When I grow up, I’ll be a… patent attorney

27 August, 2018

Do you have a knack for technology and love to argue a point? Then a career in patent law might be just the thing for you. In this second career portrait of the series “When I grow up, I’ll be a…”, KI alumna Joanna Applequist tells us what it takes to be a patent attorney, and how she went from lab bench to law books.

When Joanna first met her husband, she had no idea that encounter would change her career. It was 2004, and Steven – a scientist himself – was busy filing a patent application for an invention of his.

For Joanna, a young PhD student at the time, that was a real ‘a-ha’ moment. She didn’t know much about patenting, but she was deeply intrigued by the mix of legal, technical and scientific expertise it seemed to require – so much so, that she decided to make a career out of it.

“It suddenly dawned on me that it was what I should do,” Joanna recalls, “and I spent a lot of time pursuing that goal.” After much preparation, she eventually secured a job as associate patent attorney at AWA (formerly Awapatent), and has since moved on to another consultancy firm – Groth & Co – as a European patent attorney.

For the love of arguing

As a patent attorney, or patent consultant, Joanna helps inventors – guess what? – patent their inventions. She drafts applications, prosecutes them before the authorities, and provides clients with strategic business advice on how to best protect their intellectual property (IP) rights.

The most rewarding part of her job? Helping her clients reach their business goals, Joanna says. Part of the job is convincing patent authorities of the patentability of an invention.

“I love to argue!” Joanna exclaims with a smile. “I get paid to tell people in a very polite, structured and organized manner that they are completely wrong – it’s fun! At times, it can be frustrating too,” she admits, “but when you find a good strategy to argue your point and are finally able to convince the patent examiner, it’s quite rewarding.”

“I get paid to tell people in a very polite, structured and organized manner that they are completely wrong – it’s fun!

Writing, reading and thinking take up most of Joanna’s average workday, although she spends a considerable amount of time interacting with clients.

“To get the right level of protection and the best business solution for our clients, we need to understand both their invention and their business model,” Joanna explains.

For every invention, a patent attorney must decide which aspects can be protected. Since patents are geographically limited rights, it is important to know where the client and their competitors do their business, and therefore where the client’s rights need to be asserted. How much will patenting cost? When is the right time to patent the invention? Will the client’s commercial activities infringe any third-party rights? These are all questions a patent attorney must be prepared to answer.

With no manual to follow, everything is decided on a case-to-case basis and solutions adapted to the client’s needs, which is what makes it challenging and fun.

“It is a creative job,” Joanna points out. “We spend a lot of time thinking and engineering solutions.”

Tech-savvy communicators

When Joanna first joined AWA as a trainee, few of her fellow patent attorneys had a PhD. Although not strictly required to break into the IP field, the doctoral title does have its perks. The most obvious is the broad understanding of science and technology that comes with PhD studies.

“A good technological background is crucial for this job, as you have to be able to find the core of your client’s technology,” says Joanna.

That explains why most people get into the patenting world from a technical education, not a legal one. Most patent attorneys in Europe get their legal training on the job, and should rather have a degree in engineering, chemistry or molecular biology.

“Learning technology on the job is not that simple, it’s easier to do it the other way around,” Joanna explains. “We work within the legal realm, but our work is based on technology, so you must have that core understanding.”

And believe it or not, a PhD can come in handy for social reasons too.

“It is really good for contact with academic clients,” Joanna points out. “It allows you to understand the struggles of an academic researcher and inventor.”

The ideal patent attorney should be analytical and able to sift through mounds of information quickly – skills that come natural to scientists. The data and descriptions that come with inventions resemble scientific papers, and many of the documents cited against inventions are academic publications, so patent attorneys with a PhD in science will be comfortable analyzing such documents.

“A PhD allows you to understand the struggles of an academic researcher and inventor.

Another important skill Joanna brought with her from her PhD times is the ability to communicate. Patent attorneys spend a great deal of time writing documents, taking part in oral proceedings, and discussing with clients – so good writing and presentation skills are a must.

“As a PhD student, you write papers, teach courses, present at conferences and journal clubs… Those oral and written communication skills are definitely transferable,” says Joanna. “The language you use as a patent attorney is different, of course – but the ability to express yourself clearly is already there. All you need to do is learn the legal jargon.”

Although the convoluted language of patent applications took time to get to grips with, Joanna does appreciate its value now.

“It’s very important you express yourself correctly. You have to properly formulate the wording of a patent application, as well as the advice you give a client,” Joanna explains. “But you get used to it, and with time you appreciate why patent documents require such artificial and repetitive language.”

Learning the cryptic tongue of law was not the only challenge Joanna faced upon entering the patenting world. As a scientist, she had been free to reach out to peers and collaborators at any time, but as a budding patent attorney, she had to accept she couldn’t be as independent as she had been in academia.

And as much as she benefited from her technical background, she had to acknowledge she couldn’t be the technical expert any longer. In the patenting world, dwelling on things is a luxury that, she admits, she sometimes misses from academia.

“You simply don’t have time to dive into every subject as you did as a scientist,” she says. “Your time costs the client money, and some clients do not wish to pay for you to go deeper into the subject matter than required for the task.”

Nailing the job

Even before completing her PhD, Joanna had set eyes on AWA and sought to develop the skills to land a job there. She took university courses in entrepreneurship and intellectual property, and was admitted to the Mentor4Research program, where she was paired with a business mentor from the biotech world. Needless to say, she spent a lot of time networking, too.

“I would call people and ask them whether they wanted to meet me for lunch to talk about their job. Even if there was no immediate vacancy, I wanted to find out more,” she recalls. “It’s good if you have an acquaintance that can connect you, otherwise don’t be afraid to cold call.”

That preparation helped immensely, and took much of the guesswork out of the equation. By the time she was invited for an interview, Joanna had a pretty good idea of what the position would entail.

“I knew so much about the job, that when they asked me ‘What do you imagine a patent attorney does?’, I didn’t have to imagine,” she says.

In her opinion though, her greatest asset was her determination – and never taking no for an answer.

“At the interview, when they asked me what I would do if I didn’t get the job, I told them I’d work for their competitors,” she recalls with a smile.

As an associate patent attorney, Joanna took part in AWA’s trainee program for new employees – a fast-tracked schooling in patent attorney life. The course is given to 10-15 people every year, and involves several months of hands-on time in the office, sprinkled with lectures by senior attorneys.

“It’s a lot of hard work, but those years of training are rewarding,” says Joanna. “All that studying gives you a career boost, and makes you appreciate what you’re dealing with.”

Up the career ladder

About two years after joining AWA, Joanna enrolled in programs to prepare for the European Qualifying Examination, and has since joined the life science team at Groth & Co as a European patent attorney. With her new qualification, she is entitled to represent clients in European Patent Office proceedings.

“That’s an important career step, and requires passing both technical and legal exams,” Joanna points out.

Some patent attorneys go on to become senior attorneys or partners in their IP firm, but there are plenty of other options, too. Some opt for in-house counselling positions at pharma or biotech companies. Counsellors specialize in the company’s field of work, and often have prior experience from working at a law firm.

Another career option is to work as a patent examiner for a national authority or the European Patent Office, and examine the patentability of inventions. The role teaches both patent law and technical examination skills.

“As an examiner, you grant or refuse patent rights for inventions,” Joanna explains. “Many patent attorneys actually start off as examiners.”

Finally, there is the career option of IP coordinator – that’s the person who keeps track of IP assets, outsources proceedings to IP firms and interacts with patent attorneys. Not all companies have an IP coordinator, and in smaller ones the tasks are rarely enough for a full-time job, but the role “definitely exposes you to the patenting system, and to the way your company thinks strategically about IP,” Joanna remarks.

Know yourself

If you are serious about pursuing a career in patent law, Joanna recommends looking outside academia and learning about the IP business early on. There is no real need to embark on formal study courses, as most of the training occurs on the job anyway. But at the very least, walk over to the nearest bookstore and grab a book on the topic. It will help you get a feel for the job, and figure out whether it’s the right fit for you.

“I spent a lot of time learning about patent law before applying for jobs, but I got the required training during the trainee program – so knowing a little more than some of my fellow trainees didn’t give me much of a head start. But I was confident it was the career I wanted,” says Joanna.

“Be a little selfish and focus on your future, because your PhD supervisor is not going to do that for you.

Her most important piece of advice for anyone considering a career outside academia? Spend some time figuring out what your passion is. Take an evening course, read about other career options, and hone the skills you’ll need to chase your dream job.

“Be a little selfish and focus on your future – not just the progress of your research –because your PhD supervisor is not going to do that for you,” she says. “Stepping out into the non-academic world is not an easy feat, but devoting as little as ten percent of your time every day to pursuing your goal will go a long way.”

About Joanna Applequist

Joanna has worked as a patent attorney since 2011. After studying engineering biotechnology at Umeå University, she completed a PhD in developmental neurobiology and stem cell biology at Karolinska Institutet, followed by a short stint as a postdoc in neurobiology. She joined AWA as associate patent attorney in 2011, then Groth & Co as European patent attorney in 2017. Her areas of expertise include cell and molecular biology, biotechnology, genetics, stem cells and protein engineering. Find her on LinkedIn here.