Attorneys and Barnes & Thornburg and Patent and Health Care & Life Sciences and Life Science & Biotech and Law

Attorneys with doctorates in high demand

March 16, 2009
The trio of attorneys who practice in the local office of Barnes & Thornburg LLP's life sciences group is a self-deprecating, peculiar bunch.

Not only are the three the punch line of an occasional lawyer joke, but they're also the target of lighthearted ribbing about their scholarly credentials.

"We're the geeky group," patent attorney Kevin McLaren said. "There's no doubt about it."

Nerdy, maybe, but the brainpower McLaren, Brad Addison and Becky Ball bring to the state's largest law firm is no laughing matter. Their legal pedigrees are supplemented with doctorate degrees in such sophisticated areas of science as chemistry, microbiology and molecular pharmacology.

They argue the additional education enables them to better relate to inventors wanting patents on complex technology.

While Barnes & Thornburg boasts the city's largest stable of attorneys with doctorates, rival firms have them on staff, too. Driving the trend is the Indianapolis-area push to make biotech and life sciences an economic development engine.

Indianapolis isn't the only place where the rise of life sciences is creating demand for lawyers with scientific expertise.

Todd Dickinson, executive director of the American Intellectual Property Law Association in D.C. is a former director of the U.S. Patent and Trademark Office, and is witnessing the national movement firsthand.

"It's been going on for some time, but it has ramped up substantially in the last decade," he said. "Ph.D.s are, if not a necessity, a leg up in the recruiting process [of clients]."

Sciences are king

Indeed, lawyers holding doctorates in biotech, biology, chemistry and computer sciences are in high demand by firms with strong intellectual property practices.

In 1990, Barnes & Thornburg had only one lawyer devoted to biotech — the late Steven Lammert. Today, the firm has 11 such attorneys and consultants with doctorates, eight of whom are in the Indianapolis office. But only McLaren, Addison and Ball hold both law and doctorate degrees.

Ball was first when she arrived in 1999 with a doctorate in microbiology from the University of Texas. McLaren brought his expertise in chemistry from the University of California at Berkeley in 2000. Addison came the following year with a background in molecular pharmacology from the University of Kentucky.

Addison's appointment as chairman of the firm's life sciences practice group is far from what he envisioned when he began studying for his doctorate. But his plans to conduct research for a major corporation got sidetracked once he began working with a University of Kentucky patent attorney on a valuable piece of intellectual property.

A law degree from the University of Cincinnati in 1993 ultimately led him to Barnes & Thornburg.

"What we do is the only area of law that allows you to use your technical background," he said. "You rely upon it heavily."

Kevin Erdman, a partner in Baker & Daniels LLP's intellectual property practice who also chairs the Indianapolis Bar Association's IP section, concurred. Erdman doesn't boast a doctorate, but the firm employs an internal medicine specialist as a consultant.

Of course, scores of talented biotech lawyers in Indianapolis practice without doctorate degrees. But Erdman acknowledged the benefits of more education often are difficult to argue against.

"A lot of times, particularly when you get into genetic research and you're slicing and dicing genes, those researchers want to communicate with someone who has a similar academic background," he said.

Patent law 'peculiar'

Bose McKinney & Evans LLP in April doubled its number of lawyer-doctorates to two with the hiring of John Emanuele. His expertise in biochemistry and biophysics complements the organic chemistry background of Barbara Gibbs, who was brought to Bose McKinney four years ago. She staffs an office in West Lafayette to be near opportunities that may arise at Purdue Research Park.

Jim Coles, who co-chairs the firm's intellectual property group, says companies prefer having a biochemist, for instance, shepherding patents through the process.

"Patent law is just a peculiar field," Coles said. "I can't have an electrical engineer working on matters relating to biotech. You almost have to hire based on technical backgrounds rather than just being a lawyer."

Not all lawyers with doctorates have gravitated to large firms. After stints at Bingham McHale LLP and the former Sommer Barnard firm, John Brannon hung out his own shingle, Brannon & Associates, downtown. He has a doctorate in ceramic engineering and draws industrial clients from across the country.

The patent process can be long and arduous, typically taking three to five years. International filings grew 2.4 percent in 2008, to nearly 164,000.

While growth was modest, compared with the 9.3-percent average rate during the previous three years, the number was the highest received in a single year, according to the World Intellectual Property Organization in Geneva. The United States accounted for nearly a third of all applications — 53,521.

Billing rates can be high in life sciences because the work is in demand, said Barnes & Thornburg's Addison. Infringement claims typically are not handled by patent lawyers but are referred to a firm's litigation department.

Ice Miller LLP, the city's largest firm, has an attorney with a doctorate at its Chicago office and anticipates having one here. An Ice Miller patent agent, who is licensed to practice before the U.S. Patent Office, is working on a law degree after having earned a doctorate in molecular microbiology and pathogenesis.

Value of doctorate debated

It's not just large law firms that are driving the trend. Woodard Emhardt Moriarty McNett & Henry LLP, an intellectual property boutique that has practiced in the field since 1879, has three doctorates on staff -- two lawyers and one patent agent. The agent can practice before the patent office but doesn't have a law degree.

Even so, Woodard Emhardt partner Christopher Brown said the firm hires the most qualified lawyers, regardless of how much education they have amassed.

"There are some firms that prefer not to hire Ph.D.s, thinking rightly or wrongly that they are so deeply involved in their technology that they may not be able to see the forest through the trees, I suppose," Brown said.

On the corporate side, Eli Lilly and Co. files the overwhelming majority of patents in the state. The pharmaceutical firm employs roughly 50 patent lawyers, some of whom hold doctorates.

Doug Norman, chief general patent counsel at Lilly, said the corporation's lawyers don't necessarily need a doctorate because they have the luxury of sitting "elbow to elbow" with Lilly scientists most anytime they wish. Still, he thinks it's helpful for firms because of the broad array of clients they serve and their various technologies.

The number of lawyers practicing with a Ph.D. likely will continue to climb as science becomes more complex. But there's a reason they remain somewhat of an anomaly: Few people have the intellect and drive to complete 11 years of college.

Not to mention the cost, which can easily top $400,000.

Addison at Barnes & Thornburg can attest to that. At 48, he's still paying off student loans.

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