Open Mind, Broad Horizons

By Marcia Faye
Emily Miao

Collecting rocks and bugs, pooling money together with her three brothers for a microscope kit, and tearing through her neighborhood on a bicycle to reach the New York Hall of Science museum as quickly as possible all served as more than endearing childhood memories for Emily Miao (LAW ’97). Rather, these interests—shaped by her curious and receptive nature—drove Miao in an unanticipated career direction, by combining science with law.

After graduating from college with degrees in chemistry and biology, Miao obtained a Ph.D. in chemistry from New York University and completed a postdoctoral fellowship at Massachusetts Institute of Technology, focusing on new drug development and drug metabolism. She then expected to follow one of two traditional career paths—academia or industry. A contact told her about an opening for a doctoral-level biochemist at a local law firm. The individual selected for the position would come in as a technical consultant on cases and be expected to advance to the position of patent agent, with the eventual goal of earning a law degree and passing the patent bar.

“I decided to give it a try for one year, and never looked back. I learned more about science by being at a law firm because now I was no longer a specialist,” says Miao, from a meeting room on the 31st floor of McDonnell Boehnen Hulbert & Berghoff LLP (MBHB), with a view of a fog-veiled Lake Michigan.

Miao spent several years building her patent agent skillset in New York then came to Chicago, where she was hired at Banner & Witcoff, Ltd. and met John McDonnell (LAW ’75), whose portfolio included positions as chief patent and trademark counsel at G. D. Searle and Company as well as head of diagnostic patent operations at Abbott Laboratories. McDonnell recommended that Miao obtain her degree from Chicago-Kent College of Law, with its especially strong program in legal writing. When McDonnell left the firm to become a founding partner of the intellectual property firm MBHB in 1996, Miao joined him a short while later and today is a partner herself.

“We advise clients on how to protect certain aspects of their business that may not cleanly fall under the protection domain of inventions or copyrights,” Miao explains. “We have a lot of clients, particularly startups, that must obtain patents in order to attract investors. As a basic requirement to get investor monies coming into the door, we need to have something that is protectable. That’s where I come in. Right now, for example, I am involved in MATTER, a Chicago hub that helps many health care startups set down their roots and develop as companies. I run an IP clinic to assist startups in finding out what they have that is protectable or establishing brand recognition that may give them a leg up.”

Miao has been recognized for her longtime mentorship in the Chicago area and at her law school alma mater as one of Chicago-Kent’s 125 Alumni of Distinction. She is also active in the Chicago chapter of Women in Bio, a nationwide organization that promotes the careers, leadership, and entrepreneurship opportunities of women in the life sciences. Miao says that 2017 is an exciting time to be a woman in science, especially for those who keep their options open.

“We are seeing less and less development of R&D within companies themselves; they instead are reaching out to universities in the licensing and development of new technologies,” she says. “There is an opportunity here for women scientists, graduate students, and postdocs to think about combining their science education with entrepreneurship and business. I encourage them to consider going for an M.B.A. I see the industry going in this direction.”