Career conversation – Alberto di Consiglio, Patent Manager (EPFL)

As a biologist, have you ever considered the pursue a career in the patent field? Is it the first time you hear about this possibility?

Well, here is everything you need to know about it! Meet Alberto Di Consiglio, a biomedical researcher that entered this field after his PhD, and is now working as a Patent Manager in the Technology Transfer Office (TTO) at the EPFL – École polytechnique fédérale de Lausanne.

Katia Monsorno, on behalf of BSNL

Alberto Di Consiglio, Patent Manager, Technology Transfer Office, EPFL
  • What is you role at the EPFL?

I am part of the Technology Transfer Office (TTO), which is involved in analyzing and valorizing inventions that are created by our researchers. Before actually starting the valorization path of any invention, we need to understand if they are really original, and if they can be patented to potentially exploit them in the future (for instance to found a start-up). Within this office, I work as a Patent Manager; specifically, I help my colleagues Technology Transfer Managers to evaluate whether the technology announced to us can be patented and whether it is worth to do so. I meet the researchers that want to develop their technologies, and I support them in providing patent-related support, such as in the preparation of a patent application. The challenge for me is to make sure that the invention is meeting the criteria required for having the patent approved, and its very nature is captured in the prepared document. Indeed, in general any patent application can be stopped for either legal or technical reasons, and the way in which the patent application is written can determine whether it will be successful or not.

  • What have you studied and how did you become a patent attorney?

I first graduated in Biotechnology in Rome (Italy), and after that I did a Master in Pharmaceutical Biotechnology. I was initially convinced that I wanted to become a researcher in academia, but by the end of my studies I was not sure of the career path I wanted to take anymore. I ended up doing a PhD at the Sapienza University in Rome, where I was working on developing a mouse model to study a rare bone disease, known as fibrous dysplasia. However, I felt like I didn’t have enough freedom the manage my own projects, and this contributed to further decrease my motivation. Therefore, I started searching for an alternative career path, that would give me anyway the opportunity to exploit the knowledge I gained, but in a different context. Thanks to one of my friends, that was working as a Patent Attorney at Merck Serono (Geneva), I was introduced to his boss and I managed to have an interview with him. Six months after I was contacted again by them and I was told about an open position (and of course I applied). I was selected for a second interview, which basically consisted in meeting the other employees and in preparing a presentation in the patent field.

  • How did you join EPFL?

When Merck Serono closed, I have been unemployed for more than a year. My previous boss was working as a counselor for EPFL, and he told me they were thinking to hire somebody to work in the patent field in their Technology Transfer Office. He introduced me to the Vice-President for Innovation and Valorization (so also in this case networking played an important role). At this point, I had already more than two years of experience and I was offered a stage position to start with. Currently, I am probably one of few Patent engineer directly employed by a University, because usually this kind of institution have external collaborations with private firms, but none or few people working in house within a University.

  • Which are the skills that one needs to do this kind of job?

Knowledge of the current patent legislation is indispensable, of course. Nevertheless, this is as much required as knowing what the science behind the technology you are trying to patent. Indeed, to become a Patent Attorney, you must have gained skills and knowledge in a specific technical field (biology, for instance), although in my case, working at EPFL has allowed me to learn much more about engineering concepts, which I never studied before. Technical knowledge is required because small differences between technologies can be exploited to claim a new invention, but they might be rather difficult to find for someone that is not expert in that specific field.

  • How difficult was it, as a biologist, to gain the required knowledge in patent legislation when you first started this job?

When I started, I did not have absolutely any kind of previous knowledge about patents. This is not unusual in general, but many people gain somehow some patent-related knowledge with specific courses before entering into the field. However, my boss was very demanding and I was constantly pushed to do my best. Of course the first year has been tough, but then it went better and better.

  • Which where the criteria that were evaluated during the interviews you did in the past?

My previous boss was mostly interested in the way I was able to think under pressure and the way I could explain things. Indeed, when writing a patent application it is very important to be as clear as possible and to introduce the most important concepts in a very logical way, to make it easily understandable by others.

  • What is your typical day at work?

A significant part of the day is dedicated to meetings, with my colleagues or with the scientists working on the specific technologies, to brainstorm or to elaborate on the innovative aspects of their inventions. Often I also have deadlines linked to each patent application, which can be linked not only to the patenting process but also to the submission of publications regarding the technique (i.e. the inventions have to be patented before publication). I support researchers at EPFL from the beginning to the end of the patent application, helping them identifying the best strategy to succeed in the process.

  • Which are the aspects that you like the most about your job?

It is very stimulating, since it allows you to meet lots of new people and to be always updated on the newest available technologies. In the case of a University, it is even more exciting, as you are confronted to a lot of different technologies and fields not necessarily in your “comfort zone”.

  • Is there anything you don’t like?

There is absolutely anything I would change in my job. Especially the relationship I have with the researchers and the intellectual challenge that we face to put in evidence the innovation behind their inventions is what is really keeping up my motivation. The gratification that derives to contribute not only in the patenting of an invention, but even maybe in the founding of a start-up which is based on that technology, cannot be explained. Of course also the working environment is very important in this. Maybe one thing to keep in mind is that in EPFL, patenting doesn’t have to be in contrast with publication needs, teaching and the other activities of EPFL researchers, while in the industry patenting is the most important thing, and everything else comes after. Finally yet importantly, the environment and atmosphere at the TTO is great.

  • Which is your advice for people that want to work in the patent field?

The first possibility that one has to enter this field is to start working as an Examiner in a Patent Office. For instance, in the European Patent Office, which is based in Munich, Berlin and in the Netherlands. There are often open positions with a good entry salary, but this is because the job is really demanding and repetitive. One of the requirements is to speak at least two out of the three official languages (English, French and German), and they teach you the third one as part of your job. The good thing is that there they train you from the beginning and you gain all the expertise that you need to apply to other jobs of this kind.

Another way is to contact directly patent firms. In this case, they usually train you but you start working immediately, and the amount of stress can be high, with lots of deadlines. In both cases, you often don’t follow the same project from the beginning to the end, although in some specific cases it might happen. The third option is to apply directly to an industry, there is high competition but the salary is high, and the deadlines are usually less than in the private practice. Nowadays to find a job is also really useful to actively use resources such as LinkedIn, where recruiters can easily reach you and contact you for an interview.

The luckiest ones become Patent Managers at the EPFL Technology Transfer Office!

We thank Alberto for his availability and for agreeing to be interviewed by us. We hope it has been helpful for many of you! If you are interested in the patent field don’t miss our upcoming events, we will help you further discover this and other interesting career paths!



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