Patent Law for PhDs

BTI’s Postgraduate Society explored intellectual property law with attorney—and former biochemist and cell biologist —Elysa Goldberg, at a recent professional development session.

Goldberg is an attorney at the international Greenberg Traurig LLP., located in Florham Park, New Jersey who specializes in intellectual property (IP), focusing on patent law. Her talk was one in a series of seminars that the Postgraduate Society hosts to discuss alternative careers for Ph.D.s. She answered a variety of questions, including, “Can you patent a gene?” Her response: No, not if the gene is naturally occurring. And went on to describe how she became a patent attorney.

“A patent attorney embraces the nexus of technology, law and business,” said Goldberg. “Ultimately, patents protect innovations and allow inventors to capitalize on their innovations, so the inventors can continue to create new and amazing things.”

Goldberg followed a non-traditional path to patent law. As an undergraduate, she studied biology and music at Vassar College, spending many hours at the lab bench and piano bench. She commenced her graduate studies in the Biochemistry, Molecular, and Cell Biology program at Cornell University, and earned her doctorate in Bill Brown’s laboratory studying intracellular trafficking and lipid droplet metabolism. She characterized a protein that metabolizes the triglycerides in lipid droplets. As she presented her findings at conferences, she found that she enjoyed convincing the audience that lipid metabolism deserved recognition and funding. She realized that her skill set was well suited to a career in patent law, and so, she left the bench for the bar.

She studied law at Fordham University and after graduation, gained experience at law firms and at a university technology transfer office.

As a patent attorney, she does a lot of writing: drafting patent applications, responses to the U.S. Patent Office and opinions on whether a technology is patentable.

Goldberg encourages experienced scientists to consider patent law as a career option, because scientists often have hands-on experience with the technologies that companies and institutions seek to patent, and the research skills to understand unfamiliar ideas. Scientists interested in intellectual property can pursue a career as a patent attorney, a patent agent, an IP paralegal, a licensing manager, patent examiner or an IP strategist for a start-up company.

“This area of work is an excellent alternative career path for BTI scientists and Elysa did a great job helping the PGS learn about this exciting field of law,” said BTI Director of Technology Transfer Paul Debbie. “Technology transfer is key to BTI’s mission and protecting our technology is an important part of that process. Having patent attorneys who understand the science behind the technology is extremely important.”