themselves.

As work continues to be organized on a project model, employers face a major challenge. Projects have a finite lifetime and often require highly specialized skills. As projects are completed or terminated, employers often have less need for individuals with the highly specialized skills required by the project. However, staff reductions are can be both demoralizing to the remaining lab staff and costly as well. This conundrum can be solved by hiring contingent employees and/or outsourcing at least some of the project work to contractors. These individuals work and are paid only for the life of the project. According to Jeffrey Wenger, associate professor of public administration and policy at the University of Georgia, letting temporary employees and contractors go has smaller effects on permanent staff morale.

Short-term work force concerns

Serious issues can arise with using contingent employees, such as staff loyalty. As the job market improves and more long-term chemistry jobs become available, what can managers and their staffing firms do to maintain contingent employees’ loyalty until the project no longer needs their services? Candidates with a strong cultural fit to your lab and having transferable skills to other assignments are more likely to be loyal. Providing enough training, rewards, and performance feedback helps keep temps engaged, motivated and loyal. Small rewards such as a free lunch for good performance can go a long way toward winning loyalty.

Confidentiality is another concern. Many temps and contractors must be given access to proprietary information in order to do their jobs. Indeed, some of them may generate new proprietary information. A greater emphasis on staff confidentiality is needed. The most common approaches have been frequent education and reminders to hold the lab operator’s processes a secret.  A security breach can lead to an expensive and lengthy investigation, termination and even a drawn out lawsuit.  This can tarnish the reputations of the laboratory and staffing firm as security breaches are often reported in trade journals such as Chemical & Engineering News.

The role of the staffing firm

Because of the high unemployment rate, one problem is the flood of applicants for open positions.  This makes it more difficult to find truly qualified applicants in a short amount of time. One way laboratory operators can reduce this problem is to develop a relationship with staffing firms that have developed a thorough understanding of the laboratory’s staffing needs. Working closely with a contingent staffing firm, discussing requirements and providing feedback on candidates, can help lab managers and their staffing firms refine their recruiting strategy and more easily find the best candidates. Staffing firms screen candidates and send only the best to interview.

Interviews are usually on-site and last about an hour, opposed to an all-day affair commonly used when interviewing permanent candidates. Many staffing firms have the policy that if a company decides the temporary staffer is unsuitable during the first day of work the staffing firm absorbs the cost. This provides additional insurance against the company making a poor hiring decision and the staffing firm is less likely to recommend that person to the company again.

Contractors are usually hired directly by companies needing the work done. Because contractors often work fairly independently and often earn considerably more than typical temporary employees, the interviewing process is often more rigorous.

John Borchardt is a chemist and freelance writer who has been an ACS career consultant for 15 years. He is the author of the ACS/Oxford University Press Book “Career Management for Scientists and Engineers.” He has had more than 1200 articles published in a variety of magazines, newspapers and encyclopedias. As an industrial chemist, he holds 30 U.S. and more than 125 international patents and is the author of more than 130 peer-reviewed papers.

Interviewing: Have you set the stage?

June 4, 2012

Interviewing is a process, during which you and your potential new employer are getting to know each other. First, the company is interested in your skills (can you do the job?).  During later stages, they will be more interested in your motivations (will you love the job?) and personality (will we enjoy working with you?).  You want to learn about the job, and the corporate culture.  At each step, thorough preparation is your key to success.

Do Your Due Diligence

Before any interview, learn as much about the organization as possible.  Read their web site, know their products, learn about the industry and their competitors, read recent press releases and current stockholder information (if a public company).  Learn what sets them apart from their competitors (low-cost?, high quality?, personal service?).  Read their web site, and explore other information sources including recent news reports, financial industry reports (Standard and Poor’s, Hoovers, Google Finance), and recent patent filings.

If possible, research the people with whom you will be interviewing. Ask for their names ahead of time, and look up their publication records and other public information.  Read their ACS Network and LinkedIn profiles, and make notes of both scientific and personal interests that you have in common.

Polish Your Presentation

For many positions, your oral presentation will be the single most important part of the interview, and a presentation may be expected at any degree level. Confirm the details ahead of time – how long should the talk be, how long for questions, what A/V equipment will be available, anticipated size and scientific background of the audience, and so on.

You will be judged not only on your science, but on your communication skills and ability to think on your feet.  Is your science sound?  Do you have good reasons for your choice of methods?  When answering questions, repeat the question confidently, and then answer clearly.  If you don’t know the answer, don’t bluff!  Tell them you don’t know, then get their contact information and follow up with the answer later.

Evaluate Your Employment Experiences

Review your resume, and refresh your memory on your listed accomplishments. Think through specific events in your professional life that illustrate both your strengths and fit with the company and position.

Today, virtually all organizations use behavioral-based questions in their interviews.  These are questions like “Tell me about a time you made a mistake” and “Have you ever disagreed with your supervisor?”  Be prepared with specific stories that show how you’ve handled that situation.  Many accomplishments could be used to illustrate multiple experiences, depending on how you present them.  Plan ahead, have your examples ready, and practice answering out loud.

In reality, every interaction with a potential employer is part of the interview process – you are never offstage. If you keep current with organizations and industries, practice your presentation skills, and are confident in your professional strengths, you will be ready to take the interview stage whenever the opportunity arises.


Get Involved in the Discussion

Welcome to the ACS Career Tips column. Each month, this column provides advice and answers to career-related questions on a variety of topics, from job search to career development and transitions.  Post your comments, follow the discussion, and suggest topics for future columns on the ACS Careers blog ( — brought to you by ACS Careers.


Chemistry Jobs in Biomedical Engineering

June 4, 2012

Biomedical engineering is a cross-disciplinary field. Its focus is primarily developing therapeutic techniques and devices. These include kidney dialysis machines, pacemakers, synthetic skin, artificial joints, and prostheses. Mechanical devices such as motorized wheelchairs and carts to assist mobility impaired individuals are additional examples of biomedical engineering.

Fields of chemistry, valuable in bioengineering, include polymer chemistry (materials science) and surface chemistry. Examine the professional credentials of many biomedical engineering department faculty members and you’ll see they have degrees, often Ph.D.’s, in chemistry. Many post-docs working in university biomedical engineering departments also have Ph.D.’s in chemistry. Biomedical engineering may offer exciting career opportunities for chemists.

Biomedical engineering has only recently emerged as a separate discipline evolving from an interdisciplinary specialization among already established fields of chemistry and electrical, mechanical and other engineering fields. Universities began establishing graduate and undergraduate biomedical engineering departments in the mid-1960s. These have become increasingly common with the establishment of new biomedical engineering departments. For example, in my hometown, the University of Houston’s Department of Biomedical Engineering was recently launched in 2010.

Information on biomedical engineering employment is available from the Bureau of Labor Statistics (part of the U.S. Department of Labor) at Estimated biomedical engineer employment is 16,590 – small compared to employment of chemists, however shows a growing field.

How can you prepare to compete in the biomedical engineering job market?  Biomedical engineers work in industry, universities, research institutes, hospitals and governments. Many of these positions are R&D jobs. Biomedical engineers often integrate biology and medicine with engineering to solve problems in living systems. Chemistry must often be added to this interdisciplinary mix.

Recently earned your Ph.D.? Consider a post-doc in a biomedical engineering department rather than a chemistry department. This could help you pivot to the biomedical engineering field. Chemistry students planning on graduate school could investigate possible graduate research project opportunities jointly performed in chemistry and biomedical engineering departments. Undergraduate chemistry students may wish to take one or more biomedical engineering courses as electives and apply to biomedical engineering departments for graduate school.

Chemistry students at all degree levels can review their course work and research experience to determine how this experience could be relevant to bioengineering. Then they can better prepare a customized version of their résumé to focus some of their job-hunting efforts on biomedical engineering opportunities suitable for chemists.

Undergraduates may wish to pursue sales and marketing careers in biomedical engineering. Laboratory and analytical instrument sales careers require sales representatives to be knowledgeable with their products and the intended applications.

The primary professional society focused solely on biomedical engineering is the Biomedical Engineering Society. With membership in 2012 reaching 5,730, the BMES is a small but growing membership society. Between 2007 and 2010, membership grew 60%.

The ACS offers a Division of Polymeric Materials: Science and Engineering frequently focuses its programming and other activities on materials for medical and dental applications. When artificial bones and tissues are used in the human body, rejection is a critical concern. It is not surprising that the Division of Colloid and Surface Chemistry also include chemists with biomedical engineering interests.

The focus of the 2012 ACS Fall National Meeting on “Materials for Health and Medicine” provides an indication of the growing importance of biomedical engineering in chemistry.

John Borchardt is a chemist and freelance writer who has been an ACS career consultant for 15 years. He is the author of the ACS/Oxford University Press Book “Career Management for Scientists and Engineers.” He has had more than 1400 articles published in a variety of magazines, newspapers and encyclopedias. As an industrial chemist, he holds 30 U.S. and more than 125 international patents and is the author of more than 130 peer-reviewed papers.