- Give a brief overview of your organisation and role within it.
Xencor is a clinical-stage biopharmaceutical company developing engineered antibodies and cytokines for the treatment of patients with cancer and autoimmune diseases. I work in the Legal Team as Associate Director, Intellectual Property. My role is to manage, protect, and expand Xencor’s patent portfolio by: working closely with various internal groups (executive management, clinical development, and preclinical research and development) and outside counsel to identify and develop patentable intellectual property to strengthen and protect the company’s IP assets.
I provide support for internal clients, including management and members of research and development groups by advising on: IP risks and opportunities as well as patentability, prior art search, freedom-to-operate, infringement, competitive intelligence, and validity analyses; R&D transactional matters (e.g. confidential disclosure agreements and material transfer agreements); and business development matters (e.g. license agreements).
- Give a brief overview of your professional experience.
My journey is atypical for someone in intellectual property, but having spoken to others in the industry, atypical is somewhat typical so I’ll share my particular atypical journey. As I was finishing my PhD at the University of Manchester, I was recruited via LinkedIn by an IP law firm in Japan. It was a 3 year contract with the first 3-6 months focused on intense training. After the initial 6 months, I terminated my contract and returned to California. I was looking for a position in a patent firm, but Xencor just so happened to be looking for someone with a patent background to assist the scientific team and coordinate with outside counsel. For 3 years, I reported to a scientist and informally grew my IP knowledge through communication with outside counsel (while studying for and passing the patent bar on the side). After the third year, the company hired a general counsel who became my new boss. She exposed me to more of the legal side of things which added entire new dimensions to my work as I navigated and advised on IP provisions within agreements, contracts, and business deals.
- Why do you do your job?
First of all from a scientific perspective, working in IP provides the opportunity to be exposed to so much more science than working as a scientist. As a scientist, you have your projects which you dedicate all your time to and become the master of. You might have a sense of what the person next to you is working on as well, but you’re unlikely to know what the person 4 doors down from you works on. However working in intellectual property, you’re going to be exposed to what everyone is working on, as they’re all your clients, and it’s your job to protect all their IP.
The other “more important to me” reason I enjoy the field is that working in IP is like playing poker. In poker, you have to understand your hand, you have to understand the cards on the board, you have to understand the other players, and you have to always be looking and predicting steps ahead. In IP, you have to understand the science with all its nuances, you have to understand patent law with all its nuances, you have to understand what others are doing both with their science and with their corresponding IP, and you have to always be looking forward to and predicting what others might be doing with their IP in the future as well as how patent law might change.
When you put together a patent application, you have to consider all the foregoing. When you determine the implications of other parties’ patents, you have to consider all the foregoing. And most of the time, you simply have to accept that there’ll be imperfect information, but you’ll have to make the best decision at that time based on that imperfect information. My favourite part of the job is seeing things I planned and put into actions months or years ago pan out as I planned.
Personally, my least favourite part is human interaction which is a crucial part of this job; however having spoken to others, this is their favourite part of working in IP. In order to truly understand all the nuances of the science, you’re going to have to speak to the scientists, and the best way to get what you need from them is to build rapport with them over time.
"There are opportunities for highly skilled people from a range of backgrounds to the extent that you are willing and capable to stretch yourself outside of your background."
Dr. Eric Chang (Xencor Inc.)
- What is it about the industry that keeps you motivated?
The IP career ladder varies in different countries, and I can only speak to how it roughly works in the United States. In the US, technically all you need is a Bachelor’s degree in the relevant field. Practically, you’ll want either a PhD and/or an abundance of industrial experience. You can start as a Technical Specialist in a patent firm without any IP experience. Typically patent firms will provide you with training as well as the tools to pass the patent bar and register as a patent agent. There are those who stay a patent agent for the duration of their career and just grow in seniority. Others might choose to go to law school which is typically sponsored by the patent firm so that you work part time and study part time.
Once you become a lawyer, you are then also a patent attorney. While a patent attorney is literally just a patent agent with a law degree, you have more growth prospect that is typical of other kinds of lawyers (e.g. become a partner). The foregoing is the more typical route in a patent firm, there are also paths in-house, but they’re much more varied and not always pre-defined.
- What attributes would someone need to be successful in your function?
Problem solving, reading comprehension, and data analysis are the key skills that are required. The kind of person that would thrive is someone who likes to constantly learn new things and immediately apply it in creative ways, so really, the same characteristics of a good scientist. There are opportunities for highly skilled people from a range of backgrounds to the extent that you are willing and capable to stretch yourself to outside of your background.
- What would be your top tip for getting a role in your organisation/function?
My top tip for getting into the field is to do informational interviews with more people in the field. You really need to get more perspective to know what you’re getting yourself into, because it’s a very intense field (a very different kind of intensity than being a scientist entails). This also helps in the sense that networking is a crucial part of getting into the field. I get the sense that not all available positions are advertised, so it helps to know people in patent firms. Those folks you’re doing informational interviews with could also be your way in!
As an anecdote to the importance of networking, my direct report got her foot in the door by speaking to me at a Christmas party and expressing interest. Beyond having the appropriate scientific knowledge (e.g. if you’re applying to a patent group dealing mostly with antibodies, you need to understand antibodies), you typically don’t need any other particular knowledge to get started if you join a patent firm, as you’ll be trained on the fly. However, having strong writing and communication skills certainly is advantageous. Also, it really helps, at least in the US, to have publications, because without any patent experience, your publications are what you will be judged on.
"My top tip for getting into the field is to do informational interviews with more people in the field...networking is a crucial part of getting into the field."
Dr. Eric Chang (Xencor Inc.)
- Could you describe your recruitment process?
A prospective employee stands out if they’re a real problem solver. Tell me a real problem you’ve encountered before, why it was a problem, and how you solved it. Really focus on the “how” (and even sprinkle in some failed solutions and their “hows”, because you’re going to hit obstacles left, right, and center in IP, and you need to constantly roll with the punches and create solutions.
- Could you compare/contrast your current position with your time in academia? What skills (technical and transferable) do you think you brought with you and are valued in your current position?
The most important skill I obtained from academia that comes into play at work on a daily basis is the ability to critically assess data. Your scientific clients will show you their data and tell you what it means and why they’re excited, but it’s your job read between the lines and look beyond what’s exciting to them to figure out what else is there from a patentability perspective and how to turn all that into a cohesive story to form the basis of a strong patent application that hopefully issues as a patent and can be litigated when someone infringes.
- Any additional comments/tips?
I have no additional tips, but I do have a little anecdote for if you’re uncertain whether IP is for you. During my PhD, whenever I came across a patent, I’d ignore it in favour of actual scientific literature while thinking “Pfft, I’m never going to look at a patent.”, and yet here I am… Moral of that story is, don’t let your preconceived notions about IP and patents deter you from giving it some consideration, as you could be missing out on an incredibly rewarding career.