From PhD to Patent Law: An Interview with Wilson Sonsini
A variety of career paths exist for PhD students upon graduation. One of these options is to pursue patent law, but what exactly does this transition from the hard sciences to law entail? To learn more about how to transition into a position at a law firm after a PhD, I talked with Julia Minitti and Joy Wang from Wilson Sonsini. Both Julia and Joy are PhD scientists by training; however, Julia is a partner, and Joy is a patent agent. Hearing from both of these perspectives was invaluable in learning more about the different stages of a patent lawyer’s career.
Wilson Sonsini is a law firm located in Palo Alto with a deep history of supporting founders in the tech and biotech sectors. For the purposes of this interview, we focused on the sector of Wilson Sonsini that assists biotech founders in filing for and securing patents for their technologies.
Below are excerpts from our conversation in which I ask Julia and Joy about what it takes to successfully transition from academia to a career in patent law.
Logan: Can you introduce me to Wilson Sonsini?
Julia: We are a large general practice firm that grew up in Silicon Valley. We were involved in the earliest days of Apple and Google and taking them public. We were a very tech-focused firm. In the last 10-15 years, we have built out our life sciences practice. Now, we are about 40% focused on life sciences. Scientists are a part of a subgroup of the firm called the Patents and Innovations group, and that group is in charge of helping companies secure intellectual property.
Logan: How did you both end up at Wilson Sonsini?
Joy: During my PhD at Berkeley, I went to several patent law career panels, and hearing from and talking to patent agents and attorneys cemented my decision to transition to this field. A lot of what they said they liked about patent law really resonated with me: strategically thinking about the science, building logical arguments for why a certain technology is inventive, and helping companies build their IP portfolio and make key decisions. During the career panels, people often compared their work to solving a puzzle or detective work. They said there is never a boring day, and you are constantly learning about the cutting edge of biotech. What drew me to Wilson Sonsini was the size of the patent group and the expertise in biotech. It’s really great to be able to work with people with different areas of expertise in the space. If I ever have a question about a particular technology, there’s always someone I can go to to talk about it.
Julia: Right out of my PhD, I hadn’t passed the patent bar and did not have any law experience, so I started working as a technical specialist at a law firm in Boston. I worked for a bit before taking the patent bar. The patent bar is a test administered by the U.S. Patent and Trademark Office that lets you interact with the patent office, and really only scientists and engineers can take the test. Then, the firm paid for me to go to law school, and I continued to work as I went to law school in the evenings. Eventually, I moved out here and continued to work with my Boston-based firm. I thought that if I was going to be in Silicon Valley, I should take advantage of working with the newest, most exciting technology in the life sciences, and that was being done at Wilson Sonsini. Their clients were the most innovative, coming up with the most exciting technologies, and it gave me a chance to work with smaller companies since my previous work was mainly with more established companies.
Logan: Joy, how did you prepare for a career in patent law while still in grad school?
Joy: The last couple of years of grad school, I started studying for the patent bar, and then I took the exam. Around the same time, I was applying for jobs. I did informational interviews because it allows you to talk to people in the field and get a sense of whether this is something you’re actually interested in. I did that with a bunch of firms and saw what they each were like, and that helped a lot. I eventually came to Wilson Sonsini and have been working for a bit more than a year as a patent agent.
Julia: I met Joy at an information session, and I remember that she asked great questions and had definitely done her homework. Some people apply to these positions after their PhD because they just want to try something new, but it was clear that Joy was specifically interested in patent law.
Logan: When do you have to take the patent bar?
Julia: We support taking the patent bar before your start date at Wilson. We will interview you first and if we think you are a good fit for our group, we will give you an offer and pay to set you up with a patent bar training course. The reason we do this is that it takes time to study, so it’s better to prepare and take the test before you get busy with work. Once you pass the patent bar, we set up your start date at the firm.
Logan: What does a typical day look like for you?
Joy: I usually have a priority list of different action items from the day before, and I’m constantly updating the list based on new items that pop up. Examples of projects can include doing landscape searches on a particular technology, drafting new applications, and crafting arguments on why a certain invention is new and inventive for a response to the Patent Office. Sometimes we even have Examiner interviews where we speak to the Patent Examiner and make our arguments.
I work with a number of different clients, and for every client, I work on a small team of 3-5 people. Usually the teams have a partner, an associate, and an agent, and we will meet on a regular basis to discuss strategy.
Logan: What are some of the main similarities and differences between being a PhD student and working in patent law?
Joy: In terms of similarities, a lot of the skills that I developed during my PhD are very, very useful here, especially the analytical skills - reading papers and understanding the science, looking at figures and understanding where the data comes from. Since a lot of my work is drafting applications and arguing for a technology, it would be hard to do if I didn’t understand the nuances of the technology. When talking with scientists, it’s really helpful when you can speak in the same scientific language.
The main difference is the breadth of science that is covered. In a PhD, you are an expert in a very narrow space, but here, you are working with many different clients in different areas. Another main difference is the number of projects and deadlines on my plate at any given time. I have to think about organization differently. In a PhD, you’re really setting your own deadlines in terms of when you want to do experiments, and you can push things off if needed. Here, we have a lot of hard deadlines, and we have to be able to keep track of them all.
Logan: What are you looking for in PhD applicants?
Julia: We are looking at candidates with strong technical backgrounds in the area you focused on during your PhD. We also need to make sure you’re a good communicator - explain what you did during your PhD in a way that’s comprehensible to a variety of audiences, e.g., inventors, patent examiners. Being a TA or a tutor can help hone your communication skills. It’s important that you are interested in the position and express that to us in a genuine way, and do your homework on the firm and the field.
Logan: What if I’m interested in patent law but hesitant about making that transition?
Julia: There are a few areas where we see hesitancy in entering this field. For people who love bench science and want to be there day in, day out, then patent law may not be the right career for them. I really liked thinking about the data and telling the story, and those analytical skills are what we do every day in patent law. So it is definitely dependent upon the person and their interests. But I will say that if you are hesitant about leaving science, that is not the case - I know more areas of science than I have ever known before. Going to law school can be scary for some people, but learning the skills and getting a deeper understanding of the law will be essential to advancing in the job. There’s also no strict timeline - if you are doing good work as a patent agent, you can keep on doing that. Also, law school is very different from grad school. Law school is more like undergrad where you take a class and take a test, and then you’re done. It’s much more predictable. Scientific writing and law writing are both very formulaic, so there are also some skills that can be directly translated.
Logan: How do you support patent agents through law school?
Julia: We have a great program called the Patent Agent Law School (or PALS) Program that supports patent agents through law school. Agents work a reduced workload while attending law school which enables the agent to grow their skills in patent prosecution while obtaining their law degree. In addition to monetary support of agents in the form of law school tuition coverage and of course salary, we also support agents in their career development. A large percentage of the agents and attorneys in our group are members of PALS or alumni of PALS which provides institutional knowledge, camaraderie, and support for our agents. We support law schools near our offices, including in New York, Boston, Palo Alto, San Francisco, San Diego, and D.C.
Logan: What’s one thing that you would like the Stanford community to remember about Wilson Sonsini?
Julia: Wilson Sonsini works with the most innovative life sciences companies in the world and plays an instrumental role in moving new technologies such as life-saving therapeutics to market. As a scientist there are few other places where you can get insight into and help advance so many diverse technological advances in the life sciences.
Joy: We are working with the very cutting edge of biotechnology and provide strategy to companies in building their IP portfolio.
Stanford Biotech Group would like to thank Julia and Joy for their time and valuable answers to our questions. We would also like to thank Wilson Sonsini for being an official partner of our group. If you would like to learn more about Wilson Sonsini or explore their career opportunities, you can visit their website here.
