As companies develop new technologies, these can improve their own productivity or lead to new products for customers. Before these innovative inventions can come to market, though, they must be patented. Luckily for the scientists behind these new ideas, dedicated patent professionals bridge the fields of science and law.
When Esther Jimenez started graduate school at Rice University, becoming a patent agent was not on her radar. She was interested in applying crystallography to translational research, but she switched course and joined synthetic biologist Caroline Ajo-Franklin’s group. There, they were combining materials science, synthetic biology, and polymer science to engineer bacteria to produce specific compounds. With this same open mind, she began exploring different career opportunities in her fourth year of graduate school and fell in love with intellectual property. Today, Jimenez is a patent agent at Fletcher Yoder, bringing new ideas one step closer to commercialization.
How did you learn about this career?
While I was pretty sure that I wanted to stay at the bench after graduate school, I wanted to keep an open mind about my options. So, in my fourth year, I visited the university’s career center to learn about what else I could do. I explored venture capital and consulting, but intellectual property stood out to me because it was a way that I could use my background in science to help bring new technologies into the real world.
Esther Jimenez applied her skills in learning information and balancing tasks to preparing and defending patents for new innovations from clients across science disciplines.
Submitted by Esther Jimenez
I got an internship at my university’s office of technology transfer, where I worked with institutional inventors to develop their applications and highlight what was novel and valuable about their idea. After this, I completed an internship at the United States Patent and Trademark Office (USPTO), where I learned about the role of a patent examiner, which focuses on reviewing applications for compliance with existing laws and novelty from other existing technologies.
Ultimately, I liked working with inventors and hearing their passion for their inventions. I reached out to alumni from my graduate and undergraduate universities who had gone into intellectual property for informational interviews to talk about their roles. I also attended a career fair at my university and actually met a recruiter for Fletcher Yoder, where I ultimately applied and got hired, so I was able to talk to them about what they did then.
What do you do as a patent agent?
As a patent agent, I meet with inventors to learn about their invention or technology, understand what makes it unique, and help them prepare their patent application. At Fletcher Yoder, many of our clients are corporations developing a variety of technologies across scientific disciplines. After inventors submit their application, I help prosecute the patent, where I defend the novelty of a proposed invention to the USPTO patent examiner. For example, based on what the examiner said, I may identify areas that we need to explain better to emphasize the technology’s novelty. If the examiner uses examples of existing inventions, I will review them and identify where my client’s proposal is distinct.
When I first started at this firm, I had not passed the USPTO patent bar exam, so I was a technical advisor. In this position, I assisted my team with many of these tasks, but now I can represent my own clients.
Aside from helping to bring new technologies to market, I really enjoy learning about different scientific advancements. Our law firm has a wide range of clients, so I’ve worked on everything from life sciences to the oil and gas industry. I also like how I have a lot of variety in what I do every day. I feel like my PhD research gave me a lot of experience in ingesting a lot of information rapidly while also managing several projects at once, and that is very similar to what I do now.
What advice do you have for trainees interested in intellectual property?
While I feel like my interdisciplinary PhD prepared me with a lot of useful soft skills, learning the legal writing and law elements were a big hurdle when I first started. So, I don’t recommend this as anyone’s back up. However, if someone is interested in intellectual property, I think that networking to talk to people about their role or what their firm does can be really helpful. They can also reach out to firms to see if they can get an internship or contact their university’s technology transfer office to see if this is something that they would like doing.
This interview has been edited for length and clarity.
