Amanda Casale
Amanda Casale took her scientific training and love of neuroscience in a new direction by becoming a patent agent. Today, she works at Morrison and Foerster, and specializes in preparing and prosecuting patent applications related to neuroscience and other life science fields, as well as machine learning and AI. Amanda earned her PhD from Yale University and completed a postdoc at the Salk Institute. She then entered patent law as an agent at Mintz Levin, before moving to Morrison and Foerster, where she has been since 2018.
Can you describe your academic and professional background? What path led you to pursue this field?
In college, I studied English and worked as an actress before science even popped up on my radar. It wasn’t until I took a philosophy class that I became interested in the brain. There was a brief moment when I thought I might want to study eyeballs, but after joining an immunology/ophthalmology lab as a research assistant, I realized neurons were my passion. I earned a PhD in neuroscience and landed a postdoctoral position at the Salk Institute in Dr. Ed Callaway’s lab. My focus in neuroscience was electrophysiology and imaging.
As much as I loved my work, my world seemed like it was shrinking. I studied my ‘neuron of interest’, I used a specific set of techniques, and I knew which competitors to watch out for. I felt out of touch with the broader scientific community, and there were so many more things I wanted to learn about. It was during my last year of graduate school that I started thinking about careers outside of academia. Although science was my passion, I didn’t want to stay at the bench or teach. What I really enjoyed was thinking about scientific concepts. I didn’t want to do the work, I just wanted to learn about it.
During my postdoc I started attending career networking events. When I heard something that seemed to align with my interests, I wasn’t shy about making a connection. I did a lot of informational interviews, and I drank a lot of coffee. In the end, I honed in on patent law. It seemed to be the perfect balance for me: I would get to learn about all different kinds of science without having to do any bench work. I think this is one of the best parts of my job as a patent agent.
How did you find this particular position, and what was the hiring process like? Is there a typical structure for this in your field?
My first job out of academia was hard-won. I networked, and I interned at Salk’s Office of Technology Development. I made myself available for any and every opportunity that came along.
What really got me the job was a recommendation based on an informational interview. If you can make a personal connection with someone in the field, whatever that field may be, the odds of getting a foot in the door are much higher. Plus, you will have already formed a relationship with at least one future colleague!
Can you tell us about your current responsibilities? What is a typical day or week like in your role?
As a patent agent, I prepare patent applications and attend to prosecution, the road from an application to a granted patent. Basically, I learn the science that the client is doing, I translate the science into a patent application, and then I assist in negotiations with Patent Examiners all over the world to achieve granting of patent rights that protect the client’s technology in a given jurisdiction.
In a typical day, I will deal with anywhere from 3 to 5 different cases. This involves strategizing with clients and foreign counsel on the course of action that will best serve them and attending to upcoming deadlines. There are a lot of deadlines in patent law.
Although I spend a lot of my time quietly drafting patent applications and responses to Examiners, the job is very client- and customer service oriented. In fact, everyone you work with, from the case clients, to foreign counsel, to your supervisors and supervisees should be treated as a client. You should be very comfortable with people and personalities if you enter this field. Being a team player is invaluable.
What do you enjoy about your current job and work environment?
I work with awesome people. I learn new science every day. I am constantly being pushed to think critically and expand my knowledge base. I pretty much got exactly what I wanted. If you like learning, this is a great job for you.
What are some of the challenging aspects of your job? Is there anything you wish you had known about your job or industry before joining?
During informational interviews, everyone I met with was honest about the stress that comes with practicing patent law. As I mentioned, the field is very deadline-oriented. And if you work at a firm, you are required to bill a certain number of hours. Although I knew this, it wasn’t until I was in the thick of it that I finally understood what people were talking about. It can be a challenge to manage stress and maintain a work-life balance, but it can be done!
Do you have any professional plans for the future? What are some future career paths that could open up for someone in your position, 5-10 years down the road?
Patent agents can be patent agents in perpetuity. Patent agents can also become patent attorneys. In fact, some law firms will even reimburse your law school tuition if you earn your degree while working. Patent attorneys differ from patent agents in that they are licensed to practice law and can provide legal advice on matters concerning licensing and litigation. Patent agents often provide technical support in matters concerning licensing and litigation.
Patent agents and attorneys can work in law firms, at businesses (“in-house”), at universities, as consultants, and as Patent Examiners. Even with all of those said, I am likely forgetting some options. The point is that there are numerous opportunities for people with experience in patent law. I would be hard-pressed to think of a case where having such experience would be a drawback.
What’s changing in your industry? Are there any future trends we should be aware of?
There are emerging fields (think AI) and merging fields (think applying AI to biology and medicine) that are pushing the existing boundaries of patent law and challenging patent practitioners in unique and unexpected ways. The law itself is constantly in flux! A strong background that allows you to learn about new scientific developments and move fluidly between scientific fields, coupled with a fearlessness to embrace new challenges, will serve you well.
What activities, internships, or organizations would you recommend someone get involved with to help them break into this field?
Be proactive. Find internships, e.g., in law firms or in your university’s technology transfer office. Morrison and Foerster has an internship program for graduate students—check it out! Really, you just need to get out of your bubble. Ask people to coffee, read books, or take a course. There are so many ways you can educate yourself, and potential employers will notice your initiative.
Is it common for people in your field to have a scientific/academic background (i.e. have PhDs)?
A PhD is virtually required to work in patent law. This is particularly true for practitioners in the life sciences space.
Do you have any final words of advice for those navigating these career questions?
Please take the time to think deeply about your interests. You have options and you deserve to find the job that is right for you. Also, don’t be afraid if your first job isn’t the best fit. There is no right or wrong – just keep moving in the direction that fulfills you and enjoy the journey.
