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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


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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


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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?
  8. Aug 20, 2018 #308
    I have a BS in chemistry and a PhD in materials science and engineering. I've had a few career transitions: engineer to stay-at-home-mom to middle school science teacher. I never did enjoy being in the lab -- my favorite part of grad school was writing my thesis! I've found that classroom management really isn't for me, either, so several of my friends have suggested I look into being a patent agent. I've done some research and it does sound like it would be a great career for me.

    So here are my questions:
    -It's been 20 years since I've been a materials engineer. Would companies/law firms pass over me because of this?
    -It seems like EE, software, and biotech are in the highest demand, and I am interested in biomedical applications. Would a certificate in biotech or medical devices from a place like UCSC Extension be worthwhile to improve my chances of being hired as a patent agent?

    Thank you!
  9. Aug 20, 2018 #309
    I also have a BS in chemistry, and a PhD in biomedical engineering, just graduated last month. I've been applying to 30-40 IP firms from a few months back with no luck. There are a good number of firms looking for PhDs in materials/life sciences, but they want experienced patent agents. Major IP firms (Cooley, Wilson) have openings for scientific advisers but it seems very competitive.

    I'm debating to bite the bullet and study for the patent bar, or instead try for the LSAT for law school. There are other options for you such as medical writing, and government jobs such as health scientists that are mostly scientific research/writing.

    I'd appreciate any input on improving our chances in the IP field (such as certificates that Stephanie mentioned), or other PhD-level writing jobs that may be available.
  10. Aug 20, 2018 #310


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    I only personally know one person who went from private technology career (software engineering, software development manager) to an IP firm. He, indeed took the time (money) to go to law school. It certainly paid off, he worked his way up to partner in an IP firm!
  11. Aug 21, 2018 #311
    (a) You are competing with recent PhDs or PhDs with recent work experience in materials science and engineering who are familiar with the latest technology or who have contacts that are current or potential clients. So what distinguishing value would you bring to a firm? And, then, of course, there is the question of your age. It takes about 3 yrs for a firm to train a newbie. How long do you plan to keep working?

    (b) A certificate would be useless. You are competing with (1) grads with a recent degree (BS or higher) in the specific field [such as mcmath in Post #309] or (b) scientists and engineers with recent work experience in the specific field who want to transition to a career in IP.
  12. Aug 21, 2018 #312
    It's not that rare to join an IP firm without going to law school. If you have a recent PhD in the right field or recent extensive work experience in the right field, you can work as a technical specialist or patent agent.
  13. Aug 21, 2018 #313
    (1) I discussed entry options for IP firms in my Post #306.

    (2) If you got your PhD from a major research university, it should have a technology transfer dept. Ask about positions there (even internships); you'll get to know people in the IP firms that do work for the university.

    (3) You can also consider technical journalism if you have an interest in writing.
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