Law evolves with growth of biotechnology

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”I was initially turned down on my application because they felt a biology degree was not enough hard science to take the exam,” said Borun, pointing out that the technology inventions being patented at that time were of the mechanical, electrical, and small-molecule chemistry sort.

David W. Clough (left) of Howrey and Kevin E. Noonan of McDonnell, Boehnen, Hulbert & Berghoff are former scientists who have long made biotechnology intellectual property law their focus.

Biotechnology as an industry has come a long way since then. So has the practice of biotechnology-related intellectual property law, described by practitioners as a robust practice area where a background in the biological sciences — such as microbiology, immunology, or molecular biology — has become the standard.

”The one thing about this is, the science is very fascinating, very detailed,” McNicholas said. ”You want your lawyers to be able to jump into that immediately when you’re writing, analyzing, defending, or challenging patents. It’s nice to have that combination of expertise in one person.”

Armed with a doctorate degree in microbiology and immunology, and a master’s degree in biochemistry, McNicholas is part of the Chicago community’s first crop of scientists-turned-lawyers who made biotechnology intellectual property a focus after the industry got started.

In her more than 20 years in practice, she said she has witnessed the coming of age of a fascinating industry that is still relatively young for a transformative technology.

”Every day is more exciting than the day before,” McNicholas said. ”The industry is just incredible. The law is changing all the time; science is changing all the time. There is always something new, and if it’s not on one side it’s on the other.”

At many law firms, biotech patent lawyers got their start as technical advisers by day and law school students by night, as firms tooled up their IP practice groups, bringing in people with advanced degrees or industry experience in biotechnology-related fields.

At intellectual property boutique McDonnell Boehnen Hulbert & Berghoff, 26 attorneys have advanced degrees, most of them in biotechnology fields, McDonnell said.

”Even through the ’80s, there weren’t really a lot of people who had a lot of experience in it [biotech patent law]. For a long time, it was under-resourced, yet the science was really growing. There was big investment in these technologies,” McDonnell said.

‘The hottest sub-domain’

Today, practitioners and recruiters said, the demand for IP lawyers with backgrounds in biotechnology fields remains strong.

”There’s a steady, continuous need for people who can sit down with a scientist and really talk their language,” said Kevin E. Noonan, a former molecular biologist and a partner at McDonnell Boehnen Hulbert & Berghoff, who handles patent issues for biotech companies, as well as research universities working with the technology.

”Biotechnology is still one of those areas where patents are really important,” Noonan said. ”As the science and as the technology has matured, you have a different kind of environment, but you have a very lawyer-friendly environment for biotech firms.”

Noonan, who is a founding author of the biotech patent law blog, www.patentdocs.us, is also an adjunct professor at The John Marshall Law School and at DePaul University College of Law, where he teaches a course in biotechnology patent law.

”It’s really a booming subfield of IP and patent practice,” said Richard S. Gruner, director of the Center for Intellectual Property Law at The John Marshall Law School. ”There’s a definite need for more lawyers in this area, whether they have PhDs or other biotechnology training. We feel, and I think the employers feel, they’d like to see a lot more graduates with this kind of training.”

At John Marshall, Gruner said, ”We’re certainly pursuing biotechnology-trained individuals.

”It’s clear that the biotechnology field within patent law is probably the hottest sub-domain. The need for additional patent attorneys is particularly strong,” he said. ”But that’s reflective of the fact that there are so many portions of the biotech field that are really in breakthrough periods. There’s just a tremendous amount of new activity and potential applications.”

Noonan said biotech patent law is a viable alternative career path for the right sort of person with a background in the related science.

”If you’re verbal, if you like to write, talk about, think about science — for somebody with that mindset, it’s a very viable thing to do,” he said.

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