An Unexpected Career in Science

Guest blogger Lisa Sim shares her story of a career as a patent agent.

By Lisa Sim

What does it mean to have a career in science? 

For me, the answer to this question has evolved through my career experiences. In the early stages of my career, as a fledgling graduate student in microbiology, my answer to this question was narrowly defined by a single path that started with graduate studies, followed by the eventual postdoc, and if lucky, a tenured position in academia or a research position in industry.  As it turned out, towards the end of my studies, it became clear to me that a career at the bench was not for me.

After defending my thesis, I wrestled with this question of “what it means to have a career in science” and, after a period of exploring various options, I distilled the answer to this question for me to be a career that would allow me to contribute to technological innovation…without being at the bench. Through a series of fortuitous events, I discovered such a career.

As a patent agent, and more broadly as an intellectual property lawyer, I have found a career where I can utilize my technical expertise, away from the bench, in an environment that allows me to work closely with researchers to help them protect their innovations and develop strategies for supporting the translation of these innovations to the marketplace. 

What does a patent agent do?

Patent agents don’t necessarily have to have a law degree. What is essential for a patent agent is to have the technical knowledge in the relevant field to be able to work with fellow scientists in securing an ownership interest in a scientific invention in order to support a commercial endeavor. This involves understanding what the business objective is for patenting an invention, working with the scientist-inventor to identify what the invention is from the research that has been performed, and finally to prepare, file, and prosecute the patent application through to issuance in Canada and other jurisdictions in order to support the business objective.

What I have found most interesting as a patent agent is looking at science from a business perspective and finding creative ways to define a scientific development as a commercially relevant product.  This role as patent agent requires working with people outside of the lab, involved in all levels of the scientific community, including, scientist-inventors, technology transfer officers, representatives in government, research institutions, and corporations, and examiners at the Canadian Intellectual Property Office (the “CIPO”).  Being able to understand the science, creatively translate the science to support the business objective, and communicate this to these various levels of the scientific community requires a patent agent to have effective communication skills, creativity, and of course a strong technical knowledge.

How do you become a patent agent?

After graduate school, I chose to go to law school with the intention of becoming an intellectual property lawyer. A law degree, however, is not a requirement to becoming a patent agent.  What is required is to pass the patent agent qualifying exam.  All patent agents, whether a lawyer or not, must pass the qualifying exam that is given by the CIPO.  In all honesty, the patent agent qualifying exam was the most challenging exam I have had to endure, having a pass rate of less than 20%.

To be eligible to sit the exam, a candidate has to be a Canadian resident and must have worked for at least 24 months in patent practice.  For non-lawyers, the typical route is to be employed as a patent agent trainee, sometimes referred to as a technical specialist, at a law firm having a patent practice. It is also possible to meet this requirement by working on the examining staff at the Patent Office. It is during this trainee period that you will get first-hand experience with all aspects of patent practice.

The exam is held once a year in the spring (April or May) in various cities across Canada. The exam is designed to test knowledge of Canadian patent legislation, patent application drafting, case law and CIPO practices.  The exam is comprised of four papers written within four hours over the course of four days.  Each paper covers a different area of patent practice.

Further details about the exam and sample exams from previous years are available through the CIPO website (https://www.ic.gc.ca/eic/site/cipointernet-internetopic.nsf/eng/Home)

Where do patent agents work?

Patent agents work wherever there is an opportunity to commercialize scientific development.  They are hired by law firms or agencies where patent services are offered, and are also hired by organizations that research and develop inventions or purchase the rights to inventions. Such organizations include, for example: 

• Biotech, pharma, or other technology corporations of various sizes;
• Law firms that practice intellectual property law;
• Government agencies; and
• Colleges and universities.

My career path has led me to an unexpected destination but I couldn’t be more happy with where I have ended up.  What I have experienced as a patent agent is a career in science that gives me access to the most recent scientific developments in a diversity of fields where I continue to participate in the scientific community in a meaningful way.  If a career as a patent agent interests you, I encourage you to reach out to a patent agent working in your technical field to find out more.

About the author

Lisa is a partner in Miller Thomson’s Vancouver office and a member of the Intellectual Property Group. Her practice focuses on protecting, commercializing, and managing intellectual property with an emphasis on patent matters in a variety of industries including biotechnology, health,medical devices, agriculture, forestry, oil & gas, mechanical arts, as well as environmental technologies.