Anyone considering a career as a patent attorney?

berned_you

It is a disadvantage not to have a "category A" science degree. You will see from scrolling through attorney bios online that there are few that are employed by firms that do not have a category A degree. As discussed above, it's my feeling that some employers get "stuck" on finding an applicant with a certain degree. In those situations, an industrial engineer may not even be considered for a mechanical engineering patent atty position even if the coursework is similar. Same situation in your case. You may have a good knowledge base for a certain type of science but employers will get hung up on finding a candidate that has a certain degree. When applying for jobs, you will need to clearly and strongly emphasize your science background. I would also take (and pass) the patent bar as soon as practically possible and make very clear and prominent in your job applications that you are registered to practice before the USPTO. If this is what you want to do, it can be done but you will need to set yourself up in the best way you can (great school, great grades, networking a ton, maybe working at the USPTO for awhile as an examiner and maybe even going to school a bit more to get a few more credits to obtain a category A degree if need be). Also read what I've said in prior responses regarding the biological sciences and a phD/masters requirement. You will likely want to target yourself as a mechanical engineer alternative versus a life sciences degree alternative.

pa5tabear

What's the best way to research current/pending patents?

Is it realistic to file a patent without an attorney's help? Can loop holes easily by found/exploited?

berned_you

"Google patents" is a nice tool for searching US patents and patent application publications. Public "PAIR" found at www.uspto.gov will allow you to view publicly available prosecution histories and maintenance fee payment statuses.

Filing a patent application "pro se" without an attorney is similar to representing yourself in court without an attorney. It's likely not going to end well. The USPTO rules for patent prosecution are found in the MPEP, which is available online. Take a quick look at this monster of a book and you'll understand quickly how complicated it is. In addition, a patent attorney is familiar with recent and old case law that will greatly affect the way your patent is examined by the USPTO and a judge/jury during litigation. Preparing a patent application is an art and not a fill in the blanks activity. Every word I put in a patent application is considered and chosen for a specific reason - EVERY SINGLE WORD (even "a" versus "the" are chosen carefully and any patent attys reading this will quickly understand what I'm talking about). Even if you do manage to obtain a patent on your own, will it be valuable and/or enforceable? Obtaining a patent is not the whole objective. You need to get a patent that is effective in 1) protecting what you plan to manufacture; 2) prevent others from effective design arounds; and 3) encompassing any known competitive products if possible. Think of it this way, it if was straightforward to do yourself, why would companies and solo inventors pay $8-50K+ for a patent attorney to do it (and that's just the cost for filing a patent application, not the prosecution)?

dreyx2000

So is there a lot of traveling as a patent lawyer? I have a friend who is a patent lawyer and he is CONSTANTLY travelling to cases. But can patent lawyers do things other than patent litigation? I know you said it involved a lot of writing , but I would like to know if litigation is a must for patent lawyers? Reason I ask is because I am interested in patent law (I have an undergrad degree in Computer Engineering, Masters in Computer Engineering, and an MBA, all from a top engineering school), however, because I am disabled, I do not have the luxury of being able to travel a lot. If it were in-office work I would def go for it though. So, is there a lot of travelling nevessarily for patent law practice?

berned_you

Generally, patent prosecutors don't travel too much as clients often send invention drawings and disclosure via email. Sometimes it's helpful to visit clients to develop your relationships with them, to see their manufacturing processes and oversize products in person and that might warrant a visit. Sometimes clients are local and they can come to you but there aren't many IP attorneys in smaller states or cities, which is why I have some clients from less metropolitan neighboring states. Occasionally, you may travel to meet with client who is not in your town. Patent litigators will travel a lot more. As you may appreciate, lawsuits can be filed all over the country and you don't always get to choose where you end up.

parimala

hey, I'm in my final year of my undergraduate programme in the field of Biotechnology in India.
I'm keen on pursuing a career in IP.

1. Will it be better for me to do my masters in biotechnology before opting for a career in IP?
2. I want to know whether there will be much of a difference in being a patent attorney and a patent agent (other than the qualifications). How does the work differ?
3. Are there any courses available in USA, European countries to do masters in IP directly after my Bachelor's in biotechnology and then practice as a patent agent?
4. As I’m from India, will I have to write LSAT other than GRE and TOEFL?

berned_you

1. Yes, see prior discussion regarding biotech degrees
2. There is a big difference. Patent agents will always do the leg work (hard work). Patent agents cannot give legal options (practice law) in the US so the work is much more limited in scope.
3. Check out Pierce Law at the University of New Hampshire as they have a few IP LLM/Masters programs that are very popular with international students.
4. To go to law school in the US you need to take the LSAT. To become a patent agent, you must pass the US Patent Bar Examination. You do not need to go to law school to be a patent agent.

purekenya

I am so glad to find this forum. I am currently a PHD candidate in environmental engineering and I absolutly do not want to be an engineer after all these years of school. But I do love doing the research work. I was talking to a professor about patent law/agent and I am wondering if being an agent with a PHD will give me good career options or is it better that I get the law degree? Also how long did it take to get a law degree after completing your engineering degree?

berned_you

Environmental engineering is not a typical background for a patent attorney but it's not a bad one. I'm just not sure how much a pHD will be valued by employers. In any case, it wont hurt.

Law school is three years minimum (took me three years and most full time programs are 3 years). You can't do school any faster because the ABA wont let you - it's BS.

joshu

Hi, thanks for the wonderful forum.

I am mechanical engineer and have 10+ automotive, manufatcuring experience. i am in mid 90's salary. i am thinking to change my career to patemt agent and eventually patent attorney. what are your thoughts? how should i pursue?

berned_you

I would expect that you would take a salary cut as a patent agent. You may also not be thrilled with your salary as a patent attorney after spending $120K on school and losing three years of income and benefits. When you start off, you will either be making about what you are now with a 40 hour work week or you will be working 60-70/hrs a week and making a lot more but essentially working two jobs. That is...if you can find a job. The market stinks right now. If it's what you really want to do, it will all be worth it but certainly don't do it for the money because you may find yourself sorely disappointed.

If you are really just looking for ways to move up the ladder because you feel you have reached the top with your current job, consider a MBA instead. Engineers with experience and an MBA can transition easily to the management side of companies and this can be very lucrative and provide you with a lot of flexibility with respect to what jobs you are qualified for. Employers are also often willing to pay tuition for their employee's MBAs and it's an easier program to do overall. It's also easier to go to school for part time while getting your MBA so you can continue enjoy an income while in school. Lastly, I have yet to meet a MBA graduate having a hard time finding a job within my circle of friends. The story for my law school grad friends is quite different.

joshu

Thanks for your quick reply. Can I start as a part time agent (after taking bar exam) and that way gain some experience to switch to full time agent to keep my salary more or less the same? what are the prospects of part time patent agent?

perryplatypus

THans for all of your information! I'm a high school syudent, and considering to be a patent attorney in the future. What would you suggest I do? What classes and AP tests should I take? Thanks!

parimala

thanks a lot for the information.. I've now decided to do a masters degree in biotechnology before venturing into the IP world. Will it come handy to do a dual degree of MBA/MS in Biotechnology?

thank you

berned_you

@perryplatypus - I'm assuming you're in the US. If not, I can't provide valuable advice because the requirements are different in each country. That said, prepare for a scientific undergraduate major, perhaps by taking advanced math and science courses in high school. Research undergraduate programs and consider what type of major to pursue and determine which colleges you would like to apply to. The school you choose can affect your law school applications, so aim for high ranked schools and ones with a name that will be recognized around the country as you don't know where you will be applying for law school. Start following IP focused blogs to see what the hot issues are right now. The law is evolving constantly. If you find yourself getting bored with reading those blogs, you'll know that maybe it's not the career for you.

@parimala - My understanding is MBAs aren't highly valued in the legal field

parimala

oh! okay.
thanks again for the information!

ajayo

Thank you VERY much for your informative responses!