Gilles Bignan holds a PhD. in Chemistry, and soon will be a new patent agent.  I met Gilles in October 2008, when he attended the PLI patent bar review course in New York City.  When Gilles contacted me to let me know he had passed I asked him if he would be interested in doing an interview to discuss how he managed to pass the exam, the path he followed to get into the patent field and some of his successes as a research scientist.  Gilles was kind enough to agree to this interview, which is reproduced below.  He also gives some tips to those, like him, who are considering making the move from a long time research scientist into the patent field.  As Gilles says, “it is never too late to initiate something new and fun in your life.”  While many might not understand how science and patent law can be fun, I certainly share Gilles’ enthusiasm for this area.

On another note, if anyone is interested in hiring an accomplished and energetic PhD. with a chemical background, Gilles is presently looking for opportunities. See Gilles Bignan Resume Highlights.

With no further ado, here is my interview with Gilles.

Gene, it’s a real pleasure to answer your questions.

I understand that you are a newly minted patent agent, correct?

Almost yes. I just passed the Patent Bar Exam a few weeks ago. I am currently waiting to get my registration number to practice before the USPTO.

Congratulations, and welcome to the club! I have some particular knowledge about the patent bar review course you took, but can you tell our readers a little about how you prepared for the examination?

First let’s me thank you, Gene, John White and the Practicing Law Institute (PLI). You are really doing a great job in preparing candidates for the Patent Bar exam. I have to admit I had no knowledge of Patent Laws prior taking the course.

You might ask me “why did you decide to enroll with the Practicing Law Institute (PLI)? Very simple, working for a major Pharmaceutical company has some benefits: we have a very good Law department. I just asked advices from experienced Lawyers and Patent agents who suggested me to join the PLI. And I don’t regret it.

To study and prepare for the exam, I took the option of CDs and live class. I would recommend all candidates to read/listen/watch and absorb the entire course prior attending the class. So I spent about 5 months reading and assimilating the language, laws and rules. Following this strategy, the class offered by PLI was very beneficial and answered most of my questions. I then practice and practice by completing previous exams; I would say it is essential to only work towards the end of your preparation with the electronic version of the MPEP. And don’t forget: listen to John and Gene’ recommendations and keep in mind that they are always on the other side of an internet line ready to answer your questions!

One more advice: don’t wait the last minute to file your application to pass the exam. It can take some time to get official documents from your original University or School and get certified translations prior sending your application to the USPTO.

What prompted you to decide to take the patent bar exam and move into the patent field?

I spent many years in the chemistry field and I was looking for a radical change in my career. Since the moment I started interacting with our Law department, I realized how important it was to protect your invention especially in the current and future global economy. Furthermore, I always offered my help to prepare the patent application description and I got some guidance from an experienced patent agent in writing a few claims regarding my own work and invention. From this time, I decided that I wanted to work in this field.

I always liked challenges and I wanted to prove to myself I had the capacities to reach this new goal knowing that I had “zero” experience in this field and a daily job to fulfill. It is never too late to initiate something new and fun in your life.

Do you have a job lined up yet?

Not yet. I am waiting for my USPTO registration number. However, having solid basis and background, I know I will be able to find a position in the near future within a Law firm or a pharmaceutical company.

Why don’t you tell me a little about your scientific background and what you hope to do moving forward in case there are any potential employers reading who might be able to use someone with a PhD in Chemistry.

I graduated in France with a PhD in chemistry and completed a post-doctorate degree at Case Western Reserve University, working in organic chemistry. I then moved to New Jersey and joined Schering-Plough where I worked in radiochemistry and handled drugs from early discovery to late phase II studies. In my second and current position I work at Johnson & Johnson in drug discovery as a medicinal chemist. As an experienced chemist, I’ve been exposed to very challenging situations, published some of my work and got a tremendous experience. I am a self-motivated person who likes challenges and likes to complete good quality work.

Can you tell me more about the new drugs you have been involved with developing? Obviously, I am not looking for anything that needs to remain confidential, but what types of diseases have you been working with finding pharmaceuticals for?

During my first position, I worked and supported studies involving the anti-allergy drugs known as Claritin® and Clarinex®. Then, I was involved with projects related to the Central Nervous System (CNS) field towards the development of anxiety drugs. I spent a few years working in the oncology field to fight cancers and more recently in the metabolic field where we focus towards the identification of new drugs for diabetes.

What was the most interesting research project that you have engaged in, and can you tell us a little bit about it?

Each of the research projects in which I was engaged had their own challenges. The first project involved the development of a CNS drug for anxiety. We had the chance to discover a new molecule which is currently in Phase II. It was a great achievement to follow a compound you discovered going from early discovery in a laboratory up to its safe administration into patients. Another project gave me the opportunity to undertake an internal collaboration with an overseas company in Europe and initiate a screening aimed to the discovery of anti-cancer drugs; it was a great experience in term of communication and management. More recently, I participated actively in the filing of several patent applications.

I see from your resume that you have spent the last 12 years in New Jersey, working for Schering-Plough and then for Johnson & Johnson. I grew up in New Jersey and I think the popular perception of New Jersey is not really very accurate. How do you like New Jersey?

As I often hear and answer myself when somebody asks me: “Where do you come from? I am from Central New Jersey” with a French accent! I like New Jersey, the Garden State. I had the chance to live in several places and I have to say I enjoy New Jersey for its diversity, its people, its culture, its “Gardens”, ranches, beaches and green hills. New Jersey is geographically well located next to New-York city, Philadelphia and Washington D.C.

New Jersey was and is still the cradle of many bio-tech and major pharmaceutical companies.

Are you considering going to law school?

At this point, I keep my options opened and I am still considering it. In the future, I will evaluate each situation, each opportunity and will take the right decision when the time will come.

Where would you like to see yourself professionally in 5 years?

An ideal situation would be working for a Law firm or a pharmaceutical company within the Law department and who knows, maybe being enrolled in a Law school simultaneously. Since I like working hard and I am a fast learner, I see myself prosecuting patents not only in the chemistry field but in other close disciplines. And of course, I will not forget learning daily from my job and having fun at the same time.

Finally, what advice would you give a scientist like yourself who is interested in taking the patent bar exam?

First point would be to get as much information as they can about the patent bar from experienced professionals or friends working already in the field, be focused, committed, never give up, never hesitate to ask for advices or support, work and study hard, practice exams and take a course from an institute such as the PLI.

I really appreciate your time Gilles, and thanks for the PLI plug. I wish you the best of luck.

Thanks so much for this conversation Gene. It was a real pleasure.