Anyone considering a career as a patent attorney?

  • #151
356
6
I am not sure if this has been discussed, but could a math major get into IP law? Or would I need graduate school as well?
 
  • #152
Thanks for the threads. I am a Chemical Engineer with 4 years experience in Technical Sales and Industrial Services. I want to enter in this field (Patent agents, IP) but dont know where to start from. Why the employers hire me as i have dont have an experience of this field. How to start in this field?
 
  • #153
2
0
My Career Path

Although this thread has been quiet for a while, I just came across this thread and would like to share some of my career experiences and thoughts.

I am now retired (for the time being at least), after working as a scientist is the field of semiconductor technology for over 30 years. Because I've had a passion for science, technology and math since my childhood, it was natural for me to follow that path and attain a Ph.D. in electrical engineering.

A word of advice to those starting on a career path is to ask yourself the following questions: What is your passion? What do really enjoy doing? Is your goal to have fun in a fulfilling career, or to make tons of money, regardless of what you have to do?

I chose to have fun at work, not paying much attention to climbing the corporate ladder on the managerial side, but to decouple myself from playing the internal political game and staying on a technical path. As time went by I continued to hone my technical skills, finally becoming a very prolific and widely recognized inventor in my field. Essentially I was getting paid to have fun. What could be better than that?

After retiring from the corporate scene, I considered becoming a patent agent, because I had extensive experience with the entire patenting process, from drafting invention disclosures to preparing compelete patent applications, and addressing office actions from the USPTO. However I chose not to become a patent agent because I felt being prohibited from expressing my creativity (being involved solely with the task of obtaining a patent for my client, and not contributing to the inventive claims) would frustrate me.

Having shelved the idea of being a patent agent, I chose to serve as a technical expert and expert witness in IP litigation. I found this work to be intense, exciting and very lucrative. My background as an inventor was instrumental in getting my foot in the door, for one's stature and reputation in their technical field is so important to be effective as an expert witness. Of course there are things that one has to accept as an expert witness, such as putting up with the theatrics that go on in the courtroom, and being available nearly 24/7 to support your client attorneys. But, I am pleased with how my career evolved just by following my passion.
 
  • #154
Fastest way to becomed a patent agent/attorney

I am a non-patent IP attorney. I love physics and would like a new challenge. Licensing bores me. What would be the most efficient way for me to secure a scientific/technical degree so I can sit for the patent bar and become a patent attorney? Is this crazy?
 
  • #155
241
1
I am a non-patent IP attorney. I love physics and would like a new challenge. Licensing bores me. What would be the most efficient way for me to secure a scientific/technical degree so I can sit for the patent bar and become a patent attorney? Is this crazy?

Are you saying you are a non-IP attorney (i.e. attorney practicing some other area of law)? What degree do you have from undergrad? I think there are specific requirements in order to take the patent bar (see USPTO requirements page 4)
 
  • #156
1
0
Hi,

I have read lots of post in this forum and the information you have provided so far in patent exam has been very informative and i would like to thank you for taking your time and providing all these valuable information.

I have a BS in Biology and currently doing MS in Regulatory Science part time and working Full time in Pharmaceutical industry in IT sector as Engineer for about 5 years. Could you please tell me as what are my chances to become a successful patent agent or attorney after passing my patent bar exam?

Would i get a good job in a reputed firm with my background?
Is there something else i should do to increase my chances?
What are some of step i should take?

Please guide me.
Thanks.
 
  • #157
My dad is a European Patent Attorney in Germany. Kaufmann, Dresden, Germany.

This profession between technology and law is interesting for a lifetime and the competition is not comparable to normal attorneys of law because to become a patent attorney you need another patent attorney who has enough work. There is not an oversupply as in very most other fields of law. Germany has more attorneys of law than bakers and florists together, every idiot studies law and the smarter ones all get the attorney license, not so in the law of engineering.

Fair or not, it helps to have a higher academic degree in the profession, this equals very good connections, when in doubt people higher the attorney with the highest degree and he gets more and more experience, something which is not easily to gain without at least a PhD or extraordinarily good industry connections.

Being a patent attorney you are away from high end research, you rather have something completely different every a few days on your desk. The income is very good for most patent attorneys, the competition is rising, but as written above, not dramatically.

In the regional market and I think it's similar in other countries Biology and Chemistry have much less demand for patent attorneys than mechanical engineering, materials and electronics.

Pharma firms have a patent department and it's not really the same profession. A patent attorney should be free to cooperate, if necessary, with whoever he wants to. Whenever the other side has 100 attorneys, still you battle only with one who is not used to that. Most battles are avoided, not necessary or there is an agreement. Patent attorneys are not divorce lawyers. Media give a wrong impression. It's a peaceful job without too much stress and sometimes with colleagues work.
 
Last edited:
  • #158
Hi,

This thread is probably the most informative on the topic. I am a third year Phd student, with one more year to go, i have started exploring my future options. The path of a patent agent certainly seems exciting to me.
My profile in brief:
Bachelors Biomedical Engineering
Master Biomedical Engineering
PhD medical physics (basically a combinations of electronics, programming, human physiology)

My studies/skills mainly revolve around electronics, programming, medical devices, human physiology and Electro-physiology, biostatistics.
How would you evaluate my chances of getting in the field ? what would you advice me to do in this on year to add to CV/skill-set to enhance my of getting a entry-level job?

Cheers!
 
  • #159
Depending on where you live, entry-level may be defined differently. I was an extremely experienced engineer with almost 20 yrs experience at HP as a EE/BioMed Eng. I did get my JD several years ago, almost entirely paid for by HP, but was sufficiently distracted for career and monetary reasons to not pursue law, specifically patent law at HP, remaining on an engineering track. I had expected patent law to be my next step when I attempted to step into it, but found a lot of resistance from firms looking for "actual" patent law experience. I can now understand this. Patent law is not an easy career path, though it can be very rewarding both intellectually and monetarily. As difficult as the Patent Bar was to pass, I did take and pass it (I was already a member of the CA bar), but still no firm wanted to take an engineer (BS EE/BioMed) with a USPTO Reg # and no actual patent law experience.

As a result, I took a job as a Patent Examiner, which REALLY helped. After only a year on the job at the USPTO I was approached by a private law firm. While the USPTO experience was invaluable, it was likewise not complete. I found that it was a great leg up, but the last couple years in private practice as a Patent Attorney have been an incredible learning experience. While taking the job at the USPTO was not necessarily financially rewarding in the short term, it was truly rewarding from an experience point of view and has now become intellectually and financially rewarding as well.

As for the entry-level aspect of your question, I am not in NY, LA or SF where the threshold of required experience may be lower. I am in a mid-sized, though tech savvy, metropolitan area. Where I am, a year or 2 is the minimum level of patent law experience. My recommendation is to pass the USPTO bar and if you live in a large metropolitan area you may be fine. However, in a smaller area you may need to figure out a way to get some experience at the USPTO first. We have had several interns at our firm this past summer, this might also be an alternative.
 
  • #160
4
0
Hey can you help me by briefing the procedure for obtaining a patent
 
  • #161
The US Patent and Trademark Office (USPTO) has laid out the process here http://www.uspto.gov/patents/process/index.jsp

Essentially, you need to disclose your idea in a patent application (e.g., Design, Plant or most commonly a Utility type). Assuming you are headed down the Utility path, you can either take a lower cost initial step called a provisional. Wiki nicely sums up the provisional: Under United States patent law, a provisional application is a legal document filed in the United States Patent and Trademark Office (USPTO), that establishes an early filing date, but does not mature into an issued patent unless the applicant files a regular non-provisional patent application within one year. There is no such thing as a "provisional patent".

A provisional application includes a specification, i.e. a description, and drawing(s) of an invention (drawings are required where necessary for the understanding of the subject matter sought to be patented), but does not require formal patent claims, inventors' oaths or declarations, or any information disclosure statement (IDS). Furthermore, because no examination of the patentability of the application in view of the prior art is performed, the USPTO fee for filing a provisional patent application is significantly lower (US$ 130 as of April 2013) than the fee required to file a standard non-provisional patent application. A provisional application can establish an early effective filing date in one or more continuing patent applications later claiming the priority date of an invention disclosed in earlier provisional applications by one or more of the same inventors.

The process of getting a patent however, really begins with the filing of the utility application. The utility application with essentially the same components above plus formalized claims is filed. Some number of months to years later the USPTO will examine the application, then search the idea looking for prior art and then issue a notice of allowance leading to issuance or respond back with a rejection of some or all of the claims in your application. The response from the USPTO is called an Office Action (OA). You then need to respond any objections in the application and every rejection of the claims contained in the OA in your response to the OA. Most typically the OA will reject all of the claims. This often happens more than once.

While you can follow the process on the USPTO website. The process is not just complicated but it is incredibly important to properly disclose the invention/idea in the application as originally filed. Proper disclosure means that the idea including the language used to describe it MUST be written such that the idea may be claimed broadly enough to capture your idea completely. While the specification of the application may be amended after filing, no new matter may be added. So it is very important to get it right the first time. If this is your first time I would NOT advise trying to go it alone.
 
Last edited:
  • #162
1
0
hi
when i was a university student, my major is engineering of the materials.
Now, i am a master degree of engineering of energy.
i want to know what i need to preparing if i want to be a patent engineer.
do i need the education about the patent law?
or get some licenses?
please give me some opinion.
 
  • #163
Vanadium 50
Staff Emeritus
Science Advisor
Education Advisor
27,396
11,508
Did you read the thread? If so, what parts do you still need clarification on? Also, are you in the US? Laws vary from country to country.
 
  • #164
hi
when i was a university student, my major is engineering of the materials.
Now, i am a master degree of engineering of energy.
i want to know what i need to preparing if i want to be a patent engineer.
do i need the education about the patent law?
or get some licenses?
please give me some opinion.
You may want to go to the USPTO.gov site, specifically page 4 here: http://www.uspto.gov/ip/boards/oed/exam/OED_GRB.pdf

While this link tells you the requirements in order to sit for the patent bar and get a registration number, the bigger question will be one of market demand. While I am a EE I am not qualified to prepare or prosecute applications pertaining to chemical based inventions. I don't know all that is involved with engineering degrees in materials and/or energy, so I can't help you there. Earlier in this thread there is some discussion that might be relevant.
 
  • #165
berned_you
Gold Member
98
19
Hey can you help me by briefing the procedure for obtaining a patent

That's not the purpose of this thread but this link will give you some indication of what is involved. http://www.uspto.gov/web/patents/howtopat.htm. You can also call around to local patent attorneys as most will give you a few minutes of their time to answer questions. I'd also like to encourage you to avoid doing it yourself. A lot of websites make it appear straightforward but I can assure you it is not. There is a reason why attorneys can charge thousands of dollars to prepare patent applications.
 
  • Like
Likes Greg Bernhardt
  • #166
Hello I just have a general question...

I'm sort of a late bloomer when it comes to actually being interested in IP Law. After doing a lot of research I found that this is the career path I would like to go down. I've always wanted to be a lawyer. I graduated in 2013 with my B.A. in African American Studies. After reading the patent requirements it seemed like I would have to get a Masters Degree in Chemistry or Physics. I would much rather take Engineering since I was really interested in the subject and took it when I was in high school. However, after reading the Patent requirements it doesn't seem like I can get my Masters in the field of Engineering and still qualify for the patent bar since my undergraduate degree is in another subject and I would need a certain amount of science courses. So my question is: Since I have my B.A. in African American Studies can I still qualify to take the patent bar if I get my Masters in Chemistry or Physics?
 
  • #167
30
0
Hey, I'm a bioscience post grad currently in law school, and I.P. law is appealing to me. The issue I'm having is when I look around for the types of jobs out there, all of them require years of experience in I.P. prosecution. Also, my school has no I.P. program whatsoever and so far I have been interning with non I.P. type things. I would do anything I.P. but I just cannot find anything!

Where do people find experience? I assumed I would go into some kind of I.P. agent role, or junior associate (but even then they all seem to want experience). The USPTO has a conspicuous lack of any internships, as well as law firms in general.

I assume people need to start somewhere, but I cannot see where that somewhere is? Any help there would be great.

Thanks.
 
  • #168
berned_you
Gold Member
98
19
Hey, I'm a bioscience post grad currently in law school, and I.P. law is appealing to me. The issue I'm having is when I look around for the types of jobs out there, all of them require years of experience in I.P. prosecution. Also, my school has no I.P. program whatsoever and so far I have been interning with non I.P. type things. I would do anything I.P. but I just cannot find anything!

Where do people find experience? I assumed I would go into some kind of I.P. agent role, or junior associate (but even then they all seem to want experience). The USPTO has a conspicuous lack of any internships, as well as law firms in general.

I assume people need to start somewhere, but I cannot see where that somewhere is? Any help there would be great.

Thanks.
Your best bet in gaining IP experience is to work a few years at the patent office as an examiner once out of school. In-school summer internships and externships are available but you just have to search from them. There will likely be a discussion on law firm websites in the "career" section instead of a typical job posting. If you find a firm where you would like to intern or extern, you can also give them a call and ask for more information regarding such possibilities. Networking is powerful in the legal field. Don't get discouraged if you have a hard time finding an internship or externship in the patent field. Oftentimes, firms do not want to bother having to teach interns that may find a job elsewhere a year later.
 
  • #169
berned_you
Gold Member
98
19
Hello I just have a general question...

I'm sort of a late bloomer when it comes to actually being interested in IP Law. After doing a lot of research I found that this is the career path I would like to go down. I've always wanted to be a lawyer. I graduated in 2013 with my B.A. in African American Studies. After reading the patent requirements it seemed like I would have to get a Masters Degree in Chemistry or Physics. I would much rather take Engineering since I was really interested in the subject and took it when I was in high school. However, after reading the Patent requirements it doesn't seem like I can get my Masters in the field of Engineering and still qualify for the patent bar since my undergraduate degree is in another subject and I would need a certain amount of science courses. So my question is: Since I have my B.A. in African American Studies can I still qualify to take the patent bar if I get my Masters in Chemistry or Physics?

Sorry, I'm not sure. You'll have to review the requirements.
 
  • #170
4
0
Hi,
I have a MS in EE and have 6 yrs work-ex in as an Electrical Engineer.
I have a portfolio of publised papers and research work etc.

1) With my background , how easy is it for me to get a job as a patent agent and have the law firm pay for my law school ( night school ) ?
2) What is the current demand for patent attorneys , with a background like mine
3) Is it possible for me to start a law firm in the future , where I can specialize in patents related to EE
 
  • #171
berned_you
Gold Member
98
19
1) With my background , how easy is it for me to get a job as a patent agent and have the law firm pay for my law school ( night school ) ? No, not easy to get a job as a patent agent but not necessarily hard either. Firms will likely not pay for you to get your education.
2) What is the current demand for patent attorneys , with a background like mine. I would say it is high.
3) Is it possible for me to start a law firm in the future , where I can specialize in patents related to EE. Absolutely, presuming you get a law degree and pass the patent bar exam.
 
  • #172
4
0
1) With my background , how easy is it for me to get a job as a patent agent and have the law firm pay for my law school ( night school ) ? No, not easy to get a job as a patent agent but not necessarily hard either. Firms will likely not pay for you to get your education.
2) What is the current demand for patent attorneys , with a background like mine. I would say it is high.
3) Is it possible for me to start a law firm in the future , where I can specialize in patents related to EE. Absolutely, presuming you get a law degree and pass the patent bar exam.


Thank you very much for your replies.
The information you provide is very helpful.

I wanted to understand a little bit more, why it would be difficult to get a job as a patent agent. Is there an abundance of them ?
But at the same time once I complete my law degree, you mentioned that the demand is high.

Hence wanted to understand a little bit more on the finer details.
 
  • #173
berned_you
Gold Member
98
19
Patent agent positions are not rare but they are not as common as patent attorney positions. It's not to say that you will have a difficult time finding a job but I do not want to give you the impression that it will be easy either. You may have to do a bit of self-promotion, networking and searching to find a job. The legal field can be a complex place for finding and changing jobs. You will not be a commodity and so you will be looking for someone who currently has a need for someone with your specific skill set, experience and personality (a big component of legal hiring decisions). I believe there is a lot of demand for patent agents/attorneys will your general background but, as always, do not expect a job will be handed to you.
 
  • #174
4
0
Patent agent positions are not rare but they are not as common as patent attorney positions. It's not to say that you will have a difficult time finding a job but I do not want to give you the impression that it will be easy either. You may have to do a bit of self-promotion, networking and searching to find a job. The legal field can be a complex place for finding and changing jobs. You will not be a commodity and so you will be looking for someone who currently has a need for someone with your specific skill set, experience and personality (a big component of legal hiring decisions). I believe there is a lot of demand for patent agents/attorneys will your general background but, as always, do not expect a job will be handed to you.

Thank you once again for the detailed explanation.

I was reading more about this field and I came across many articles which mentioned that

Much of the work involved in prosecuting patents is being outsourced to lower-wage nations with a significant technical workforce, such as India. Prior art searches and drawings are commonly outsourced. As more tasks become outsourced, there is more competition for the remaining work, eventually reducing fees that agents and attorneys can charge. Outsourcing of more phases of patent work could become more common as it has in other technical work.

How bad is the situation in reality?

Should this de-motivate me from pursuing my dream of having my own law firm , where I specialize in patent prosecution for patents in EE.
 
  • #175
berned_you
Gold Member
98
19
Searching is definitely outsourced more often but that's the only big change I've noticed and it's the most straightforward of IP services. The preparation of patent applications is not outsourced and this is one big reason why http://patentlyo.com/patent/2008/07/outsourcing-of.html . Also, the prosecution of patent applications is not frequently outsourced. Legal services are highly personal services. There are attorneys that charge $1,000 an hour and attorneys that charge a heck of a lot less. As I noted previously, relationships and expertise (whether that be for a specific technology, legal expertise and experience or knowledge about your client) are very important for clients and firms. As we all know from call service experiences in India, they have a long way to go before they will really be able to compete in matters of communication. Sorry, I'm super busy at the moment. I hope this is clear and makes sense. Main point, be aware of India but not afraid of how the market for patent agents is developing.
 

Related Threads on Anyone considering a career as a patent attorney?

  • Last Post
Replies
1
Views
866
  • Last Post
Replies
15
Views
14K
Replies
6
Views
4K
Replies
1
Views
2K
Replies
4
Views
2K
Replies
1
Views
2K
  • Last Post
Replies
2
Views
1K
Replies
2
Views
445
  • Last Post
Replies
8
Views
3K
Replies
3
Views
2K
Top