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Anyone considering a career as a patent attorney?

  1. Apr 9, 2012 #26
    Is it possible to give us an example of something you might encounter on a day-to-day basis? I know there is possibly a privacy issue, so just anything that is as general as possible, so...

    1) What kind of technical skills would you mainly employ?

    2) How do you even begin to start analysing systems which you've never seen or encountered before?

    3) As for electrical engineering, what kind of majoring stream is particularly suited to this role, signals, electronics, telecomm, photonics?
     
  2. Apr 9, 2012 #27

    berned_you

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    Well today I received an "Office Action" from the USPTO. This Office Action is correspondence rejecting the patent claims over prior patents. I need to take a look at the prior art patents and either argue that the Examiner's rejection is improper or amend the patent claims to distinguish the prior art. Amending the claims is somewhat of a game. You need to distinguish the prior art but you do not want the patent claims to be so narrow that they are difficult to enforce/easy to get around. Before I can really get into this work, however, I need to do a brief analysis first, report the Office Action out to the client and wait for their feedback.

    A second project I have for the day is to get a patent illustrator working on drawings for a new patent application. I need to send him the production drawings and brief illustration of what I think we need to disclose the invention and patentable aspects. After that, I will likely begin drafting the patent application (background of the invention, summary, brief description of the drawings, detailed description, and claims).

    Currently, I'm also working on some trademark litigation. We're in the discovery stage of litigation and I'm assisting with that process. Last week I attended depositions and helped prepare our client to best answer the questions we anticipated he would be asked.

    In response to your questions,

    1) You have to be able to understand that technology you are trying to patent as well as to understand prior art patents, which will be used in evaluating your application. The technical knowledge I use can also be as simple as knowing what to name various parts or scientific concepts. Your technical knowledge serves as a foundation for understanding new inventions and old. It also provides a basis for understanding what's out there already so you can draft patent claims that will not automatically be rejected as being too broad.

    2) It often helps to have the inventor sit and walk you through it. Sometimes they will also provide a technical disclosure explaining how it works and what the novel features are. If you are asked to understand the prior art patents or known products/processes, it also helps to have your client briefly explain it to you as they are the experts in their respective technologies.

    3) Since I don't work in the EE field, I can't say. I would expect that all of the mentioned focus areas would be desired. It really comes down to this - if it is advancing technology, the marketplace will need people to understand it and patent those new advances.
     
  3. Apr 17, 2012 #28
    Hi, you said that your work week isn't typical - 35 hrs per week. From your perspective, what is typical for the number of hours that a patent lawyer works? I know it varies from company to company, but would a 40 - 45 hour work week be unlikely?
     
  4. Apr 17, 2012 #29
    Also, what would be a typical salary range after working in as a patent lawyer for 5 years?
     
  5. Apr 18, 2012 #30

    berned_you

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    Would a 40 - 45 hour work week be unlikely? I would say most patent attorneys working at mid-sided firms work about 50 hours a week. It's not entirely unlikely but 40 hr a week jobs could be more difficult to find. With the economy for lawyers being in bad shape, it's hard to be picky, especially when you are first starting out.

    Typical salary range after working in as a patent lawyer for 5 years? Of course this depends on a lot of factors. I would estimate $80-$175K/yr is a decent range. I know that's not very helpful but it will depend on the size of the firm you work for, where in the country you are and how many hours you bill. $175K/yr may sound great but those people are likely working 60-80/hrs a week in high pressure positions. I have many friends who make great money, typically in the form of bonuses. They work super hard all year chasing the dollars. The more you work, the more you can earn. These estimates are just my best guess and are not based on any research.

    For both of these questions it is difficult to generalize for an entire industry. These are ballpark responses and there is a lot of variance.
     
  6. Apr 22, 2012 #31

    Astronuc

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  7. Apr 27, 2012 #32
    Well, this is extremely uncanny. I noticed this post right after I just posted a question about this.

    What tests or qualifications do patent attorneys need to have above passing the bar like normal attorneys?

    Also how is a civil engineering background?
     
  8. Apr 27, 2012 #33

    berned_you

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    To practice before the USPTO you need to take the patent bar exam. In order to take this exam, you must have a technical background. See prior posts re: what qualifies and how various backgrounds can affect your career options.
     
  9. Apr 27, 2012 #34

    berned_you

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    I'm not sure I understand your question. Assuming you are in law school or will be attending law school, I would take IP classes to get the gist. Be sure to choose a school with a solid IP program. If I misunderstood your question, please clarify.
     
  10. Apr 27, 2012 #35
    So in addition to law school, you only need to take the patent bar exam, correct? And what does USPTO stand for?

    Also, because I'm in civil engineering, does that mean that I would only be able to handle patents regarding civil engineering? Because if thats the case then it doesn't sound like a wise background to have...
     
  11. Apr 27, 2012 #36

    berned_you

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    You would take a state bar exam and the patent bar. That's all you need.

    USPTO - US Patent and Trademark Office

    You're generally correct with respect to you third question. I've never met a patent attorney with a civil engineering background.
     
  12. Apr 27, 2012 #37
    That sounds about right then. I spoke with a neighbor who is a former civil engineer and an attorney and he told me that he wished he knew that he "couldn't be a patent lawyer" without a mechanical or electrical engineering degree. What I think he meant now that I've gotten more info was that he could have been one with a civil background, but his options would have been much more severely limited than if he had a mechanical backround. Thank you!
     
  13. Apr 27, 2012 #38
    Also, with you having a mechanical engineering background (I believe I read that on one of your posts, correct me if I'm wrong) what are some specific examples of patents that you have handled?
     
  14. May 10, 2012 #39

    Chronos

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    Mechanical engineering is a great background for a patent attorney. You have sex appeal to clients with hardly any knowledge of physics. The trouble is you need to be aggresive [and skilled] to get anything up for review in a 'timely' fashion, and filings are less 'secure' than you might hope/expect.
     
  15. May 10, 2012 #40
    What do you mean by your last sentence "The trouble is you need to be aggresive [and skilled] to get anything up for review in a 'timely' fashion, and filings are less 'secure' than you might hope/expect."?
     
  16. May 10, 2012 #41
    Would you say a BS in physics is a good and/or common background to have before pursuing patent law?

    I've heard concerns about there being more lawyers than there are jobs. There seems to be competition for jobs and I've heard some people recommend not pursuing law school unless you're admitted to one that's very prestigious. Would you say these concerns are somewhat alleviated or inapplicable to patent law since you apparently need a scientific background to get into the field?
     
  17. May 10, 2012 #42

    George Jones

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    I know someone who got an MS in physics, then got a law degree, and then became a patent lawyer. Also, I have recently been reading

    http://ajp.aapt.org/resource/1/ajpias/v70/i3/p266_s1 [Broken],

    and it seems that when the paper was written, one of the authors was a student, and that this author is now a patent lawyer.
     
    Last edited by a moderator: May 6, 2017
  18. May 16, 2012 #43
    I have a BS in ChemE and 2 years of work experience, and I am seriously considering going to law school for patent law. Is my technical background going to hold me back from getting desirable jobs?

    It seems ME and EE are the preferred engineering majors for patent law. And for something like ChemE, a MS/PHD is somewhat of a requirement.
     
  19. May 21, 2012 #44
    I appreciate you taking time to answer questions in this thread. I've read through everything and most of my questions are answered. I'm trying to figure out if I would be suitable for a career in patent law. Either as an agent, or full-fledged patent attorney. Ideally, I'd be able to get one of those jobs where they pay for night law school.

    I am a mechanical engineer. I just completed a graduate degree in mechanical engineering (specializing in energy technology) and bachelors in mechanical eng. and applied math & statistics.

    However, I am lacking in the experience area. I have about a years experience, mainly in the MEP consulting and HVAC field.

    I'm trying to vett myself for this career. I especially like the idea of being on the forefront of new inventions and not pigeon holding yourself into one particular field or discipline. I think that's my main fear of being a regular engineer.

    My Question:
    1) Should I go ahead, study for, and take the patent bar exam before getting a job. Would it help me in my job search?
    2) What are my chances, with respect to my degrees and limited experience, as far getting a patent agent position sometime soon.
    3) Is there any correlation between the patent bar and LSAT scores? Getting into a decent law school for me would be highly dependent on LSAT, since I hear they don't really take into account graduate study.
     
  20. May 23, 2012 #45
    I did my BSc. in Industrial Engineering and I am currently pursuing a law degree. I was wondering if it was possible for me to be able to practice as a patent attorney when I am finished with law school as the Industrial engineering degree that I did contained about 75% of the courses that the mechanical engineering degree contained. Do you think it is possible? If I am not able to...what would you suggest that I do? Sould I do a masters in some sort of engineering field to enhance my chances after law school?
     
  21. May 29, 2012 #46
    Hi dear, Thanks a lot for this post. I am currently on the verge of completing my PhD in chemistry from an Indian university. Being an Indian national, does it qualify me to apply for patent bar exam.
    Another question is: Is there a requirement to have law degree to become patent attorney since this is a criteria in India.
     
  22. May 29, 2012 #47
    This has been a very interesting and useful thread. After 35 years working many aspect of several engineering fields, I thought it might be fun to take early retirement and get a law degree. Both patent and product liability look attractive.
     
  23. May 29, 2012 #48

    berned_you

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    Holy cow am I behind... Let me try to catch up on questions.

    It's great foundation-wise but employers get a tad hung up on looking for engineering degrees. It may be a tad harder to find a job but it's definitely doable.

    I have an industrial engineering background. I've worked on patents for cheese vats, truck covers, low sodium salt-substitutes, methods of making chains, casino games, snow plows, feed bin monitors, quick-connect connectors, self-tightening tire chains...

    Unfortunately, there are tons of people graduating from law school with a patent focus who are patent bar eligible. It's difficult to find a job right now in any sort of law (but hardly impossible).

    If you want to do mechanical engineering-type patent applications, which I'm sure you could handle, you're probably fine but it will be difficult to get work in the chemical field without an advanced chem degree.

    I am an IE major. I believe was harder for me to find a job with an IE background but, clearly, not impossible. ME is more preferred, but not essential. I would not get an advanced IE degree. If you cannot find a job out of law school, go to the patent office and work as an examiner for a year or two. That will give you some great training and experience.

    I am 99% certain there is no requirement that you be a US national to take the US Patent Bar Exam. You need a law degree to become a "patent attorney" in the US but a law degree is NOT required to become a "patent agent."
     
    Last edited by a moderator: May 29, 2012
  24. May 29, 2012 #49

    berned_you

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    1) Should I go ahead, study for, and take the patent bar exam before getting a job. Would it help me in my job search? Absolutely, this is a common strategy. Having your patent bar registration before job seeking shows you are knowledgeable, serious and ready to work.
    2) What are my chances, with respect to my degrees and limited experience, as far getting a patent agent position sometime soon. Impossible to speculate. It's dependent on so many factors such as 1) where you're located; 2) your resume; 3) your personality; 4) networking and commitment to job searching, etc.
    3) Is there any correlation between the patent bar and LSAT scores? Getting into a decent law school for me would be highly dependent on LSAT, since I hear they don't really take into account graduate study I don't expect there is any correlation. Those are two separate tests that test very different things in different ways. Plus, the patent bar is merely pass/fail.
     
    Last edited: May 29, 2012
  25. May 29, 2012 #50
    How well would a computer engineering or computer science degree work for a patent attorney? Would electrical engineering be significantly better?
     
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