By Cliff Collins
Everyone loves a winner. And right now, the winning combination is a J.D. degree coupled with some other advanced degree in science or engineering.
In most cases, the degrees came years apart, as individuals and the marketplace changed their minds about what they needed and wanted. Engineers, and especially scientists, who also get their law degrees, either before or after practicing in their respective fields, are in demand by the large, full-service firms.
"We are increasingly seeing law firms asking us for lawyers with scientific backgrounds and ‘no less than a Ph.D.,’" says lawyer recruiter Linda Green Pierce, president of Northwest Legal Search Inc. in Portland. "Bioscience lawyers are now the sought-after commodity. Most of our larger Portland firms are aspiring to hire these people at some point, but aren’t quite there yet. "
Engineer lawyers — especially chemical engineers and mechanical engineers — are more common than scientist lawyers, she says, but not as many electrical and computer science engineer lawyers are available as the market demands, she adds.
"The client base is becoming much more technical every year," says Barry L. Davison, Ph.D., a biochemist and molecular biologist who is a lawyer with Davis Wright Tremaine’s Seattle office. "There is a general need for people with a scientific and technical background. We’re involved with helping clients procure and enforce intellectual property." What drives such companies is the quality of the product; and that often depends on attorneys with relevant advanced degrees and experience who can work with the innovators in the companies, he says.
"Fifteen to 20 years ago, technology companies were considered a niche market," says Al AuYeung, co-chairman of the intellectual property practice group at Schwabe, Williamson & Wyatt’s Portland and Seattle offices. "Now the economy has changed. Business is technology, technology is business."
Several factors are behind the trend for specialized training. First, clients in need of intellectual property law and patent law want to deal with attorneys who can comprehend what the companies are producing, whether that commodity is a medical device, a drug or a computer chip. Once the client obtains a patent, it has to be enforced, which also requires specialized knowledge. "So many of these companies are so technical that their worth is significantly or substantially represented by the intellectual property," says Davison.
"Some clients and universities have struggled with lawyers who don’t understand the science," says Jane E.R. Potter, Ph.D., a biochemist and lawyer for Davis Wright Tremaine’s Seattle office. When clients see readily that the lawyer can speak their language, "it opens the floodgate for communication, so you get a much better patent. It enhances the whole process of getting inventions out of the lab into the world."
Simply performing the work itself requires technical know-how. A large percentage of the examiners in the U.S. Patent and Trademark Office are scientists and engineers who hold advanced degrees, according to the patent office. "We need to be able to communicate with them," points out Potter.
In addition, investors and firms looking to acquire or merge with others depend on scientist lawyers to evaluate the worth of inventions, adds Davison.
Many products such as medical devices must receive federal Food and Drug Administration approval before they can go to market, a task that requires "specialized expertise, because of the extra regulations that apply," says Carol A. Pratt, Ph.D., a neuroscientist attorney with Preston Gates Ellis in Portland. "In the patent area, clients expect an M.D. or Ph.D." degree in their lawyers, she says. "On the regulatory side, having an advanced degree or industry experience is very helpful."
Traditionally, specialized boutique firms such as Klarquist Sparkman in Portland provided most patent law services. William D. Noonan, M.D., with Klarquist Sparkman, was "the first doctoral level biotech attorney in Oregon," he says. A slowed economy and a highly competitive environment for high-quality research funding translated into an increased supply of scientist lawyers; but clients who need patent lawyers are "being more choosy," he says. Many won’t consider retaining an attorney unless he or she holds a doctorate in the actual field the company works in, Noonan says.
A lot of lawyers with advanced degrees in science send him CVs, but finding candidates who make good lawyers is always a challenge, he admits. "It’s difficult to find people who have been scientists," Noonan explains. Scientists "look at the world differently," with a reductionist way of evaluating data. "Attorneys have to generalize from the data." Further, scientists may not have needed to possess a high level of writing skill in their previous jobs, but the ability to communicate well in writing is essential in patent law, he says. "That is one of the challenges" of finding good candidates.
One aspect that can make the transition challenging is that "in an academic environment, people have more flexibility with their time," Davis Wright’s Davison says. In contrast, the "law is very much a service business. You need to be very responsive, and cognizant of that. That is a cultural shift that a lot of scientists have trouble dealing with."
A general trend over the past five years is for large, full-service firms to move into life sciences, intellectual property and patent law. They no longer are willing to cede that work to the boutiques. And their members tout the benefits for clients of having all legal services in one shop rather than needing to use a separate patent firm, a corporate firm and perhaps an FDA lawyer or consultant.
Often the easiest way to accomplish this is to buy up boutique firms that specialize in those areas. That’s what happened with Al AuYeung and Schwabe Williamson. AuYeung’s former five-person boutique intellectual property firm was bought out in 2002 by Schwabe Williamson. "It’s a quick way for a general firm to form a core group," he says. A buyout or merger gives the general firm not just the boutique’s clients, but also allows it to "acquire the business process — how things are done," AuYeung explains. "They don’t have to reinvent the wheel."
Moreover, patent law specifically is a highly specialized area. Finding such specialists is hard. According to AuYeung, only about 40,000 attorneys in the United States practice patent law. Patent attorneys must take and pass a national bar exam administered by the U.S. Patent and Trademark Office.
Attorneys with additional advanced degrees come to the law in different ways. Davis Wright’s Potter was a research scientist. Davison worked in a biotechnology company for eight years before becoming a lawyer. Prior to becoming an intellectual property attorney, AuYeung worked for over a decade as a software engineer and software development manager. He holds a master of science degree from Stanford University and a master’s degree in business from the University of California, Berkeley. Noonan practiced law for several years before going to medical school to get his M.D.
Before entering the legal field, Pratt was a neuroscientist at the National Institutes of Health, Purdue University and the Neurological Sciences Institute in Portland. She spent about 15 years in the field, and "anticipated being a neuroscientist the rest of my life," she says. But Pratt became frustrated by the "snail’s pace of getting research into medical practice. The information sits in academic journals." When bioscience started becoming a business — one requiring specialized legal advice — she went to law school, hoping to become "involved in the translation" of science to the realm of practical use in health care.
Pratt is enthusiastic that "big, general-practice law firms are interested in developing this expertise. Every day in the paper there are two or three articles that have to do with life sciences. It’s something we all care about. I get to work with companies that are on the cutting edge. It’s an extremely rewarding area to be involved in right now."
Her regulatory practice focuses on FDA law, medical research and the federal HIPAA law governing patient privacy and the protection of medical information. She provides strategic advice to clients such as domestic and foreign manufacturers, and distributors and inventors of medical and health products, including pharmaceutical, biotech, medical devices, dietary supplement and cosmetic companies. She also represents entities involved in medical research, including academic medical centers, nonprofit and contract research organizations, institutional review boards and health care providers.
Pratt says she is the only attorney in the Pacific Northwest and one of only a few on the West Coast who specialize in FDA regulatory law. After joining Preston Gates this fall, she has been keeping her eye out for lawyers who have science backgrounds or experience in the industry. Typically, attorneys with this expertise "think it is only used in patent law, not the regulatory side," she notes.
"Life sciences is a relatively new area of industry. The development historically happened in academia. Now that it’s happening in the private sector, it has created the need" for legal advice.
Pratt fears the regulatory side of law will continue to be short of attorneys until the region’s law schools add it to their curriculum. "We don’t teach FDA law. These are not areas we are covering in the bar." She believes the legal field needs to develop a pipeline for training new lawyers in such specialties, owing to the widespread growth of biotech companies.
Seattle is fourth- or fifth-largest nationally in the biomedical field, with about 400 companies, compared to "maybe 80" in Oregon, she says. But the Beaver State is becoming more involved, as witnessed by Oregon Health & Science University’s major commitment to biotech in its planned campus in the South Waterfront development of downtown Portland.
ABOUT THE AUTHORS
Cliff Collins is a Portland-area freelance writer and frequent contributor to the Bulletin.
© 2004 Cliff Collins