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Anyone considering a career as a patent attorney?

  1. May 1, 2018 #301
    Do you have a question, or are you just passing on advice, based on your conversations with some attorneys, not to go to law school?
     
  2. Jul 11, 2018 #302
    I am not sure if this thread is still alive. If it is, I would like to know what is the typical path to take to become a patent examiner or agent or attorney, when I have a PhD degree in astrophysics. Thanks.
     
  3. Jul 11, 2018 #303

    berned_you

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    At this stage you simply need to apply. No prior experience is necessary, they will train you how to do the job. https://www.uspto.gov/jobs/join-us
     
  4. Jul 11, 2018 #304
    Thanks @berned_you. I do not see any job for physicists on USPTO website as of now. How about jobs in private law firms? What to consider when applying to the private jobs?
     
  5. Jul 11, 2018 #305

    berned_you

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    For any sort of private job you will want to have taken the patent bar examination. You can self-study or take a review course. I think it's easiest and "best" to start your career in patent law at the patent office. It's not required but will be easier because they do a great job training and it'll will indicate to future employers that you can do the job.
     
  6. Jul 11, 2018 #306
    (1) With respect to a job in a law firm:

    (a) You can apply immediately for a position as a technical specialist. With regard to patent prosecution, you will be trained to write applications and respond to office actions. Your responsibilities are essentially the same as that as a patent agent, with a few restrictions because you cannot formally represent a client before the USPTO. For example, a registered practitioner (patent agent or patent attorney) has to formally sign documents (that you have prepared) that are submitted to the USPTO; and a registered patent practitioner has to formally conduct an Examiner's Interview (that you will participate in). Some technical specialists will provide subject-matter expertise for patent litigation as well. The advantage to this approach is that there is no upfront expenditure in time and money preparing for, and passing, the patent bar (after all, you might not like life in a law firm).

    Some firms will hire you as a technical specialist; and, if you work out, they will reimburse you (at least partially) for prep fees and exam fees related to the patent bar. Once you pass the patent bar, you become a registered patent agent.

    (b) You can study for, and pass, the patent bar on your own dime and time. You formally become a registered patent agent. You then apply for a position as a patent agent. The advantage to this approach is that it demonstrates to law firms that you are serious about a career in patent law.

    (2) With respect to actually landing a newbie position (whether as a technical specialist or patent agent), that depends on how closely your technical background maps with the needs of the firm's clients. Training newbies requires a substantial investment in time and money for the firm. If your specialty were in, e.g., device physics or solid-state physics, you'd probably have a good shot. I don't think there's much demand for astrophysics, so you'll need to package and present yourself properly (high-level math, software, ...).

    (3) If you go the patent examiner route, note that you will not receive the bread-and-butter training that law firms are looking for. At a law firm, you will primarily write applications and respond to office actions (some other activities as well). As an Examiner, you will examine applications and write office actions. The work is mainly complementary. If you later decide to leave the USPTO and apply for a position at a law firm, some firms will look favorably upon a couple of years experience as an Examiner, since you have the inside scoop on how the USPTO works and understand the basics of patent prosecution. But you still will require substantial time and money to be trained to write applications and respond to office actions (as well as getting used to working with a billable clock ticking away, though Examiners have their own time constraints); so don't expect a stint at the USPTO to be a guaranteed ticket to a position in a law firm.

    (4) To become a patent attorney, you need to go to law school, earn a JD, and pass the patent bar (before or after the JD). Given the time and $$$ involved, I would suggest working as a tech spec or patent agent first to see whether you like the work and are good at it. Some firms will provide at least partial reimbursement for law school if you work out. If you work at the USPTO, I believe there is (or at least was) some program for attending law school [you need to check what the latest policy is, since it changes].
     
    Last edited: Jul 11, 2018
  7. Jul 11, 2018 #307
    Are you a fresh PhD, or do you have work experience?
     
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