Melanie Szweras is a partner, lawyer and registered Canadian and United States Patent Agent with the intellectual property law firm Bereskin & Parr LLP. Her practice focuses on biotechnology and pharmaceutical patents. Melanie attended the University of Toronto for both her undergraduate and Ph.D. degrees.
What brought you to the Department of Molecular Genetics at the University of Toronto for your doctoral studies?
I really enjoyed my undergraduate program at the University of Toronto, which was also with the Department of Molecular Genetics. I decided I wanted to continue my education at the University of Toronto because of its esteemed reputation. I did look at a number of different graduate programs but what I liked about Molecular Genetics was that, at the time, it was one of the only departments that had a rotation system. I found the rotation system to be extremely helpful, because I was able to spend more time learning about each program before I committed a number of years to a specialized area. I was also very interested in the wide variety of research projects available in the department.
What was the most important discovery from your studies in the Department of Molecular Genetics?
That is a hard question. I worked on a pathway that related to bone development and the immune system. I also worked on characterizing a gene knock out mouse and what role the gene and encoded protein had in development. It was interesting to learn about that pathway and related pathways, although most of our work was on small, detailed points of science. However, I think that it is the cumulative discoveries that are made by the members of the program that result in numerous applications.
What are your most exciting memories from the Department of Molecular Genetics?
I do not think that I really appreciated the level of multiculturalism at the university and in the program. It is a wonderful opportunity to meet people from all around the world. A lot of times graduate students do not realize the network that they are building. It is important to keep in touch with the people you meet here; if I had to say one thing to everyone who is doing their graduate work now it would be to make and keep those connections. The people you meet during your program are going to be working in similar or related fields around the world. In addition, this program gives you the opportunity to meet and work with preeminent scientists who will assist you in developing your career, by having access to great seminars or through mentorship opportunities.
From when you started at the University of Toronto, what were the key moments that shaped your career vision?
I worked on a rotation at The Hospital for Sick Children before I chose Jim Dennis’ lab at Mount Sinai. During my time there, I reclassified directly from the Masters into the Ph.D. program. About 2 weeks after I reclassified, I ended up being scooped. That was a bit scary, but it turned out that the person that scooped us was not actually interested in characterizing what we were characterizing, which ended up moving me forward a few years. Although it did not feel like it at the time, this event was ultimately beneficial.
In Jim Dennis’ lab there were people from various industries, including physicians and scientists. Jim was on sabbatical with his company at the time, so we often had meetings at the company. This afforded me the opportunity to learn about working in a small biotechnology company. After gaining insight into what working in academic science and working in industry was going to be like, I decided that it was not for me. It was at that point that I asked, now what do I want to do? For one, I knew I wanted to finish my Ph.D. It was not until third or fourth year that I started thinking of other career options. As I was starting a family, I knew that at the time I did not want to travel, which tended to be a requirement of completing a postdoc. I actually had my son a couple of months before I defended my Ph.D. so the question became: what can I do where I can stay within the Toronto region and still continue to use my science degree to its fullest?
When did you first know that you wanted to pursue a career in law?
During my Ph.D., I determined that I did not want to continue doing lab work or bench work per se. It was interesting, but it was not something I could see myself doing long term, so I started looking around to see what other options were available to someone with my background and skillset. I did not want to leave science, because I love science. I wanted a career that would allow me to continue to learn more about the broader scientific industry. I completed my graduate work at Mount Sinai, in the Samuel Lunenfeld Research Institute. While there, I spoke to the in-house patent group about their experience. Back then, we did not have all these alumni spotlights and career seminars so talking to people was my only introduction to this alternative career. I realized that there were so many areas of science that law touches whether it be patents, environmental, clinical or ethics. Law allows you to do large portions of your work still within the science industry and you would not be leaving it behind. That was really my goal - to marry my science to my future career. I thought that law was a great avenue to do that.
I finished my Ph.D. and I wanted that degree to be integral to my career choice. I know some people work in a totally different area after completing their Ph.D. - that was not something that I wanted. I was very proud of my Ph.D., I worked very hard for it, and I wanted to use it. There are lots of industries that you can do that, but for me law was the most interesting. I went into law school at the same time saying: “I hope this is the right thing.” I started law school and had a four month old. I really liked law, and I did not find it a huge problem to shift my thinking towards legal analysis, but it is definitely a different type of learning experience than it is in science.
How did your experience in the Department of Molecular Genetics influence your career trajectory?
You need to have a really strong scientific background in order to practice patent law in the life sciences. We usually look at manuscripts before they get published and we learn new things every day. If you are not comfortable with speaking to the scientists in their technical language, discussing the experiments with them or using the terminology, then you are unlikely to succeed in this type of work. In my case, I found it absolutely valuable to have my Ph.D. training in science.
At what point did you realize that you had ambitions to become a partner in a law firm, and what led you to Bereskin & Parr?
Becoming a partner was always the goal in my eyes. Once I joined a law firm, I wanted to work towards becoming as much a part of the firm as I could. For me, when I joined, the typical route was to be a student, then an associate, then a senior associate, and then into partnership. That is not what everyone does. You may have options to remain an associate or become of counsel to your firm, but that was not the route I chose to take.
I decided on Bereskin & Parr because of the specialized nature of the law that is practiced. Our firm works exclusively with patents, trademarks, copyright and related litigation. The firm itself has over 70 professionals with wide array of technological backgrounds. We have clients across all industries around the world. We are one of the leading Canadian intellectual property firms, and I think that for me that it was the best place. In terms of the firm itself, it is really collegial. Everyone is open to new ideas - that is one of the things about intellectual property in general. People are always open to new ideas, to collaboration, and to entrepreneurship. It is a great atmosphere.
What professional qualities/strengths do you think are important to establishing a successful career in your field?
In order to practice law, you need to attend law school and be qualified for the bar of the province you intend to practice in. To work in the patent area, as I previously mentioned, you need a very strong scientific background. In order to file patents with the Intellectual Property Office, you must also be registered as a patent agent in the jurisdiction that you file the patents.
In terms of strengths or skills, you need time efficiency. You need to be able to go through large amounts of documents in a short amount of time and be able to pick out important information while not getting bogged down in the details. Working in law, you need to satisfy your clients. Law is a service industry; you are selling services and you are interacting with people all the time, so having exceptional interpersonal skills is also very important.
What are some of the key challenges facing scientists who wish to protect their innovations?
The two key issues facing university scientists are: the issue of publish versus perish and the issue of funding. In patent law, you must not disclose your innovation before filing your patent application. Examples of public disclosure include talking about your idea, a poster presentation or presenting at a meeting. The key challenge for scientists is to be able to hold off on public disclosure until they have enough information and data to file a patent application. The next hurdle is finding funding. Patents can be an expensive endeavor. In most cases, scientists work with the tech transfer office of the university to seek out commercial partners. You provide yourself with more opportunities for potential commercial partners by holding off on disclosing until after you file a patent application.
What are some of the main issues currently facing the biotechnology industry (in Canada/U.S.) in the area of patentable inventions?
I think there are some specific biotechnology industry issues right now in Canada and the U.S. with respect to what is considered patentable. A lot has come out more recently, more in the United States but also in Canada, with respect to whether diagnostic methods and products of nature are patentable. There are challenges that if your innovation is characterized as a product of nature or law of nature then you will have more difficulties obtaining patent protection. So, I think that there are a lot of challenges right now with respect to how the patent system is viewing the biotechnology industry. But that does not mean that inventions are not patentable. It just means that there are greater hurdles that need to be addressed during prosecution of a life sciences invention. You have to have as much support (data, etc.) as you can at the outset, and you have to ensure that you are working with professionals who understand the current state of affairs.
When would you advise scientists to consider protecting their discovery/invention? Generally how does one succeed in obtaining and enforcing a patent?
It is important to seek a professional when considering filing and prosecuting a patent application. I would recommend speaking with a lawyer or patent agent as early as possible in the process. An invention has to be new, inventive and have utility to be patentable. In addition, almost all countries have a “first to file” system. The issue that arises is that if you file first but do not have anything within your application to really back up your innovation, then you are unlikely to be granted a patent by the patent office. Often, in university settings we do get people who inform us that they are going to give a presentation in a week, and so we do not have a choice at that point and need to file a patent application prior to disclosure. What I said previously about being able to hold off in terms of disclosures is really important. Ideally, once a scientist has the data to support the patent application, the scientist would work with a patent agent to prepare a draft of the application and then ultimately file that application. Patents are jurisdictional, but there are schemes in which you can file in one country or place to begin with and then preserve rights going forward. Eventually you have to decide which jurisdictions you want to have protection in, and then once you have filed, you have to negotiate in each of those jurisdictions with the patent office for your patent application. Eventually, you would obtain a patent in each jurisdiction that you filed in, assuming you are successful during prosecution. In most cases, fees are required in order to keep the patent going for its term.
What advice would you give to graduate students or other trainees hoping to apply their education toward a career in law?
Firstly, do as much research as possible on the areas you think you may be interested in; get as much information as you can. Seek out tech transfer offices or any lawyers that you are aware of that work in the area. Talk to them about what the career is like. I am always happy to talk to people if they are interested. Secondly, consider the benefits of having a law degree. Many firms are looking for people with both science and legal backgrounds and often students will start with a firm during the summer while attending law school. An alternative route is looking for positions in firms as a technical consultant. In that instance, you can become a patent agent instead of a lawyer.
What was the one thing about U of T that you hope never changes?
The atmosphere. I felt that when I went onto campus, it was an amazing place to be. I was one of many people who had gone there. My parents had gone there, both graduated from Medicine. The history and the prestige made me really proud to be part of U of T. Obviously the classes that I took were also of excellent quality.
What was the one thing that you would like to see U of T change immediately?
More programs for new students to meet one another. I remember that in my undergraduate degree, the expansiveness of the university made it difficult to meet people with like interests. It was not until my third year that I felt most comfortable with putting myself out there and meeting new people. It would have been nice in first and second year to have the opportunities easily available to meet people who I connected with, the way I did in my later years. I got there eventually, but the first couple of years were more daunting.