IN PERSON: PETER BROWN, PATENT ATTORNEY PENDING

BACK TO LATEST MEDIA

I first decided to become a scientist because I had always been interested in unraveling the complexities of human disease to facilitate the development of new therapies. However, it soon became apparent that almost any scientific research with an industrial application--not just medical applications--grabbed my attention.

Now is an exciting time for biomedical science. Rapid technological advancement has prompted genomic sequencing projects and the like to produce masses of data with invaluable secrets waiting to be revealed. So, scientific research could have provided the opportunity to really leave my mark in this world. Of course, this is almost every scientist’s dream.

In my doctoral studies at the University of Auckland, I made a substantial discovery in diabetes research. To cut a 5-year story short, I solved the detailed atomic structure of an important enzyme called MIOX. In people with type 2 diabetes, MIOX activity is abnormally high; this is believed to be one of the major causes of insulin insensitivity. We hope the structure of the MIOX active site will allow us to design compounds that bind and inhibit it in order to restore insulin signalling in type 2 diabetes. This research made me a runner-up for the MacDiarmid Young Scientist of the Year Award in 2007.

So why did I decide to change careers, given the positive outlook of the profession and my years of arduous training?

I was serendipitously introduced to the IP world in the 4th year of my Ph.D. when we filed a patent application to protect the MIOX structure for drug development. It was fantastic to witness lab research progress from a mere concept to a discovery that could potentially improve the lives of millions of diabetics down the line. As all scientists know, it is tempting to publish the results quickly to prevent being "scooped" by any competitors. However, amid the excitement, we knew IP protection was needed before we published our results to the scientific community. Ultimately, this step may be critical to the potential impact of the research. This experience opened a brand-new door for me: I saw that a career as a patent attorney would truly allow me to contribute to the progression of science into the marketplace.

Just like biomedical research, I could clearly see that there has never been a better time to be involved in the commercialization of science. In New Zealand, greater emphasis is now being placed on IP as we acknowledge that modern science is much more than blue-sky discovery. In many cases, research needs to translate into useful applications; yet without IP protection, there is little financial motivation for organizations to discover, let alone go to the trouble and expense to develop, engineer, and market, a new product or service. Even university research institutes are weighing IP more heavily these days; in the past, emphasis was placed almost entirely on scholarly research publications and teaching.

In early February 2008, I accepted a position as a patent-attorney-in-training. Getting a position in the profession was a fairly grueling task that required considerable determination and patience. In hindsight, these traits were no doubt taken into consideration as they translate to important characteristics needed for the job.

Now, my science background gives me sufficient understanding of the technical and theoretical aspects of scientists' inventions to enable me to prepare and defend their patent applications through the patent "prosecution" process.

I also help clients decide an appropriate IP-protection strategy, which depends on the invention and its potential market. In New Zealand, most of our products are destined for export, so an international approach is often necessary to gain the required overseas protection. Alternatively, if a client is resource-poor, a targeted approach toward key markets can be vital not only for IP protection but also for gaining interest from potential investors.

In my new role, the daily work--and even the science--varies widely, as my clients' inventions cover a range of scientific disciplines. This is in complete contrast to my research past, during which I often studied a particular topic in great depth. I find it particularly satisfying when I'm able to identify new applications for scientific inventions, essentially broadening the scope of the client's protection.

My work, of course, also requires a good knowledge of law. One of my jobs during the patenting process is to convince an examiner that a client's work is novel and inventive--something new compared with the "prior art"--using current legislation, relevant case law, and my scientific background. This provides a great opportunity to practice my debating skills, and I am, surprisingly, enjoying that challenge.

Further, I find that achievement can be more easily measured in IP protection than in scientific research. In science, I often felt there was little chance to gauge your achievement--often only measurable when your work is published. In the patent world, reaching targets such as drafting a patent, overcoming an examiner’s objections, or getting a patent application granted gives an almost daily sense of achievement. And, of course, part of your clients' commercial success can be attributed to your efforts.

Sure, as a patent attorney, the inventions are not your own. However, you do develop a sense of pride and accomplishment for an invention during the patenting process, which can take several years. I am involved with many patent applications, so the dynamic stream of work keeps me more than motivated.

Finally, in my new role, I am still right at the forefront of the discovery process. For me and many other scientists, this is undoubtedly the most exciting aspect of research. Now, I get to deal with novel ideas and discoveries on a daily basis.

I recently attended a lecture given by Nobel Prize winner Peter Agre that resonated with my experience. He emphasized that a scientist should not feel guilty for removing himself from the traditional role of lab work. Instead, we should seek a career that allows us to contribute best to scientific discovery, depending on our skills and interests.

No doubt, I have found my place.

This article appeared in the ‘In Person’ section of Science Careers magazine on 12 September 2008. An online version can be viewed at: http://sciencecareers.sciencemag.org/career_magazine/previous_issues/articles/2008_09_12/caredit.a0800136

By Peter Brown, Technical Advisor, James & Wells Intellectual Property