The AWIS NYC Metropolitan “Scientist of the Quarter” series features female professionals with scientific training who promote or embody the advancement of women in the fields of science, technology, or engineering.
In addition to highlighting an accomplished individual, these articles may also serve to illustrate non-academic career paths for scientists and to point out challenges unique to female professionals (and how to overcome these obstacles). Scientist of the quarter, July 2017Janet M. MacLeod holds a JD from Pace University School of Law, PhD and MSc degrees in Molecular Pharmacology from the Albert Einstein College of Medicine at Yeshiva University, and a BSc degree in Health and Society from Brown University. She is office managing partner of the New York City office and the leader of the Patent Prosecution & Transactions Practice Group at Fox Rothschild LLP, one of the nation’s top business firms. Janet’s patent work has been publically honored on multiple occasions, including her repeated recognition as a “Life Science Star” by LMG Life Sciences and her inclusion in a list of “Super Lawyers” by New York Super Lawyers and Law Politics Magazine. Outside of Fox Rothschild LLP, Janet also serves as the chairperson of the New York City Chapter of the Licensing Executives Society (U.S.A. and Canada).
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What do a social media platform, a cell phone, a transgenic mouse, and a meat substitute product have in common? They are likely all legally protected by patents, which have become instrumental drivers of economic growth both in the U.S. and abroad. Accordingly, a solid patent portfolio can constitute a company’s biggest asset, and the CEO of a pharmaceutical company will think twice before spending millions of dollars on the clinical development of a novel drug that is not at least patent pending.
Given the critical role that intellectual property (IP) plays for businesses, there is a substantial need for individuals with both legal and technical expertise who help companies and innovation-savvy nonprofit organizations obtain legal protection for their technically complex ideas. These individuals are patent attorneys and patent agents, who engage in an artful argumentative dance with national patent offices to obtain the most extensive legal protection for their clients’ technologies. In addition to helping clients acquire patents (a process referred to as patent prosecution), IP professionals also advise on patent strategies, provide assessments of third-party patent portfolios in anticipation of mergers or acquisitions, and assert their client’s patent rights in court against alleged infringers.
With their strong scientific training, outstanding orientation to detail, and sharp analytical skills, PhD-level scientists are ideally suited for the work at the interface of law and science. Not surprisingly, patent law has become an increasingly popular career path for recent science graduates, even if this career trajectory is not always an obvious one.
“Patent law was not even on my radar,” reflects Janet M. MacLeod, JD, PhD, a seasoned patent attorney and leader of the Patent Prosecution & Transactions Practice at Fox Rothschild LLP, on her final months prior to graduating with a PhD in Molecular Pharmacology. Deterred by the perpetual battle for high-profile publications and limited amounts of research funding, Janet knew that she that did not want to pursue a career in academia. Instead, she focused her job search on research scientist positions in industry - until a post-doctoral fellow in her department suggested she meet with his wife, a scientist and patent attorney at a local boutique IP firm. That person spoke so passionately about working in patent law that Janet decided to give this career path a try - and eventually started as a technical advisor at the same law firm.
“I tremendously enjoyed the frequent exposure to cutting edge technologies,” says Janet about her experience as a technical advisor and then patent agent. Even though working as a patent agent can be a very fulfilling career choice, a rise through the ranks of a law firm eventually requires a law degree. Further, although technical advisors and patent agents can provide valuable support for patent litigation matters, only attorneys can represent clients in legal proceedings before state or federal courts.
Many law schools offer full- and part-time study options to aspiring patent attorneys. While a full-time program has the benefit of being shorter overall, it is more difficult to work and gain professional experience while in school. “Part-time programs have the advantage of attracting students with more professional expertise, which significantly enriches the law school experience,” recalls Janet, who chose the part-time route. Although PhD holders might have some competitive advantage in law school compared to students without a scientific background, “it was less an advantage than I thought,” remembers Janet. “The style of legal writing compared to scientific writing is quite different, so it’s important to be adaptable.”
Over the years, Janet’s adaptability has allowed her to serve her clients in a large variety of IP related matters pertaining to technologies in the pharmaceutical, biotechnology, and chemical arts. While Janet has been a partner at Fox Rothschild LLP for about seven years and has recently been named managing partner of the firm’s New York City office, it is quite common for IP professionals to move between law firms every couple of years. Reasons for these lateral transitions include conflicts of interest between existing and attractive, prospective clients, financial incentives, and a more interesting and diverse practice at the new firm. Especially for IP trainees that are still in the process of building their own practice, the move to a competitor might not always be planned: Senior partners seeking new professional challenges might encourage individuals on their existing team to join them at the new firm, and smaller IP boutique firms sometimes get absorbed by large general practice firms wishing to bolster their IP practice.
Even though a career in patent law is very rewarding, “it is not an easy profession,” warns Janet. “Patent professionals need to be experts in two very challenging fields - law and science.” As such, patent attorneys must constantly stay up to date with recent scientific developments to be able to effectively handle the cutting edge inventions their clients bring forward. But also the legal framework around patents changes frequently due to court decisions and new legislation, especially in the biotech and biosimilar realm. For example, a number of fairly recent Supreme Court decisions have introduced significant changes as to what inventions are considered patentable, particularly in relation to software, biomarkers, and products of nature (e.g. genes, proteins).
As for the lifestyle of patent attorneys and agents, most law firms have billable hour requirements that IP professional are expected to meet. Typically in the range of 1600 to 2100 hours per year, these billable hours usually only include time that can directly be billed to a client and do not cover other tasks such as administrative activities, professional development, training of junior team members etc.
Further, “there is a lot of pressure at the partner level to bring in business,” points Janet out. In fact, when Janet was transitioning from an associate to a partner position, the biggest challenge she faced was learning how to effectively win new clients. “Everyone has to figure out what works best for him or her,” she explains. One of the more obvious, yet very effective ways to retain clients is to consistently deliver an exceptional work product. Other strategies include increasing one’s visibility at the firm to promote internal referrals as well as public speaking at conferences and involvement in professional organizations to attract new clients. Over the years, Janet has used these tools to build a diverse group of clients, ranging from startups to large commercial entities and research institutions. Moreover, she takes great pride in teaching the associates on her team to develop these business skills themselves.
In addition to benefitting from partner-level mentors such as Janet, female attorneys at Fox Rothschild LLP also find support in form of the firm’s Women’s Initiative. This internal organization, which operates firm-wide beyond individual practice groups, is dedicated to advancing women attorneys both within the firm and in the legal community. As a result of the initiative’s efforts, Fox Rothschild LLP has recently been named one of the Best Law Firms for Women by Working Mother Media and Flex-Time Lawyers LLC.
In summary, patent law offers a rewarding and exciting career for scientists who enjoy working at the interface of science, law, and business. But regardless of what career path one pursues eventually, Janet has some final words of advice for facing professional challenges: “If something doesn’t work, it doesn’t mean it’s a failure.”
By Linda Foit, PhD
Given the critical role that intellectual property (IP) plays for businesses, there is a substantial need for individuals with both legal and technical expertise who help companies and innovation-savvy nonprofit organizations obtain legal protection for their technically complex ideas. These individuals are patent attorneys and patent agents, who engage in an artful argumentative dance with national patent offices to obtain the most extensive legal protection for their clients’ technologies. In addition to helping clients acquire patents (a process referred to as patent prosecution), IP professionals also advise on patent strategies, provide assessments of third-party patent portfolios in anticipation of mergers or acquisitions, and assert their client’s patent rights in court against alleged infringers.
With their strong scientific training, outstanding orientation to detail, and sharp analytical skills, PhD-level scientists are ideally suited for the work at the interface of law and science. Not surprisingly, patent law has become an increasingly popular career path for recent science graduates, even if this career trajectory is not always an obvious one.
“Patent law was not even on my radar,” reflects Janet M. MacLeod, JD, PhD, a seasoned patent attorney and leader of the Patent Prosecution & Transactions Practice at Fox Rothschild LLP, on her final months prior to graduating with a PhD in Molecular Pharmacology. Deterred by the perpetual battle for high-profile publications and limited amounts of research funding, Janet knew that she that did not want to pursue a career in academia. Instead, she focused her job search on research scientist positions in industry - until a post-doctoral fellow in her department suggested she meet with his wife, a scientist and patent attorney at a local boutique IP firm. That person spoke so passionately about working in patent law that Janet decided to give this career path a try - and eventually started as a technical advisor at the same law firm.
“I tremendously enjoyed the frequent exposure to cutting edge technologies,” says Janet about her experience as a technical advisor and then patent agent. Even though working as a patent agent can be a very fulfilling career choice, a rise through the ranks of a law firm eventually requires a law degree. Further, although technical advisors and patent agents can provide valuable support for patent litigation matters, only attorneys can represent clients in legal proceedings before state or federal courts.
Many law schools offer full- and part-time study options to aspiring patent attorneys. While a full-time program has the benefit of being shorter overall, it is more difficult to work and gain professional experience while in school. “Part-time programs have the advantage of attracting students with more professional expertise, which significantly enriches the law school experience,” recalls Janet, who chose the part-time route. Although PhD holders might have some competitive advantage in law school compared to students without a scientific background, “it was less an advantage than I thought,” remembers Janet. “The style of legal writing compared to scientific writing is quite different, so it’s important to be adaptable.”
Over the years, Janet’s adaptability has allowed her to serve her clients in a large variety of IP related matters pertaining to technologies in the pharmaceutical, biotechnology, and chemical arts. While Janet has been a partner at Fox Rothschild LLP for about seven years and has recently been named managing partner of the firm’s New York City office, it is quite common for IP professionals to move between law firms every couple of years. Reasons for these lateral transitions include conflicts of interest between existing and attractive, prospective clients, financial incentives, and a more interesting and diverse practice at the new firm. Especially for IP trainees that are still in the process of building their own practice, the move to a competitor might not always be planned: Senior partners seeking new professional challenges might encourage individuals on their existing team to join them at the new firm, and smaller IP boutique firms sometimes get absorbed by large general practice firms wishing to bolster their IP practice.
Even though a career in patent law is very rewarding, “it is not an easy profession,” warns Janet. “Patent professionals need to be experts in two very challenging fields - law and science.” As such, patent attorneys must constantly stay up to date with recent scientific developments to be able to effectively handle the cutting edge inventions their clients bring forward. But also the legal framework around patents changes frequently due to court decisions and new legislation, especially in the biotech and biosimilar realm. For example, a number of fairly recent Supreme Court decisions have introduced significant changes as to what inventions are considered patentable, particularly in relation to software, biomarkers, and products of nature (e.g. genes, proteins).
As for the lifestyle of patent attorneys and agents, most law firms have billable hour requirements that IP professional are expected to meet. Typically in the range of 1600 to 2100 hours per year, these billable hours usually only include time that can directly be billed to a client and do not cover other tasks such as administrative activities, professional development, training of junior team members etc.
Further, “there is a lot of pressure at the partner level to bring in business,” points Janet out. In fact, when Janet was transitioning from an associate to a partner position, the biggest challenge she faced was learning how to effectively win new clients. “Everyone has to figure out what works best for him or her,” she explains. One of the more obvious, yet very effective ways to retain clients is to consistently deliver an exceptional work product. Other strategies include increasing one’s visibility at the firm to promote internal referrals as well as public speaking at conferences and involvement in professional organizations to attract new clients. Over the years, Janet has used these tools to build a diverse group of clients, ranging from startups to large commercial entities and research institutions. Moreover, she takes great pride in teaching the associates on her team to develop these business skills themselves.
In addition to benefitting from partner-level mentors such as Janet, female attorneys at Fox Rothschild LLP also find support in form of the firm’s Women’s Initiative. This internal organization, which operates firm-wide beyond individual practice groups, is dedicated to advancing women attorneys both within the firm and in the legal community. As a result of the initiative’s efforts, Fox Rothschild LLP has recently been named one of the Best Law Firms for Women by Working Mother Media and Flex-Time Lawyers LLC.
In summary, patent law offers a rewarding and exciting career for scientists who enjoy working at the interface of science, law, and business. But regardless of what career path one pursues eventually, Janet has some final words of advice for facing professional challenges: “If something doesn’t work, it doesn’t mean it’s a failure.”
By Linda Foit, PhD