Anyone considering a career as a patent attorney?


by berned_you
Tags: attorney, career, career advice, patent, patent expert, patent law
eendavid
eendavid is offline
#19
Mar5-12, 04:46 PM
P: 17
Supposing that you have zero knowledge of IP law, what are the skills people are looking for in an interview? Maybe more specific: as a theoretical physicist, with no industry experience, is analytic insight and experience with publishing articles sufficient to get in?
berned_you
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#20
Mar5-12, 10:05 PM
P: 65
Quote Quote by eendavid View Post
Supposing that you have zero knowledge of IP law, what are the skills people are looking for in an interview? Maybe more specific: as a theoretical physicist, with no industry experience, is analytic insight and experience with publishing articles sufficient to get in?
Sorry, what job are you intending to interview for?
eendavid
eendavid is offline
#21
Mar6-12, 01:30 AM
P: 17
I might be interested in a job as a patent attorney (so if I understood correctly, you first apply for trainee patent attorney). I guess what I'm asking is: should one try to get a basic gist of IP law before applying?
apat007
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#22
Mar30-12, 12:49 PM
P: 2
I'm a Civil Engineering undergrad at UCLA and I'm also considering minoring in Environmental Engineering. What would you say about pursuing patent law after a few years of work in the field?
berned_you
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#23
Mar30-12, 03:06 PM
P: 65
Quote Quote by apat007 View Post
I'm a Civil Engineering undergrad at UCLA and I'm also considering minoring in Environmental Engineering. What would you say about pursuing patent law after a few years of work in the field?
Those engineering degrees are not "hot" with respect to what job postings are looking for but that's not to say that you can't do it. I think with those degrees you would likely have to have a law degree as well as I believe it would be difficult to get a patent agent position.

Real world scientific experience is always viewed positively.

I hope this answers your question but I understand I'm not saying a lot. I'm trying to give practical advise with respect to the job market based on my experiences and general statistics. Just because it may be an uphill battle doesn't mean it's impossible to become a patent attorney, you may just have to be really determined to make it happen.
apat007
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#24
Mar30-12, 04:26 PM
P: 2
Oh okay, I see. Well I wasn't expecting to go into patent law without a law degree. Would it be worth pursuing a law degree or is patent law coupled with Civil or Environmental engineering just not a typical thing to do?
berned_you
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#25
Mar31-12, 09:13 AM
P: 65
Quote Quote by apat007 View Post
Oh okay, I see. Well I wasn't expecting to go into patent law without a law degree. Would it be worth pursuing a law degree or is patent law coupled with Civil or Environmental engineering just not a typical thing to do?
Worth pursuing is a very personal question that I can't answer. CIV E or ENVIOR E + patent law are not "typical" or mainstream but that's not to say it isn't at all worth doing if that's a career you are interested in.
NewtonianAlch
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#26
Apr9-12, 10:37 AM
P: 440
Is it possible to give us an example of something you might encounter on a day-to-day basis? I know there is possibly a privacy issue, so just anything that is as general as possible, so...

1) What kind of technical skills would you mainly employ?

2) How do you even begin to start analysing systems which you've never seen or encountered before?

3) As for electrical engineering, what kind of majoring stream is particularly suited to this role, signals, electronics, telecomm, photonics?
berned_you
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#27
Apr9-12, 11:11 AM
P: 65
Quote Quote by NewtonianAlch View Post
Is it possible to give us an example of something you might encounter on a day-to-day basis? I know there is possibly a privacy issue, so just anything that is as general as possible, so...

1) What kind of technical skills would you mainly employ?

2) How do you even begin to start analysing systems which you've never seen or encountered before?

3) As for electrical engineering, what kind of majoring stream is particularly suited to this role, signals, electronics, telecomm, photonics?
Well today I received an "Office Action" from the USPTO. This Office Action is correspondence rejecting the patent claims over prior patents. I need to take a look at the prior art patents and either argue that the Examiner's rejection is improper or amend the patent claims to distinguish the prior art. Amending the claims is somewhat of a game. You need to distinguish the prior art but you do not want the patent claims to be so narrow that they are difficult to enforce/easy to get around. Before I can really get into this work, however, I need to do a brief analysis first, report the Office Action out to the client and wait for their feedback.

A second project I have for the day is to get a patent illustrator working on drawings for a new patent application. I need to send him the production drawings and brief illustration of what I think we need to disclose the invention and patentable aspects. After that, I will likely begin drafting the patent application (background of the invention, summary, brief description of the drawings, detailed description, and claims).

Currently, I'm also working on some trademark litigation. We're in the discovery stage of litigation and I'm assisting with that process. Last week I attended depositions and helped prepare our client to best answer the questions we anticipated he would be asked.

In response to your questions,

1) You have to be able to understand that technology you are trying to patent as well as to understand prior art patents, which will be used in evaluating your application. The technical knowledge I use can also be as simple as knowing what to name various parts or scientific concepts. Your technical knowledge serves as a foundation for understanding new inventions and old. It also provides a basis for understanding what's out there already so you can draft patent claims that will not automatically be rejected as being too broad.

2) It often helps to have the inventor sit and walk you through it. Sometimes they will also provide a technical disclosure explaining how it works and what the novel features are. If you are asked to understand the prior art patents or known products/processes, it also helps to have your client briefly explain it to you as they are the experts in their respective technologies.

3) Since I don't work in the EE field, I can't say. I would expect that all of the mentioned focus areas would be desired. It really comes down to this - if it is advancing technology, the marketplace will need people to understand it and patent those new advances.
E-Z-B
E-Z-B is offline
#28
Apr17-12, 08:40 PM
P: 2
Hi, you said that your work week isn't typical - 35 hrs per week. From your perspective, what is typical for the number of hours that a patent lawyer works? I know it varies from company to company, but would a 40 - 45 hour work week be unlikely?
E-Z-B
E-Z-B is offline
#29
Apr17-12, 08:42 PM
P: 2
Also, what would be a typical salary range after working in as a patent lawyer for 5 years?
berned_you
berned_you is offline
#30
Apr18-12, 09:58 AM
P: 65
Would a 40 - 45 hour work week be unlikely? I would say most patent attorneys working at mid-sided firms work about 50 hours a week. It's not entirely unlikely but 40 hr a week jobs could be more difficult to find. With the economy for lawyers being in bad shape, it's hard to be picky, especially when you are first starting out.

Typical salary range after working in as a patent lawyer for 5 years? Of course this depends on a lot of factors. I would estimate $80-$175K/yr is a decent range. I know that's not very helpful but it will depend on the size of the firm you work for, where in the country you are and how many hours you bill. $175K/yr may sound great but those people are likely working 60-80/hrs a week in high pressure positions. I have many friends who make great money, typically in the form of bonuses. They work super hard all year chasing the dollars. The more you work, the more you can earn. These estimates are just my best guess and are not based on any research.

For both of these questions it is difficult to generalize for an entire industry. These are ballpark responses and there is a lot of variance.
Astronuc
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#31
Apr22-12, 12:42 PM
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A relevant topic - http://www.ted.com/talks/drew_curtis...ent_troll.html

It's important to understand patent law and IP law, as well as the technical details of a given technology.
Classico22
Classico22 is offline
#32
Apr27-12, 03:31 PM
P: 12
Well, this is extremely uncanny. I noticed this post right after I just posted a question about this.

What tests or qualifications do patent attorneys need to have above passing the bar like normal attorneys?

Also how is a civil engineering background?
berned_you
berned_you is offline
#33
Apr27-12, 04:19 PM
P: 65
Quote Quote by Classico22 View Post
Well, this is extremely uncanny. I noticed this post right after I just posted a question about this.

What tests or qualifications do patent attorneys need to have above passing the bar like normal attorneys?

Also how is a civil engineering background?
To practice before the USPTO you need to take the patent bar exam. In order to take this exam, you must have a technical background. See prior posts re: what qualifies and how various backgrounds can affect your career options.
berned_you
berned_you is offline
#34
Apr27-12, 04:39 PM
P: 65
Quote Quote by eendavid View Post
I might be interested in a job as a patent attorney (so if I understood correctly, you first apply for trainee patent attorney). I guess what I'm asking is: should one try to get a basic gist of IP law before applying?
I'm not sure I understand your question. Assuming you are in law school or will be attending law school, I would take IP classes to get the gist. Be sure to choose a school with a solid IP program. If I misunderstood your question, please clarify.
Classico22
Classico22 is offline
#35
Apr27-12, 05:42 PM
P: 12
So in addition to law school, you only need to take the patent bar exam, correct? And what does USPTO stand for?

Also, because I'm in civil engineering, does that mean that I would only be able to handle patents regarding civil engineering? Because if thats the case then it doesn't sound like a wise background to have...
berned_you
berned_you is offline
#36
Apr27-12, 09:05 PM
P: 65
Quote Quote by Classico22 View Post
So in addition to law school, you only need to take the patent bar exam, correct? And what does USPTO stand for?

Also, because I'm in civil engineering, does that mean that I would only be able to handle patents regarding civil engineering? Because if thats the case then it doesn't sound like a wise background to have...
You would take a state bar exam and the patent bar. That's all you need.

USPTO - US Patent and Trademark Office

You're generally correct with respect to you third question. I've never met a patent attorney with a civil engineering background.


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