Anyone considering a career as a patent attorney?

[MANDADOYAGO]

Hi,

I hope this thread is still open. Thanks in advance for your time.

I am a Spanish European Patent Attorney with a master in EE and another in Computer Engineering. I currently work in The Netherlands as an in-house counsel for a printing company. The company is experiencing financial hardship so I am considering my options. Taking into account that I have some experience in US office action drafting and worlwide prosecution: what do you think the chances are of finding a law firm that would sponsor me?

 

[Bystander]

I am a Spanish European Patent Attorney with a master in EE and another in Computer Engineering. I currently work in The Netherlands as an in-house counsel for a printing company. The company is experiencing financial hardship so I am considering my options. Taking into account that I have some experience in US office action drafting and worlwide prosecution: what do you think the chances are of finding a law firm that would sponsor me?

"Hardship?" What have you got to lose?

 

[berkeman]

"Hardship?" What have you got to lose?

Sounds like he could lose his current job because his employer may go under...

Taking into account that I have some experience in US office action drafting and worlwide prosecution: what do you think the chances are of finding a law firm that would sponsor me?

What do you mean by "sponsor"? Is that legal-talk for "hire"? Have you sent resumes to any other law firms in your job searching?

 

[CrysPhys]

Taking into account that I have some experience in US office action drafting and worlwide prosecution: what do you think the chances are of finding a law firm that would sponsor me?

Just to clarify, are you specifically asking about the chances of a US law firm hiring you, sponsoring you for a visa, and relocating you to the US? Or do you mean something else?

 

[MANDADOYAGO]

Hi all,

Thanks for your replies. Indeed, by hardship I mean some have been laid off, and it might happen again beginning next year. And also right, by sponsor I mean offering a contract and a visa, as I am merely another EU citizen there.

Thanks!

 

[MANDADOYAGO]

Re-reading tour posts...

I wonder whether I would have any chance to find a law firm to take me as a trainee. I have drafted in the past US replies, so I think I would not lag behind in that or in passing the patent bar. Upside would be that then I could offer clients the prosecution in both sides by the same attorney.

Also, I would not be looking for a great salary in the first years, just making ends meet, especially professionally.

Thanks!

 

[CrysPhys]

Hi all,

Thanks for your replies. Indeed, by hardship I mean some have been laid off, and it might happen again beginning next year. And also right, by sponsor I mean offering a contract and a visa, as I am merely another EU citizen there.

Thanks!

It's still not clear to me what your target countries of interest are. What country are you a citizen of now? What languages are you fluent in?

 

[MANDADOYAGO]

Hi,

My target country would be the US of A. I am a Spanish citizen living un NL. I lived in Germany for 4 years, although I would not be able to do patent work in German. I speak fluently English and of course Spanish.

BR

 

[CrysPhys]

Hi,

My target country would be the US of A. I am a Spanish citizen living un NL. I lived in Germany for 4 years, although I would not be able to do patent work in German. I speak fluently English and of course Spanish.

BR

As a matter of course, I’d say your chances of being hired by a US law firm are really small. You would need to offer exceptional value (see further discussion below) over US candidates. Some points for you to consider:

(1) Assuming you do get hired by a US firm and relocate to the US, would you still be able to maintain your status as a European patent attorney and represent clients before the EPO? That’s a question. I don’t know the answer. But if you plan to market that capability as exceptional value to a US firm, you should confirm that first. That said, most US firms hire European firms as foreign agents for prosecution before the EPO (unless they have their own foreign branch). But someone with direct experience with EPO prosecution could be of value to some firms.

(2) “Patent attorney” in the US is different from “patent attorney” in Europe. In the US, in order to be a patent attorney, you need to pass the USPTO patent bar exam and have a law degree (JD) and pass a state bar exam. So, assuming you have the technical qualifications and pass the USPTO patent bar exam, you would qualify only to be a “patent agent”. This has significance because in a US law firm, a patent agent has lower standing than a patent attorney; therefore, you would have to offer even more exceptional value in order to be hired.

(3) The European country with the largest number of patent applications is Germany. So fluency in German could be a plus (though most German scientists and engineers I’ve dealt with have pretty good English). I know a guy who was originally from Germany, but in the US working as an engineer. When his company went kaput, he became a patent agent at a law firm with large German clients. Not a large amount of potential business coming out of Spain. Spanish could be useful for law firms doing a lot of business with clients in Latin America. But a law firm probably would not have great difficulty finding a US candidate fluent in Spanish (if you were fluent in Portuguese, that would be more of a plus in dealing with clients in Brazil, since fluency in Portuguese is far less common than fluency in Spanish in the US).

(4) A big plus would be if you worked in-house at a large company, or otherwise have connections with large companies, that you can bring in as clients to a US firm. For the NL, companies that come to mind are Shell and Philips. I know a couple of patent agents who have done very well in US firms because they come from home countries in which businesses and government are closely intertwined ... and they have family members highly placed in their home governments. They bring in a lot of business to their firms. But even in these cases, they were already here in the US (working as scientists or engineers).

(5) Another big plus is having niche technical knowledge. This typically requires a PhD or a masters with years of R&D experience. It would have to be a niche area in which US candidates are lacking.

ETA: Are you considering the US because opportunities in European patent firms are scarce, or because you want to come to the US for other reasons?

 

[MANDADOYAGO]

Thanks for your replies. I agree with you. I have just today seen a position for a European Patent Attorney at Fish & Richardson but for somebody living there. It is now easy for a US Attorney to become a EPA just with a 3 year stint in Europe. By the way you can indeed practice before the EPA while living in the US. Just your place of business must be at an EPO country.

Regards

 

[CrysPhys]

By the way you can indeed practice before the EPA while living in the US. Just your place of business must be at an EPO country.

Thanks for that info. If you end up working for a US firm with a EPO country branch office, I can see that would be easy to do. But what would happen if hypothetically you were to relocate to the US and end up working in a US firm without an EPO country branch office? Could you simply maintain a postal box in an EPO country, or would you have the added expense of maintaining some actual office space?

 

[MANDADOYAGO]

Hi,

The requisites are:

Having your place of business in an EPO country and being up to date in your let's call them Bar association payments (EPI)
A postal box suffices, as you only need to be able to receive post (everything is of course online now). I have found some examples out there, as Andrew McQueen from Miltons IP, practicing in Canada. If you go to the Find a representative tool of the EPO he is registered in Bristol.

Hope is useful

BR

 

[CrysPhys]

Hi,

The requisites are:

Having your place of business in an EPO country and being up to date in your let's call them Bar association payments (EPI)
A postal box suffices, as you only need to be able to receive post (everything is of course online now). I have found some examples out there, as Andrew McQueen from Miltons IP, practicing in Canada. If you go to the Find a representative tool of the EPO he is registered in Bristol.

Hope is useful

BR

OK. Yes, very useful info. Good luck on your next career move.

 

[rgoreb18]

Hi!

I was wondering how my background of Material Science and Engineering would impact a potential career in patent law. There already is not too many of us, only about 40 people in my graduating class at a big state school, so I'm assuming there aren't many Patent Attorneys with a background in MSE. This thread has gotten me even more interested in pursuing a career in patent law

 

[CrysPhys]

Hi!

I was wondering how my background of Material Science and Engineering would impact a potential career in patent law. There already is not too many of us, only about 40 people in my graduating class at a big state school, so I'm assuming there aren't many Patent Attorneys with a background in MSE. This thread has gotten me even more interested in pursuing a career in patent law

* Of course, no one can predict what the job market will be like at the time you complete law school (should you decide to go that route). But if you plan to become a patent attorney with only a bachelor’s degree in science or engineering and no other professional experience, then over the last 15 yrs or so, the biggest demand has been for patent attorneys with degrees in electrical engineering, computer science, computer engineering, and mechanical engineering.

* Here are two websites that will give you a sampling of current job opportunities for patent attorneys. The first is a job post from a well-regarded (by patent professionals) patent blog: https://patentlyo.com/jobs. The second is a job post from a recruitment firm that specializes in patent professionals: https://www.wkmclaughlin.com/JobRetrieve.aspx.

* There are jobs for patent attorneys with a background in materials science and engineering (MSE). A good chunk of the clients are in the semiconductor electronics industry. Here though you will be competing with candidates with degrees in electrical engineering, physics, and chemistry. Law firms, in general, prefer candidates who can handle a wider range of clients (usual caveat: ceteris paribus). You will also be competing with candidates with advanced degrees and with candidates with industry experience (who then changed careers to patent law). In general, advanced degrees and industry experience are a plus in distinguishing yourself from other candidates (again: ceteris paribus) .

* There is a niche market that is more narrowly focussed on MSE candidates; e.g., for candidates well versed in austenitic vs. martensitic phases. These clients include, e.g., materials producers and aerospace manufacturers. So here a MSE background will perhaps give you an advantage over candidates with electrical engineering, chemistry, or physics backgrounds. But since there are fewer such clients, there is less demand for patent attorneys in this area. And here again, you’ll be competing against patent attorneys with advanced degrees or industry experience.

* Unless you’ve had previous experience with patent law and know you have a calling, I don’t recommend that you leap directly into law school with an eye on becoming a patent attorney. While you’re still an undergrad, check whether your school has an intellectual property and technology transfer dept (most major universities do), and see if you can get an internship there to find out more about intellectual property law. You won’t learn the ins-and-outs of being a patent attorney, but it will at least give you an exposure to the field, as well as connections to talk to about what life as a patent attorney entails on a day-to-day basis (it’s probably a lot different from what you envision). Even if the university does not have a patent attorney on staff, they can refer you to patent attorneys that the university contracts with to do their patent work.

After completing your undergrad degree, you can also consider becoming a patent agent first (doesn’t require a JD) to see whether you like patent work (although getting your foot in the door will be difficult). If you do, you can go to law school later, if you are so inclined. If you don’t, you can consider getting an industry job, or going for a grad degree. Remember, unlike a PhD program in science or engineering, you generally need to pay your own way for law school. That’s an expensive option; so be sure before you go that route. See my previous Reply #272 for a discussion of a position as a patent agent.

* To become a patent attorney or a patent agent, you need to pass the patent bar exam administered by the United States Patent and Trademark Organization (USPTO). There is a possible glitch with respect to your qualifications to sit for the exam. It’s better that you take care of this while you are still in college, rather than later. The requirements to sit for the exam are given here: https://www.uspto.gov/sites/default/files/documents/OED_GRB.pdf. Of particular note, refer to Sec. III.

The most straightforward way to satisfy the education requirements to sit for the exam is to have a bachelor’s degree in a major listed under Category A. Note that Materials Science and Engineering is not listed; whereas Ceramic Engineering, Metallurgical Engineering, and Mining Engineering are. As you can tell, the list hasn’t been updated for a long time, since you’ll have a hard time finding a US university that grants a major in those subjects anymore; they’ve largely been subsumed under MSE. Nevertheless, that’s the official list. Now one guy claims that he was allowed to take the exam with a MSE degree (see Comment No. 8 at the bottom of https://www.ipwatchdog.com/2009/10/13/does-my-degree-qualify-me-to-take-the-patent-bar/id=6648/).

But here’s the catch. The Office of Enrollment and Discipline (OED) at the USPTO decides whether a MSE degree qualifies. If you call them up to ask, they likely won’t tell you. But if, by chance, they do, nothing they tell you over the phone is binding. The only way to know for sure is to file a formal application, and see whether you qualify or not.

My recommendation is to play it safe, and assume that a MSE degree does not qualify. In that case make sure your undergrad courses satisfy the requirements listed under Category B before you graduate. It’s a lot easier to take care of this now, than after you graduate from law school and then have to take remedial undergrad coursework, if needed. If you don’t qualify under Category A or Category B, your remaining recourse is Category C: passing the Fundamentals of Engineering (FE) exam. But who wants to pass an exam just to qualify to take another exam, if you can avoid it.

 

[rgoreb18]

* Of course, no one can predict what the job market will be like at the time you complete law school (should you decide to go that route). But if you plan to become a patent attorney with only a bachelor’s degree in science or engineering and no other professional experience, then over the last 15 yrs or so, the biggest demand has been for patent attorneys with degrees in electrical engineering, computer science, computer engineering, and mechanical engineering.

* Here are two websites that will give you a sampling of current job opportunities for patent attorneys. The first is a job post from a well-regarded (by patent professionals) patent blog: https://patentlyo.com/jobs. The second is a job post from a recruitment firm that specializes in patent professionals: https://www.wkmclaughlin.com/JobRetrieve.aspx.

* There are jobs for patent attorneys with a background in materials science and engineering (MSE). A good chunk of the clients are in the semiconductor electronics industry. Here though you will be competing with candidates with degrees in electrical engineering, physics, and chemistry. Law firms, in general, prefer candidates who can handle a wider range of clients (usual caveat: ceteris paribus). You will also be competing with candidates with advanced degrees and with candidates with industry experience (who then changed careers to patent law). In general, advanced degrees and industry experience are a plus in distinguishing yourself from other candidates (again: ceteris paribus) .

* There is a niche market that is more narrowly focussed on MSE candidates; e.g., for candidates well versed in austenitic vs. martensitic phases. These clients include, e.g., materials producers and aerospace manufacturers. So here a MSE background will perhaps give you an advantage over candidates with electrical engineering, chemistry, or physics backgrounds. But since there are fewer such clients, there is less demand for patent attorneys in this area. And here again, you’ll be competing against patent attorneys with advanced degrees or industry experience.

* Unless you’ve had previous experience with patent law and know you have a calling, I don’t recommend that you leap directly into law school with an eye on becoming a patent attorney. While you’re still an undergrad, check whether your school has an intellectual property and technology transfer dept (most major universities do), and see if you can get an internship there to find out more about intellectual property law. You won’t learn the ins-and-outs of being a patent attorney, but it will at least give you an exposure to the field, as well as connections to talk to about what life as a patent attorney entails on a day-to-day basis (it’s probably a lot different from what you envision). Even if the university does not have a patent attorney on staff, they can refer you to patent attorneys that the university contracts with to do their patent work.

After completing your undergrad degree, you can also consider becoming a patent agent first (doesn’t require a JD) to see whether you like patent work (although getting your foot in the door will be difficult). If you do, you can go to law school later, if you are so inclined. If you don’t, you can consider getting an industry job, or going for a grad degree. Remember, unlike a PhD program in science or engineering, you generally need to pay your own way for law school. That’s an expensive option; so be sure before you go that route. See my previous Reply #272 for a discussion of a position as a patent agent.

* To become a patent attorney or a patent agent, you need to pass the patent bar exam administered by the United States Patent and Trademark Organization (USPTO). There is a possible glitch with respect to your qualifications to sit for the exam. It’s better that you take care of this while you are still in college, rather than later. The requirements to sit for the exam are given here: https://www.uspto.gov/sites/default/files/documents/OED_GRB.pdf. Of particular note, refer to Sec. III.

The most straightforward way to satisfy the education requirements to sit for the exam is to have a bachelor’s degree in a major listed under Category A. Note that Materials Science and Engineering is not listed; whereas Ceramic Engineering, Metallurgical Engineering, and Mining Engineering are. As you can tell, the list hasn’t been updated for a long time, since you’ll have a hard time finding a US university that grants a major in those subjects anymore; they’ve largely been subsumed under MSE. Nevertheless, that’s the official list. Now one guy claims that he was allowed to take the exam with a MSE degree (see Comment No. 8 at the bottom of https://www.ipwatchdog.com/2009/10/13/does-my-degree-qualify-me-to-take-the-patent-bar/id=6648/).

But here’s the catch. The Office of Enrollment and Discipline (OED) at the USPTO decides whether a MSE degree qualifies. If you call them up to ask, they likely won’t tell you. But if, by chance, they do, nothing they tell you over the phone is binding. The only way to know for sure is to file a formal application, and see whether you qualify or not.

My recommendation is to play it safe, and assume that a MSE degree does not qualify. In that case make sure your undergrad courses satisfy the requirements listed under Category B before you graduate. It’s a lot easier to take care of this now, than after you graduate from law school and then have to take remedial undergrad coursework, if needed. If you don’t qualify under Category A or Category B, your remaining recourse is Category C: passing the Fundamentals of Engineering (FE) exam. But who wants to pass an exam just to qualify to take another exam, if you can avoid it.

Thank you very much for this feedback and great advice. I was under the impression that despite not listing MSE in category 1, I do already meet the requirements for category 2 under option 4 as I have taken chem 1 and 2, physics 1 and 2 and easily 32 credit hours in engineering courses.

So with MSE being more niche as expected, I will most likely go for my masters as this would still help me, even if I decide not to pursue Patent Law. I do thoroughly enjoy research, so perhaps patent law is not for me. But, if I find myself interested in patent law after I get my masters, I could decide to try law school, and the experience from the industry and a masters would help me get ahead in the niche market. Is this a more 'typical' path for someone in Patent Law?

 

[CrysPhys]

So with MSE being more niche as expected, I will most likely go for my masters as this would still help me, even if I decide not to pursue Patent Law. I do thoroughly enjoy research, so perhaps patent law is not for me. But, if I find myself interested in patent law after I get my masters, I could decide to try law school, and the experience from the industry and a masters would help me get ahead in the niche market. Is this a more 'typical' path for someone in Patent Law?

I haven’t a clue what is typical. But here’s what I found from discussions with ~15 patent attorneys I worked with. I was curious why someone would spend 4 yrs pursuing a bachelor’s degree (or even more pursuing a grad degree) in science or engineering, then go to law school. No one I spoke to had a calling early on to become a patent attorney. There were roughly three categories (simplified for ease of discussion).

(1) They completed their bachelor’s; weren’t inclined to continue on to grad school; got a job in industry; had expectations of a rewarding, challenging career; instead found themselves doing repetitive, tedious work; and got bored after a year or so. For example, newbies with a bachelor’s in computer science often ended up writing line after mind-numbing line of code. The fun stuff (analyzing the problems and developing algorithms) were done by those with advanced degrees and more experience. As another example, newbies with a bachelor’s degree in science or engineering often ended up taking measurement after mind-numbing measurement, or preparing sample after mind-numbing sample. The fun stuff (analyzing the problems, designing the experiment, designing new apparatus, and analyzing the data) were done by those with advanced degrees and more experience. Not all newbies find themselves in these scenarios, but many do.

So these people needed to get out of their current rut, and were faced with choices, including go for an advanced degree in science or engineering; go for an MBA and pursue a business career; ... or go to law school and pursue a career as a patent attorney. But caveat here: there can be a lot of tedious, mind-numbing work in patent law as well. So be sure to find out what day-to-day life as a patent attorney is, before you commit to law school.

(2) They completed their master’s or PhD; found a rewarding, challenging career; made a few inventions along the way; applied for patents; got interested in patent law; decided they wanted a change of pace; went to law school; and pursued a career as a patent attorney.

In the good 'ol days, when Megacorps had lots of $$$ to blow, they would even encourage a small number of scientists or engineers with a proven track record to switch to patent law by offering them a trainee position in their patent dept and footing their bill for law school (typically part time). But that was way back when Megacorps considered employees as long-term, valuable assets. I don't know whether such programs exist anymore.

(3) They completed their PhD; maybe a postdoc or two or three; maybe even a stint in industry; found that funding in their area was unstable; got tired of constantly hunting for a new position; heard that patent law is relatively stable (and can pay well); went to law school; and pursued a career as a patent attorney.

***

Since you’ll typically (with a few outliers) need to pay your own way through law school, you need to decide whether the investment will pay off in the long run. I was in my early 50’s when I decided to switch from industrial R&D (got tired of weekly round-robins of layoffs) to patent law. Law school made no sense for me at that point, so I became a patent agent instead.

<<You have a related career question in another thread. I’ll get to that in a bit.>>

 

[CrysPhys]

Relaxed Educational Degree Requirements to Sit for the USPTO Patent Bar Exam

To become a registered patent agent or patent attorney in the US, you must pass the patent bar exam. The requirements for eligibility to sit for the exam are given in the General Requirements Bulletin (GRB) issued by the Office of Enrollment and Discipline (OED) of the United States Patent and Trademark Office (USPTO). The GRB can be downloaded from the OED website:

https://www.uspto.gov/learning-and-...rk-practitioners/becoming-patent-practitioner

One of the requirements for eligibility is possessing the necessary scientific and technical training. An applicant can establish the necessary scientific and technical training via one of three routes: Category A, Category B, and Category C. Category A (discussed below) is the most straightforward and least painful. Category B and Category C (not discussed here; details are in the GRB) entail a lot more grief.

Under Category A, an applicant satisfies the necessary scientific and technical training if he has a specified degree in a specified major [in government lingo, a specified major is referred to as a “recognized technical subject”]. The GRB gives an explicit list of recognized technical subjects. As is common with government protocols, satisfying Category A previously (at least as of July 2021) had some bizarre nuances:

* The applicant needed specifically to have a bachelor’s degree in a listed recognized technical subject. E.g., physics is on the list, but math is not. So if the applicant had a bachelor’s in physics, he was eligible under Category A. But if he had a bachelor’s in math and a master’s or PhD in physics, he was not eligible under Category A. Screwy beyond belief.

* The list was way out of date. It included majors such as “ceramic engineering”, “metallurgical engineering”, and “mining engineering”. Such majors are rare in US universities these days. “Materials science and engineering” is far more common, but that was not on the list.

* An applicant’s major needed to be a near literal match for one on the list. E.g., “biology” is on the list. But if the applicant’s transcript read “biological sciences”, he was not eligible under Category A.

The latest GRB is dated October 2021 and has some substantial (and welcome) changes that make it easier for an applicant to be eligible under Category A [I’m not sure when the changes were introduced, but it was after July 2021]:

* Now an applicant can have a “bachelor’s degree, master’s degree, or doctor of philosophy degree in a recognized technical subject.” So now, e.g., if an applicant has a bachelor’s in math and a master’s or PhD in physics, he is eligible under Category A and no longer needs to jump through the hoops of Category B or Category C. Mr. Spock would nod in approval (maybe even force a smile).

* The list has been expanded to include more up-to-date majors, including “materials science” and “materials engineering”. The oldies-but-goodies remain: so don’t worry if you have a degree in “textile engineering” or “mining engineering” ... they're still there.

* There is now more flexibility in the wording of the degree on your transcript; a literal match is not required. To quote the OED:

“The Office will accept degrees where the transcript demonstrates equivalence to a Category A degree (for example, molecular cell biology may be equivalent to biology and materials science and engineering may be equivalent to materials science).”

This is good news for materials guys. For some bizarre reason, “materials science and engineering” (a common major these days) is not on the official list, but “materials science” and “materials engineering” separately are.

 

[Nascent2e3]

This thread has been a gold mine. I'm a PhD Physics student finishing up my thesis work and have come across an opportunity to get a patent technical analyst job (which can transition into a patent agent job after passing the patent bar). My question is more on the pay structure, and what's normal in the industry.

It seems the firm operates with two pay systems:
1) Minimum salary with bonuses for "billing" over a certain amount.
2) Straight commission from "billing."

My first question is, what is meant by "billing"? This seems to be a common term for the legal profession, but I'm more used to that being strictly on the client/admin side of the business relationship; this sounds almost like you're billing your employer.

Second, is it normal to have this sort of structure in a law firm for patent agents? I was thinking it would just be a salaried position, so this took me aback a little and I'd like to understand it more. I'm all for more flexibility and control over my earnings (and the job, area, and employees so far all sound like a great fit for me!), but I don't want to live like a contractor.

Thanks for any guidance!

 

[CrysPhys]

This thread has been a gold mine. I'm a PhD Physics student finishing up my thesis work and have come across an opportunity to get a patent technical analyst job (which can transition into a patent agent job after passing the patent bar). My question is more on the pay structure, and what's normal in the industry.

It seems the firm operates with two pay systems:
1) Minimum salary with bonuses for "billing" over a certain amount.
2) Straight commission from "billing."

My first question is, what is meant by "billing"? This seems to be a common term for the legal profession, but I'm more used to that being strictly on the client/admin side of the business relationship; this sounds almost like you're billing your employer.

Second, is it normal to have this sort of structure in a law firm for patent agents? I was thinking it would just be a salaried position, so this took me aback a little and I'd like to understand it more. I'm all for more flexibility and control over my earnings (and the job, area, and employees so far all sound like a great fit for me!), but I don't want to live like a contractor.

Thanks for any guidance!

Welcome to the Dark Side! Compensation options in a firm (I assume you mean a law firm. Is this correct?) is messy, further made messier because different firms use different terminology (sometimes in opposite ways). You need to tred carefully in deciding. I'll give you the sordid details in a detailed response later (probably by tomorrow).

 

[Nascent2e3]

Welcome to the Dark Side! Compensation options in a firm (I assume you mean a law firm. Is this correct?) is messy, further made messier because different firms use different terminology (sometimes in opposite ways). You need to tred carefully in deciding. I'll give you the sordid details in a detailed response later (probably by tomorrow).

Thank you! I'm excited about the position, but I don't want to jump into it without understanding the nuances of something as paramount as pay. Looking forward to your reply.

 

[Nascent2e3]

And yes, this is a private, patent law firm; 2 partners and maybe 20 employees, about half of whom are patent agents and the other half technical analysts (and I think maybe two other patent attorneys who aren't partners).

 

[CrysPhys]

(a) There is the old cliché, “Time is <metaphorically> money.” But in a law firm, “Time is literally money!” If you are to thrive ...or even merely survive... in a law firm, this precept needs to become engrained in you. Details of billing practices (explained below) will vary with the specific firm, but typically you will need to account for every working hour; or, more precisely, every working tenth hour. Typically, once a week, you will need to submit a time sheet providing details of what you did the previous week (with a granularity of one-tenth hour).

(b) Time is partitioned into various buckets. Again, details will depend on the firm. Typical principal buckets are the following:

(1) “Billable”*: These are hours you spend working on a client’s job (e.g., drafting a new patent application or responding to an office action). These are hours that could be potentially billed to a client.

(2) “Billed”*: These are hours that are actually billed to a client; i.e., the hours that a client is actually charged for.

* I will clarify below the distinction between “billable” and “billed”. But carefully note that some firms interchange the definition of “billable” and “billed” from the ones I use here; so check what convention your specific firm uses.

(3) “Non-Billable (Tracked)”: These are hours that you do not spend on a client’s job, but the firm still wants them tracked. Examples are hours spent in a group meeting discussing changes in the firm’s organization; hours spent learning about changes in the patent law resulting from recent court decisions; hours being trained in new software installed by IT; hours spent in diversity/ethics/sexual misconduct/... classes; ...

(4) “Non-Billable (Not Tracked)”: These are hours that you do not spend on a client’s job, but the firm does not track them. These include obvious personal time: lunch and coffee breaks, bathroom breaks, physical exercise breaks (critical to your health when working in a law office), ... But they also include essential work-related (but not client-specific) tasks, such as planning your work schedule, filling out your time sheet, and organizing your files.

(5) Distinction between “Billable” and “Billed” Hours. [Below I will use examples of rates and charges. These are purely for simplified hypothetical discussion and are not intended to be representative of what you should expect.] You will be assigned a billing rate; let’s assume it’s $300/hr. Let’s further assume that you are drafting a new patent application for Client X, and the total time you spend on the job is 40 hrs. All those 40 hrs are billable; i.e., Client X could potentially be charged 40 hrs x $300/hr = $12,000 for the time you spent on the job.

- In the absence of any other contractual restrictions, all 40 hrs would actually be billed to Client X; i.e., Client X would receive a bill for $12,000 for your time. [For a newbie, this would be unlikely. A client cannot be expected to cover the costs of bringing you on board. Even if there is no contractual limit, your supervising partner will likely cap your charges at what he would consider reasonable.]

- But suppose the contract with Client X stipulated that he would be billed at $300/hr, subject to a cap (maximum fee) of $9,000 for hours worked. Then Client X would receive a bill for $9,000 for your time. Since $9,000/($300/hr) = 30 hr, effectively only 30 hr is actually billed to the client. [In some instances, depending on the firm, your effective billed hours could be even less if other people (e.g., a senior guy who reviews your work or a paralegal who handles the filing) also charge hours to the same job.]

- Now suppose that Client X is a MegaCorp (Google, Microsoft, AT&T, IBM, Boeing ...) that has negotiated a large-volume, low flat-rate contract with your firm. Suppose the contract specifies a low flat rate of $6,000 per new patent application, regardless of actual time spent on it [sometimes, there are different tiers of flat rates, depending on the estimated complexity]. Since $6,000/($300/hr) = 20 hr, effectively only 20 hr is actually billed to the client. [Again, as discussed above, in some instances, depending on the firm, your effective billed hours could be even less if other people also charge hours to the same job.]

- The ratio of effective billed hours/billable hours is your “efficiency”, again depending on the firm. Your average efficiency is tracked at least yearly (and sometimes more frequently, especially during your first year). In patent prosecution work (preparing new applications and responding to office actions), your average efficiency is rarely 100%, even for competent, experienced workers. In your early months as a newbie learning the trade, it will likely be dismally low (say, ~25%). By the end of the year, if you are successful, it will likely be ~50%. By the end of the third year, if you are successful, it will likely plateau at ~80% (with ~85% being considered excellent). [Note: Different rules apply for patent litigation (work involving patent lawsuits). But from your description of your firm, it’s likely that the firm is primarily involved with patent prosecution.]

(c) With all that in mind, I will now turn to your question of compensation. The two options you listed are indeed common, and there are other variations as well. But I’ll stick to the two presented to you, but in order of simplicity.

(1) Commission/Percentage Billed. This is easy. You get paid a set percentage of the fee that the client is actually charged for your time (regardless of the number of hours you actually spent). [Note: The client also pays for other fees, such as filing fees. Here, we are concerned only with the fees for your time.] So, what is a reasonable percentage? The starting point is “the rule of three”. As a rough initial estimate, for every $ a client pays for work, one-third goes to you (person who does the work), one-third goes to the partners, and one-third goes to overhead (such as office lease, office equipment, and support staff). So the starting point is ~33%. For a newbie, the low end is ~25%. For an experienced person, the high end is ~$50% (and in exceptional cases, could be higher). Again, clarify whether any adjustments are made for other people who charge hours for the same job.

- If you choose this route, find out whether you will be hired as an employee of the firm, or as an independent contractor.

- The plus side for the firm is that there is less risk (i.e., they pay you on the basis of how much money clients actually pay for your work, rather than pay you a salary based on an estimate of how much money clients may pay for your work).

- The plus side for you is that there is less pressure on you to meet a required minimum number of billable or billed hours per year (see further discussion below). Under some circumstances, this may be worth it (see further discussion below).

- The negative side for the firm is none that I see (other than you leaving for a better deal).

- The negative side for you is considerable:

* You don’t get a steady income stream each month. This route is viable only if you have a buffer of ~3 months expenses in the bank, or if you have a spouse with an adequate steady income stream each month. If you don’t work (vacation, holidays, out sick), you don’t get paid. If it’s a slow month, you get paid less. If it’s a busy month, you get paid more. Furthermore, there is also a lag between the time you do the work, the time the bills are sent out, and the time you’re paid. So a buffer is especially critical for your first several months on the job (e.g., you might get little, or even no, pay your first month). Once you’ve established a queue of completed jobs, your monthly revenue stream is more stable.

* If the firm loses major clients and there isn’t enough work to go around (even temporarily), you’re more vulnerable than salaried employees. Salaried employees get paid even when work slows down (as long as they’re still employed), so what work that does come in will typically go to them (with the exception of niche cases in which only you are technically qualified to handle). Whereas, if you don’t get work, you don’t get paid.

* You’re vulnerable to being assigned complex, low flat-rate cases. The concept of flat-rate cases is based on the premise that some cases are easy, some cases are hard, and most cases are moderate: over the course of the year, the time you spend per case will average out to something in the middle (target hours per case). But, a partner might abuse you by assigning you a constant stream of hard cases (particularly since you have a PhD Physics): after all, you get paid the same, regardless of how many hours you spend; whereas, if the case is assigned to a salaried employee, he will exceed his target hours per case and be penalized with reduced efficiency (see discussion above on efficiency), which reflects negatively on the partner as well.

(2) Salary plus Bonus. You get paid a steady salary (typically once every two weeks or once a month, depending on the firm) in return for an expected minimum number of billable or billed hours (depending on the firm) plus an end-of-the-year bonus based on the number of billable or billed hours that you exceed the minimum. It’s important to clarify up front whether your firm bases salary on billable or billed hours (and what convention they use for these terms).

- The big plus side for you is that you receive a steady income stream, and you have the potential for a substantial bonus (depending on how many extra hours you work). The big down side for you is that you’re under constant pressure to meet your minimum number of hours (and, in some firms, to exceed your minimum number of hours; that is, you’ll get a poor rating if you just barely meet the minimum).

- Check carefully what the required minimum is (and again whether the hours are billable or billed). If given a choice, you’re better off with a lower salary and a lower required minimum. Otherwise, it’s easy to burn out trying to achieve high minimums.

As an example, assume you want to attain 8 billable hrs a day. To do this, you will likely spend at least 10 hrs/day at the office: 8 billable hrs + 1 hr non-billable (tracked) + 1 hr non-billable (not tracked). So a 50-hr work week will yield 40 billable hrs. If you were to work all 52 weeks a yr at this pace, you would attain 2080 billable hrs a yr, which yields 1040 billed hrs a yr at 50% efficiency and 1664 billed hrs a yr at 80% efficiency. But, if you were to effectively work 48 weeks a yr (to account for vacation, holidays, and sick days), you would attain 1920 billable hrs a yr, which yields 960 billed hrs a yr at 50% efficiency and 1536 billed hrs a yr at 80% efficiency. So, if a firm offers you a great salary in return for 2000 billed hrs minimum, the workload will be heavy at 80% efficiency, and dangerously unhealthy at 50% efficiency.

******

I’ll stop here, since this is a lot to absorb. I’m sure you’ll need clarification. Feel free to ask away. I’ll also post separately on why dollar compensation should not be the number one priority for a newbie.

ETA: Also inquire about options for medical insurance (in particular, if you're married and can get insurance through your spouse).

 

[CrysPhys]

You will find that patent prosecution in a law firm is radically different from research in a university lab; in particular, you will have severe time constraints on completion of your tasks. Patent prosecution is best learned in a master/apprentice (mentor/protégé) mode. The first year is critical. Far more important than $ compensation is receiving high-quality training from a good mentor (or a couple of good mentors). Ask how you will be brought on board. Will you be left to forage on your own? Will you be dependent on begging help from other staff (remember: they have their own billable/billed hours to meet)? Will you be assigned to a senior member who has the specific responsibility for mentoring you?

​

 

[Nascent2e3]

Thank you! The information on billing makes the terminology and descriptions I heard from other employees much more clear. Just to be sure I understand it properly, if I end up getting an offer and it's the salary+bonus model (which it will be from what I understand), I'll need to know the expected, minimum billable hours per year they feel justifies the salary (and how the bonus structure works, of course), and also what the structure for billable vs billed hours worked looks like for compensation and performance metrics. Makes sense.

You will find that patent prosecution in a law firm is radically different from research in a university lab; in particular, you will have severe time constraints on completion of your tasks. Patent prosecution is best learned in a master/apprentice (mentor/protégé) mode. The first year is critical. Far more important than $ compensation is receiving high-quality training from a good mentor (or a couple of good mentors). Ask how you will be brought on board. Will you be left to forage on your own? Will you be dependent on begging help from other staff (remember: they have their own billable/billed hours to meet)? Will you be assigned to a senior member who has the specific responsibility for mentoring you?

This is very useful information for an interview; I'll be sure to bring this up and get a clear understanding of how the training process works. I could easily see how being left to fend for yourself would be probably really annoying when you go to other staff members as every hour they spend with you is an hour they can't bill, so it's literally taking away their pay (or increasing their work load).

Thank you again for this treasure trove of useful information! It's nice getting a STEM perspective to the working of a law firm; most stuff I was finding online was a lawyer's perspective, and that wasn't nearly as helpful.

 

[CrysPhys]

Thank you! The information on billing makes the terminology and descriptions I heard from other employees much more clear. Just to be sure I understand it properly, if I end up getting an offer and it's the salary+bonus model (which it will be from what I understand), I'll need to know the expected, minimum billable hours per year they feel justifies the salary (and how the bonus structure works, of course), and also what the structure for billable vs billed hours worked looks like for compensation and performance metrics. Makes sense.

<Emphasis added.> You've got it. But again, clarify whether they use minimum billable or minimum billed hours for their target (and what convention they use for their terms).

This is very useful information for an interview; I'll be sure to bring this up and get a clear understanding of how the training process works. I could easily see how being left to fend for yourself would be probably really annoying when you go to other staff members as every hour they spend with you is an hour they can't bill, so it's literally taking away their pay (or increasing their work load).

<Emphasis added> Yes, this really shapes the work culture. When I first started, I chatted with an experienced patent agent for general helpful hints. He looked at his watch, and said "I've just spent 15 min talking to you. You just cost me $50." So it's not like in grad school, where you can just drop by another office or lab and ask for help. It was a bit easier for me because the other patent practitioners in the firm I started out at mainly had a BS in Comp Sci, and little or no industry experience. I had a PhD Physics and 20+ yr industrial R&D experience. So I became the go-to guy when they ran across some complex math, science, or engineering issue they were bogged down in. In return, they helped me with the formal patent law issues. Reciprocal bartering of time and knowledge.

 

[Astronuc]

You will find that patent prosecution in a law firm is radically different from research in a university lab; in particular, you will have severe time constraints on completion of your tasks. Patent prosecution is best learned in a master/apprentice (mentor/protégé) mode. The first year is critical. Far more important than $ compensation is receiving high-quality training from a good mentor (or a couple of good mentors). Ask how you will be brought on board. Will you be left to forage on your own? Will you be dependent on begging help from other staff (remember: they have their own billable/billed hours to meet)? Will you be assigned to a senior member who has the specific responsibility for mentoring you?

This applies very much to national labs and other FFRDCs, and private consulting firms.

 

[CrysPhys]

This is very useful information for an interview;

* Also at your interview, ask about their mix of clients: independent inventors, small companies, medium companies, MegaCorps? Do they have a diversified client base, or are they dependent on only a few major clients (because if only one major client drops out, the firm will take a big hit)?

* Ask how most of their clients are billed: by the hour, by the hour with cap, or low flat rate? Independent inventors often can't afford to pay much and often don't bring repeat business; and MegaCorps clients often negotiate large volume, brutally low flat-rates. Small and medium companies often are the sweet spot.

* Ask about how much pending work they typically have in queue.

* Ask about the mix of work; e.g., new applications vs. US filings of foreign applications vs. responses to office actions vs. foreign applications (filing international PCT applications and working with foreign firms to file applications outside the US). E.g., some firms specialize in US filings of foreign applications and responses to office actions: that is, a client has already filed an application outside the US (e.g., in a European or Asian country), the US firm files the same application in the US and responds to office actions issued by the US Examiner. In these firms, you will get little or no experience drafting a new application from scratch. The goal is to gain as much experience in as large a variety of patent-related tasks as possible.

 

[mbrmbrg]

I have been working as a "technical consultant" (a.k.a. patent agent trainee) for about 3 years now, and the time has come for me to prepare for and sit the USPTO bar exam. Can anyone recommend a particular online prep course for the USPTO bar exam?

People at my firm have recommended The Patent Review Group, which seems to no longer be in business. I've done a few hours of research and I am less than impressed with the websites and/or demos of OmniPrep, PatBar, and the Patent Education Series.

PLI looks promising, but I'm hesitant to drop $3k (of my firm's money, but still) without a demo, or at least recommendations from someone I trust (here's looking at you, PF!).

I appreciate your input!

 

[CrysPhys]

I have been working as a "technical consultant" (a.k.a. patent agent trainee) for about 3 years now, and the time has come for me to prepare for and sit the USPTO bar exam. Can anyone recommend a particular online prep course for the USPTO bar exam?

People at my firm have recommended The Patent Review Group, which seems to no longer be in business. I've done a few hours of research and I am less than impressed with the websites and/or demos of OmniPrep, PatBar, and the Patent Education Series.

PLI looks promising, but I'm hesitant to drop $3k (of my firm's money, but still) without a demo, or at least recommendations from someone I trust (here's looking at you, PF!).

I appreciate your input!

I'll give you a bit of background history so you'll understand why many previous prep courses are no longer effective or have gone kaput. Up until the end of 2003, the patent bar exam was offered twice a year via paper in person at the USPTO. Copies of previous paper exams, along with the official answers, were published by the USPTO. The last published exam was from Oct 2003.

In mid 2004, the USPTO switched over to the current on-demand computer-based exam taken at designated computer test centers. Up until ~2010, the bank of test questions didn't change much. Many of the questions were the same as, or variations of, questions published from the 2000 - 2003 exams. Exam takers also posted on forums what questions had appeared on their most recent test (to the best of their recollection).

So several prep companies merely took the old published questions and answers and recast them in a computer-based format to simulate the actual test. Some prep companies also scoured forums for new questions and added them to their test bank. Again, these questions were reported from memory, and, of course, there were no official correct answers.

After ~2010, the USPTO started changing their bank of test questions more substantially and more frequently. So prep courses based on the old published exams were no longer effective. And starting ~2012 (don't remember the exact year), test takers had to sign an NDA agreeing not to disclose test questions. So posting questions on forums dried up as well.

I used a prep course that is now kaput. What I can say is second hand. I've helped around 5 scientists/engineers make the transition to careers as patent agents. They had already passed the patent bar; they had no need for advice on prep courses. When I asked them what prep course they had taken, they all replied PLI. Note: PLI offers a substantial student discount; and each of them had taken the course when they were still students.

So, PLI works. I think I know how they keep current (especially given substantial changes in patent law over the last decade or so), while others don't. But I don't want to speculate on a public forum. The only downside is it's the most expensive. But if your firm is covering it (or if you're a student), then go for it. And the cheaper ones will likely be money down the drain.

I'll send you a private message containing a link to an intellectual property law forum. It's been dormant of late. But you can post your question there for other opinions (one of which will likely be a response from a PLI exec who monitors that forum). There is a subforum that includes threads for those prepping for the patent bar.

 

[mbrmbrg]

I'll give you a bit of background history so you'll understand why many previous prep courses are no longer effective or have gone kaput. Up until the end of 2003, the patent bar exam was offered twice a year via paper in person at the USPTO. Copies of previous paper exams, along with the official answers, were published by the USPTO. The last published exam was from Oct 2003.

In mid 2004, the USPTO switched over to the current on-demand computer-based exam taken at designated computer test centers. Up until ~2010, the bank of test questions didn't change much. Many of the questions were the same as, or variations of, questions published from the 2000 - 2003 exams. Exam takers also posted on forums what questions had appeared on their most recent test (to the best of their recollection).

So several prep companies merely took the old published questions and answers and recast them in a computer-based format to simulate the actual test. Some prep companies also scoured forums for new questions and added them to their test bank. Again, these questions were reported from memory, and, of course, there were no official correct answers.

After ~2010, the USPTO started changing their bank of test questions more substantially and more frequently. So prep courses based on the old published exams were no longer effective. And starting ~2012 (don't remember the exact year), test takers had to sign an NDA agreeing not to disclose test questions. So posting questions on forums dried up as well.

I used a prep course that is now kaput. What I can say is second hand. I've helped around 5 scientists/engineers make the transition to careers as patent agents. They had already passed the patent bar; they had no need for advice on prep courses. When I asked them what prep course they had taken, they all replied PLI. Note: PLI offers a substantial student discount; and each of them had taken the course when they were still students.

So, PLI works. I think I know how they keep current (especially given substantial changes in patent law over the last decade or so), while others don't. But I don't want to speculate on a public forum. The only downside is it's the most expensive. But if your firm is covering it (or if you're a student), then go for it. And the cheaper ones will likely be money down the drain.

I'll send you a private message containing a link to an intellectual property law forum. It's been dormant of late. But you can post your question there for other opinions (one of which will likely be a response from a PLI exec who monitors that forum). There is a subforum that includes threads for those prepping for the patent bar.

Thank you very much, your answer is very helpful!

 

[Nascent2e3]

Thought I'd follow up here: I took the job and have been working it for a little over a month. So far, I love it! The tech is interesting, the work is stimulating, and I get back to my logic roots. I will miss the math, but this is logic and math is logic so I can fool myself into thinking it'll be the same thing. All in all, I couldn't ask for a better job. I'm so much happier with this than engineering or computer science.

 

[CrysPhys]

Thought I'd follow up here: I took the job and have been working it for a little over a month. So far, I love it! The tech is interesting, the work is stimulating, and I get back to my logic roots. I will miss the math, but this is logic and math is logic so I can fool myself into thinking it'll be the same thing. All in all, I couldn't ask for a better job. I'm so much happier with this than engineering or computer science.

Congratulations! Thanks for the update; far too few posters take the time to let us know how things worked out.