1. PF Contest - Win "Conquering the Physics GRE" book! Click Here to Enter
    Dismiss Notice
Dismiss Notice
Join Physics Forums Today!
The friendliest, high quality science and math community on the planet! Everyone who loves science is here!

Anyone considering a career as a patent attorney?

  1. Aug 26, 2017 #281
    I thought of one more question :wink:

    7. How can I find out if I have a talent for law besides going to law school?
  2. Aug 28, 2017 #282
    If you want to find out whether specifically patent prosecution (not law in general) is right for you, you can apply for a position as a technical specialist at a law firm. Alternatively, you can pass the patent bar exam and apply for a position as a patent agent. I don't know what the demand for a PhD in Chem Eng right now is though; you'll need to check with some firms.
  3. Aug 28, 2017 #283
    Can address only job prospects (I never went to law school). Your specific PhD thesis topic per se is not important. Law firms first screen by field and degree. Note that fields such as chem eng and chem are broad and overlap, but often the first screening is with a HR software filter. If the posting is for a PhD in chemistry only [rather than chemistry or chemical engineering], your PhD in chemical engineering might not get through. You then need a special in (e.g., a personal referral to a hiring partner) for you to bypass the HR software filter and explain why, even though your degree is chem eng, you still qualify for the position. Assuming you get by the first hurdle, the next is a broad match between your research experience and the industry sectors of the firms clients: if the clients are in the oil and gas industry, and your research was related to oil and gas, then that's a good match; if the clients are in the semiconductor industry, and your research was related to semiconductor processing, then that's a good match. If you don't have a good match, whether you still get hired or not will depend on the qualifications of the other competing applicants and how quickly the firm needs to fill the position.

    The usual suspects: Mandarin, Japanese, and Korean. Chem Eng is not my field though, and I don't know how advantageous knowledge of those languages are for Chem Eng specifically. For fields such as semiconductors, telcom, data comm, and computers, I have seen postings in which fluency in at least one of those languages is required.
  4. Aug 29, 2017 #284
    What about other roles like paralegals?

    I read that law firms and tech companies will help employees take the Patent Bar. I hear contrasting opinions on law school though - some say employers don't encourage pursuing a law degree while some say that employers will go as far as funding law school. What is your perspective?

    Thanks for answering my questions :smile:.
  5. Aug 30, 2017 #285
    1. You definitely do not want to apply for a paralegal position.

    (a) The responsibilities of paralegals vary with the firm and with the branch of law. But, in general, paralegals serve an administrative support role, one step up from legal secretaries. In patent prosecution specifically, they do not perform any substantive technical function: they do not prepare applications and they do not respond to office actions. They perform various functions such as: file applications and responses to office actions prepared by attorneys and agents, fill out the proper forms, pay the proper fees, track work items, and send correspondence to clients.

    (b) Very few firms hire paralegal trainees. Even if you were to find a firm that does, there would be a low probability that it would hire you: a PhD in Chem Eng would likely not stick around. There are various routes to become a paralegal. Most of the paralegals I know have a two-years associates degree in paralegal studies and a paralegal certificate. Many firms further require passing a national certification exam. It makes no sense for you in your present situation to take additional coursework and exams just to become a paralegal.

    (c) Even if you were to pull this off, though, being a paralegal will hurt you in the long run should you later apply for a position as a tech spec, patent agent, or patent attorney. A hiring manager would shake his head in bewilderment, “Why is a PhD in Chem Eng working as a paralegal instead of as a tech spec or patent agent?”

    2. Once upon a time (pre-2000), major Megacorps (AT&T, IBM, GE, ...) had extensive in-house patent depts and had special programs in which experienced scientists and engineers with an interest in patent law could transition to a tech spec to a patent agent to a patent attorney at company expense. Such programs may still exist, but are a lot less common now. Even in the good ‘ol days though, fresh grads were not hired into these programs; they were targetted for scientists and engineers with at least 5 yrs R&D experience within the company. I assume because you are asking about law school now, you don’t want to first work in an industrial R&D lab for 5+ yrs. In which case, forget about trainee programs within a tech company.

    3. That leaves you with law firms. As I mentioned previously, you can either apply for a position as a tech spec or pass the patent bar and apply for a position as a patent agent. There are a few firms that offer a career path from tech spec to patent agent to patent attorney, with at least partial subsidy for patent bar prep and part-time law school. There are more large firms that provide at least partial subsidy for part-time law school. Small and medium firms generally do not provide subsidies (although there are exceptions, if you perform well and the boss likes you). The most expensive online patent bar prep course is ~$2900, but discounted to ~$1900 if you are still a student [from your other post, I understand you have not completed your PhD yet, and are still technically a student]. You will likely have more options if you pass the patent bar on your own (shows prospective employers you’re serious about patent law), so I wouldn’t let patent bar exam expenses be a deciding factor (on top of the cost of the prep course, allow ~$500 for application, exam, and registration fees).

    4. But again, before you proceed, find out what the demand for a PhD in Chem Eng is. Start with the tech transfer dept at your university. Ask for referrals to patent firms that the university uses.
  6. Aug 31, 2017 #286
    5. By the way, what is your undergrad degree in? Qualifications to sit for the patent bar exam are based on your undergrad degree. Full details can be found here:

  7. Sep 9, 2017 #287
    I like this topic and thanks for starting the conversation. I might have missed it but has anyone commented on how secure the job as a patent attorney is? (compared to non-tenure track postdoc jobs)?
  8. Sep 9, 2017 #288
    Perhaps you should clarify what country you're talking about, and what you mean by "non-tenure track postdoc jobs". In the US, a postdoc is a limited-term position. Are you referring to non-tenure track faculty positions? Are you referring to industrial R&D jobs after receiving a PhD? Or something else?
  9. Sep 10, 2017 #289
    Hi there, I am in Australia and postdoc life here can last 7-8 years or so (moving from one to another without being able to make it to the next level). Many academic positions here are fixed terms, only 3-4 year contracts and no promise of further employment even if they perform well and tenure positions are pretty rare. How does it work in patent attorney, do you have some job security provided that your performance is good?
  10. Sep 10, 2017 #290
    In that case, you should check with an Australian patent attorney before considering a career shift; I can comment only about the US. The requirements for patent practitioners (with and without law degrees) vary considerably from one country to another. So you should find out the degree, exams, and training requirements first, and also ask about long-term career stability. I can say one thing about patent law in general (regardless of country): experience is a great plus, so you're less likely to be replaced by someone younger and cheaper once you've become an experienced patent practitioner.
  11. Sep 11, 2017 #291
    Hello. Thank you for this thread. I found it really helpful and relevant for the career path I am planning to take.
    I am currently a PhD student with a major in Chemistry and I will be graduating by next year. Afterwards, I am planning to undertake law studies for 1 year with a Master of Laws in Intellectual Property major in Transnational IP and Information Technology (LL.M). Then, I plan to undergo a 1 year traineeship in a law firm before taking the bar exam for patent attorney/agents. I participated in many summer schools and trainings that involve intellectual property law since I'm very much attracted to it.

    I would like to ask for your suggestion on a more efficient way of becoming a patent attorney/agent, or recommendations with regards to my career plan.
    I think I am getting old right now (25 years old) so I really should be starting to work outside the University setting. I actually did not have any other work experience aside from doing research works in the University.

    Finally, I am quite confused with regards to the status I have when taking the bar exam and if I pass it, what job description would be relevant for me? Patent attorney or patent agent? I know having a Master of Laws (LL.M) degree would not make you a lawyer. From the previous discussions, I noticed that many science degree holders could become patent agents if they pass the bar exam given by the USPTO or EPO. Would LL.M holders become patent attorneys or agents when they pass the bar exam?

    Thank you.
  12. Sep 11, 2017 #292
    You need to rewind and clarify your situation. You have another post in which you introduce yourself as a new member from Japan. So are you a Japanese citizen studying in Japan and planning to work in IP in Japan? If not, please explain your situation. As I mentioned previously, the requirements to become a registered patent practitioner vary from country to country. In particular, don't co-mingle USPTO and EPO. It is also important to consider any citizenship requirements.
  13. Sep 12, 2017 #293
    Thank you very much for your reply. I am not a Japanese citizen though I am mixed Japanese-Filipino. I also did not elect Japanese citizenship despite living in Japan for several years now and I still hold my Philippine passport. There are fundamental differences in the USPTO, EPO, and JPO that were discussed in our course in IP law but I did not know about the nationality (Staatsangehorigkeit) requirement. Hmmm... If I consider that dilemma, would obtaining another citizenship (dual citizenship) solve the issue? Uhm, I am not planning to work for IP in Japan but in Europe because of the well-structured IP system and knowledge-based economy. Thank you.
  14. Sep 13, 2017 #294
    In your situation, some issues for you to consider:

    (1) Titles such as "patent attorney", "patent agent", "patent engineer", and "patent representative" are not standardized internationally. Some titles are used in Country A, but not in Country B. Some titles are used in both Country A and Country B, but have different meanings with respect to qualifications and responsibilities. So what your actual position will be called will depend on the country in which you are employed.

    (2) If you are specifically interested in practicing before the EPO, carefully check the requirements (such as degree, citizenship, residence, language, ....). A good place to start is here: http://www.epo.org/learning-events/eqe/about.html [note in particular the requirement to have worked as a patent trainee prior to taking the exam]. Since you are taking IP law courses, I would recommend that you ask your profs for referral to some EPO law firms; contact them directly to clarify what the work requirements are and whether they would be interested in someone with your background [if you are fluent in Japanese, that will be a plus, since many major Japanese corps file in the EPO]. Also, remember, in addition to the EPO, each European country has its own national patent office. So, if you apply to a law firm in Germany, for example, the firm may also want you to qualify to practice before the German patent office. This may entail additional requirements to those required for practicing before the EPO. Hypothetically, let's say you need to be fluent in German. Are you fluent in German? If not, should you become fluent in German prior to applying? You want to find out all these details in advance and remedy any deficiencies while you are still at the university. Do you have a preference for which European country you want to live in? As far as patent activity, an EPO patent attorney once told me that, among European countries, the country that originates the most number of patent applications is Germany. But, if you prefer the ambience in France, that's your call. But then evaluate the job opportunities in Germany vs France; again, German law firms may have different requirements from French law firms ... so you want to find out in advance.

    (3) Are you planning to study for the LLM for your own interest, or because you think it will help land you a position with a law firm? If the latter, again check with law firms in advance to see whether it will in fact help you land a position or not.
    Last edited: Sep 13, 2017
  15. Sep 13, 2017 #295
    Thank you very much for your response. I find it very relevant and informational.

    1) As to this item, I am planning to study and work in Germany. I will ask my German friends concerning the conditions and policies in Germany with regards to practicing IP law, and the concomitant title that is given to them.

    2) I am fluent in Japanese in a conversational and technical (Chemistry) level but not in law. Hence, I will be taking advanced Japanese courses from now on. I had a 60 hours German class in Germany last time, and now that I'm in Japan, I'm attending more classes in German. When my LL.M. studies commence, I think I could gather more information regarding the conditions on practicing IP law in Germany, and in EPO.

    3) I am planning to study LL.M for my own interest. I think at this level, my knowledge on IP law is very fundamental. I think it would be better to acquire a law degree even for a 1-year study. I think, the professional connections I acquire at that time will help me further my career plans.

    Once again, thank you very much! ありがとうございます。
  16. Sep 14, 2017 #296
    Is a patent attorney an option for someone with a BSc in physics? If so how desired are there? If not, would I need to go get a PhD?

    Thank you for your response
  17. Sep 14, 2017 #297
    A BS in physics will satisfy the educational requirements for you to sit for the USPTO patent bar exam (assuming you meet all the other requirements). If you pass, you become a patent agent. To become a patent attorney, you need to go to law school, get a JD, pass a state bar, and pass the patent bar. So yes, it's possible for you to become a patent agent or patent attorney. Whether you will get hired by a law firm, however, is a different story. Right now, the biggest demand for those with a BS is BS EE, Comp Sci, or Comp Eng. BS Physics is a harder sell. A PhD in physics makes you more marketable. However, I never recommend that anyone get a PhD (in any field) with the sole intent of becoming a patent agent or patent attorney. But if you already have a physics PhD, and are looking for a career alternative to R&D for whatever reason, a career in IP law is one option to explore.
  18. Jan 9, 2018 #298
    Hi all!

    I've been looking into a career as a patent attorney and it sounds like it would play perfectly to my aptitudes in understanding new concepts and technologies, communicating ideas, and having an eye for detail and a love for language and phrasing.

    I currently have an UG MSc in Physics from a top UK uni (2.1), but have since discovered that my interests lie more in mechanical engineering. I'm considering taking a ME conversion course.

    Would this be sensible? How attractive is a background in physics and ME with no industrial experience likely to be for employers? Even if I don't end up going into IP law, I feel like this is likely to open up my career options a lot.

    Note: as I understand it the UK system is somewhat different to the US in that it's normal to train and qualify on the job rather than going to law school.
  19. Jan 9, 2018 #299
    Since you need info specific to the UK, you should chat with people working at UK IP law firms. If you were at a major university with science and engineering departments, the university should have a technology transfer and intellectual property department. Ask someone there for referrals to contacts at firms that handle their transactions. In the course of your discussions, you should ask what impact [if any] BREXIT will have on IP career opportunities in the UK.
Know someone interested in this topic? Share this thread via Reddit, Google+, Twitter, or Facebook

Have something to add?
Draft saved Draft deleted