From PhD to Patent Agent

Cory Ellison graduated from the University of California, Davis with a PhD in Plant Biology. He now works as a Patent Agent at Morrison & Foerster. Below is Part 1 of our interview with him.

BA: How and why did you decide to leave academia?

Cory: I think it’s important to emphasize that each scientist has particular personality traits, skills, interests, and/or life goals that may or may not sync with a career in academia. That being said, I started asking myself tough questions about a future in academia pretty early on in graduate school. I loved that academia was so deeply immersed in the science, but I could not shake what felt like a relative lack of structure in the system and a commitment to a relatively narrow area of research for the rest of my career. What was never a question was that I loved the science, and although I didn’t think a career in academia was a good long-term fit for me, I nonetheless wanted to pursue a career that would keep me connected to the science.

BA: Did your academic advisor support your decision to pursue a non-academic option?

Cory MOFOCory: My academic advisor and my thesis committee were supportive of my decision. I was very lucky in that my mentors at UC Davis were just so awesome. Different people will of course have different relationships with their advisor and mentors, but I would encourage discussing your plans with these individuals. Even if every PhD scientist wanted to stay in academia, for structural reasons alone, this is not possible. Advisors are aware of this and thus should be open to discussing other options with their students.

BA: How did you go about the job search?

Cory: I started looking more closely at patent law by reading online materials about the field, which were typically authored by scientists who were now working as patent practitioners. Science in particular has published multiple career focus articles that are specific to patent law and opportunities for scientists in this field. Eventually I contacted the author of one of these articles and had a one-on-one conversation about his experiences, which was incredibly informative. During the course of my search, I found out that Morrison & Foerster was offering an internship program and quickly applied for one of the positions.

BA: What was the process of applying to the job you have now?

Cory: I actually applied to Morrison & Foerster through the patent group’s internship program, which was being offered to graduate students who were nearing completion of their graduate program. The process for applying to the internship position is the same as applying for any other entry-level position in the patent group. I submitted a cover letter, my resume, a writing sample, and my academic transcripts. This was later followed by a series of phone interviews, several writing exercises, and finally a half-day, in-person interview at the firm.

BA: How did you assess company culture before taking the job?

Cory: Learning as much as you can about company culture is very important. Often a company’s website will have helpful information, and this is where I started. However, I think there is no substitute for actually speaking with someone who works at or has worked at the MorrisonFoerster_Logo_BLK_lrgcompany. I was able to speak with multiple people who have spent time at Morrison & Foerster and they were very helpful with giving me an idea of the culture.

BA: What kinds of fears/doubts did you have and were these verified when you began working?

Cory: In the beginning I was nervous that I might feel out of place as a scientist at a law firm, but these concerns didn’t last long. It was clear to me that even though I was away from the bench, I was still connected to the science and using the same critical thinking skills that I used in the lab every day.

BA: Was the transition difficult?

Cory: The transition from academic research to patent law has a learning curve. I think it’s common for scientists entering this profession to find familiarity in the scientific aspects of this work, while the legal aspects are usually completely new and thus take some time to understand.

BA: What have you found most useful about your PhD training in your current job?

Cory: I think the critical thinking and problem solving skills are invaluable assets in this line of work.

BA: Tell us more about working in patent law. What does your job entail?

Cory: Generally speaking, my job entails assisting our clients with their intellectual property matters. This includes reviewing invention disclosure materials, performing assessments on patentability, drafting patent applications, and prosecuting patent applications before the United States Patent & Trademark Office (USPTO). Patent prosecution refers to the back-and-forth interactions between a client’s patent counsel and the patent office when trying to obtain a patent. A client’s IP matters may extend beyond the USPTO and thus I also assist with the prosecution of foreign patent applications in conjunction with foreign patent counsel. I think it’s also important to note that many IP projects I work on are not directly related to patents. For example, I also assist with reviewing technologies that a client may be interested in for a variety of reasons, such as potential collaboration or investment opportunities.

BA: What does a typical day look like for you? Is there a typical day?

Cory: One of the best parts about this job is that there really is no typical day. Often I will have a variety of projects in the pipeline and I can prioritize how I move these forward. Not only do I work on a variety of different projects, but the subject matter of these projects may also be different. I really enjoy this aspect, as I get broad exposure to all kinds of topics and fields in the life sciences. As an example, I may spend some time in the morning on a phone call with an inventor discussing their genomic technology, and in the afternoon I may be working on a patent application related to biofuel production.

BA: What kind of abilities are necessary for your job?

Cory: First, I would say that strong reading and writing skills are a must, as a large portion of the work we do involves these activities. Second, being flexible/adaptable to changing circumstances is very important. Third, you should have a love for the science/technology. Our clients are excited about their technologies and we should be able to join them in the excitement.

BA: What advice would you give to someone interested in your job?

Cory: I would encourage anyone who is interested in this line of work to talk to someone who already works in this field. There are of course lots of online resources to help you get your search started, but I don’t think there is any substitute to getting a first-hand view of patent law from someone already doing this in some shape or form.

(End of Part 1)