Meet Caitlin Mac Nair, Patent Scientist at Michael Best & Friedrich LLP



Describe your job and what you do on a day-to-day basis.

As a patent scientist (also called patent engineer, or patent agent for those that have passed the Patent Bar exam), I work as a liaison between inventors and the United States Patent Trademark Office (USPTO). Inventors come to us with an invention in biotechnology (such as a drug, an assay, etc.), and we help them draft a patent application and submit it to the USPTO. In response, the USPTO issues a correspondence called an office action, often listing rejections that need to be addressed before a patent can be issued. We then work with the client to develop strategies to address, and hopefully overcome, the rejections. This correspondence can continue for many years. Inventors can also choose to file the same patent application in a foreign country; since we are not licensed to practice patent law in foreign jurisdictions, we then work with patent agents in each country to file the application and respond to office actions that comply with the laws in that jurisdiction.

As a new patent scientist, drafting patent applications and strategizing responses to the USPTO is challenging. Therefore my daily tasks vary from those with more experience. Since months often pass between correspondences, when a new office action comes in my first job is to review the case in its entirety. I review the patent application, the references that have been cited against the application, and the prosecution history (previous correspondence with the USPTO). I then meet with a patent attorney, and help answer their questions so that they can develop a strategy to respond to the office action. Once we have a strategy, I write up the response. Experienced patent agents often work directly with clients, and develop their own strategy for responses.

How did you get your first job out of academia?

Even before graduate school, I knew that a long-term career in research would not be my best fit, so I was always on the lookout for alternative careers. A graduate classmate of mine casually mentioned that “patent agents” work in patent law without a law degree; it sounded pretty awesome! I asked Google if there were any patent agents with bioscience degrees in Madison, and over the course of about 6 months I contacted 6 patent agents and 2 patent attorneys, all of who agreed to speak with me. The more people I met with, the more I realized that a patent agent required all the same skills that I thought I exceled at (scientific writing, communication, organization), and I realized this was my new dream job. I kept in touch, and as my Ph.D. graduation approached, I reached out to my contacts and asked for feedback on my resume so that I could apply to jobs. This ended up leading to an interview for an unlisted job, and I was offered a position as a patent scientist almost a year prior to my graduation date.

Tell us about your academic background

I came to the University of Wisconsin – Madison to study biochemistry and criminal justice, with the intention of becoming a forensic scientist. I struggled with the courses and never really found my niche, and to make a long story short, I decided to postpone a big decision like graduate school until I really knew what I wanted. I got a job and spent 2 years working at an AIDS vaccine research lab. Taking time off was perfect for me. My job reaffirmed my love for science, and I realized that my passion was actually in molecular biology (more specifically viral immunology). I decided to pursue my doctorate, and earned my Ph.D. in cellular and molecular pathology from the University of Wisconsin – Madison.

What is one piece of advice you would give to someone looking for a job now?

Start early. I started conducting informational interviews almost 2 years prior to my graduation date. I think part of the reason so many people agreed to speak with me was because I wasn’t asking for a job; I just wanted information. Even by requesting feedback on my resume, I was still just asking for information. A connection should see you as a person that is passionate about a career, not as a person who just wants a job.

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