Anyone considering a career as a patent attorney?

Hey folks, I'm Greg's sister. One career many scientists do not consider is becoming a patent attorney. I've been practicing as an intellectual property attorney for 6 years now. Does anyone have any questions regarding a career in patent law? I'd be more than happy to provide some insight.

What do you do on a day-to-day basis? How many hours do you put in a week? What's the typical earnings for a patent attorney? How do you like your job?

As an IP generalist, I do many different things each day. I draft patent applications and interview inventors to obtain disclosure for patent applications. I analyze rejections by the patent and trademark office and draft responses. I also manage patent and trademark litigation, send cease and desist letters and negotiate settlements. My job is rare in that I only work about 35 hours/week. Earnings can vary greatly based on firm, location and experience. I would say that for an associate attorney, the salary range is between $60-200K/yr. Typically, the more money you make, the more hours you're working so $200K a year doesn't sound that great if you're working 60-80 hours a week. Those partner-level patent litigators at big firms in California and NYC will bill at $800-1000/hr and although they do not take home all of that money, they still make a heck of a living. I like my job very much. I think it's a fun balance of skills I get to use every day. I get to learn about new inventions, apply my scientific knowledge, and then try my best to protect the invention using what I know about the law. I get to interact with some brilliant inventors, learn from them and get paid for it. Drafting patents and winning lawsuits is a game philosophically speaking. It's a challenge to always think 5 steps ahead and it often takes creativity to achieve your client's objectives, which I believe differs from the creativity used when working in the science field.

I've heard you can become a patent attorney without actually going to law school- is that true? How did you start on your career path?

You can become a "patent agent" without a law degree. Being a patent agent means you can prosecute patents before the USPTO after passing the patent bar exam. Realistically, you will only find a job as a patent agent if you have an advanced degree in a high-tech art field. Industry experience would also be a big bonus. You cannot practically be a solo patent agent as clients will almost certainly require the benefits of attorney-client privilege and, undoubtedly, your clients will need legal options to make decisions, which non-attorneys cannot provide for profit under the law. Law firms and attorneys hire patent agents in super high tech areas to assist with high tech patent projects, where it's challenging for a non-expert to understand the technology and the state of the art.

When in high school, I thought IP law sounded cool. I decided to major in industrial engineering to keep my options open for the patent bar exam, which requires a technical degree to take. Therefore, I went into engineering knowing I would never be an engineer. Luckily enough, I like the career path I chose almost blindly. The more I learned about it, the more I liked it. Otherwise, who knows where I would have ended up.

what is the best major to be for a patent attorney?

There is no "best major" but electrical and mechanical engineers are typically in high demand. If you're going to go the bio/chemistry route - phD backgrounds are preferred as patents in this territory are almost all high-tech (see above for further discussion). There aren't a whole lot of people who will get a Ph.D and then go to law school so these people can also be in high demand. On page 3 of http://www.uspto.gov/web/offices/dcom/olia/oed/grb0210.pdf, you can review what majors are accepted for taking the patent bar exam.

I answered your question solely based on my feelings of the general job market and not with respect to what will make you a good patent attorney. I do not believe there is anyone major that will best prepare you for this career. Any major in the USPTO document list will do just fine. The major you have will simply dictate what types of patents you will likely work on.

I was looking at chemical engineering, is this one ok too? What I meant is, what are the most types of patents. For example, is it mostly electronics or is there plenty biotech products to make a career out of patenting them as well?

Chemical engineering is definitely a good background to have and there is plenty of patent work in the CE field (think patents related to chemical compositions, new materials, everything from industrial solvents to makeup, etc., even methods of manufacture involving the use of chemical compositions).

with the new patent reforms proposed by obama, how will this affect the future of the profession?

Woopydalan said:

with the new patent reforms proposed by obama, how will this affect the future of the profession?

Generally, I do not anticipate the new rules changing the profession very much. Adjustments in strategy need to be made but it's not a huge shake-up.

I am currently working towards a Mechanical Eng. degree with plans to become a patent attorney. I've never met a patent attorney and can only judge the profession off of my independently working dad who is a family lawyer in a very small town(only 450 people). Could you please answer some questions?

Is it better to start off working for a firm or independently? If you work for a firm, do you usually work with a team of lawyers/agents to accomplish the client's goal or just on a solo lawyer/client basis? Do you live in a town bigger than 100,000 people?

Are there any advantages to going to an "Ivy League" law school? In your opinion, is it worth the extra cost? (For example, does it basically secure you a great job or increased pay to out weigh the costly tuition.)

What is a good minor to take, or is taking a minor not really necessary?

Do you often stand up in front of a courtroom and present a case or is it mostly/only mailing in written work like affadavits, patent applications, etc.. ?(what type of work is most common?)

Is it better to start off working for a firm or independently? I would say it's best to start at a firm where you can be mentored and have someone show you the ropes. It can take years to really get a handle on things.

If you work for a firm, do you usually work with a team of lawyers/agents to accomplish the client's goal or just on a solo lawyer/client basis? I work in a team and I believe that's typical. You will find that associates do the legwork and partners oversee everything and keep the client happy.

Do you live in a town bigger than 100,000 people? Yes. Patent work is very expensive and in order to support a practice, you need to be in an area with a good amount of business and industry.

Are there any advantages to going to an "Ivy League" law school? In your opinion, is it worth the extra cost? (For example, does it basically secure you a great job or increased pay to out weigh the costly tuition.) School name does matter as far as providing you with job options. I'm not saying it's critical but it can open doors for you (not that I know this from experience). It's hard to say whether it is worth the cost. It's hard to get a job these days and you want to set yourself up the best you can but that doesn't necessarily mean you have to go to an Ivy League school. If you're not in an Ivy League school, you definitely want to aim to be at the top of your class (god I hate law school and the BS that goes along with finding a job).

What is a good minor to take, or is taking a minor not really necessary? Not necessary. Focus on an interest of yours or do extra curriculars to beef up your scientific background. You could also start studying for the patent bar exam. Passing the patent bar exam early in law school will show employers you are serious and have a good baseline knowledge of USPTO procedure.

Do you often stand up in front of a courtroom and present a case or is it mostly/only mailing in written work like affadavits, patent applications, etc.. ?(what type of work is most common?) It depends what you want to do. If you want to be a patent litigator, you will be in court (and doing quite a bit of work such as discovery, drafting motions, negotiating settlements, taking depositions, etc) that's outside the courtroom. If you want to prosecute patents before the USPTO, you will be doing a lot of work in the office to prepare applications and filing documents with the USPTO, analyze prior art, work with inventors. It's not terribly common that patent attorneys do both prosecution and litigation like I do but there are a few.

Prosecution and litigation can be quite complex, as well as the research that goes into patent law. Also, taking depositions that are properly formatted and acceptable in court, can take a lot of time and effort. I have not worked in this field, but I respect you if you can make a career of it.

If I was nuts enough to go into law, patent law would have been a prime choice. A dear friend of mine went into law, and he ended up doing lots of real-estate transfers and title searches (BORING!) and a lot of divorces (for which he received threats of assault, and even death). His house was burned down in a case of arson, with nobody caught.

Thanks for making this thread, it is very useful.

Do you think it is a bad idea to get my PhD in chemistry with the backup plan that if I can't get a solid job I would try to go into patent law? Or is the PhD a waste of time? Not that I'm a bad student or anything. I feel like I have great potential for a career in science, I'm just not sure if the job market is going to let me pursue that kind of career.

LogicX said:

Thanks for making this thread, it is very useful.

Do you think it is a bad idea to get my PhD in chemistry with the backup plan that if I can't get a solid job I would try to go into patent law? Or is the PhD a waste of time? Not that I'm a bad student or anything. I feel like I have great potential for a career in science, I'm just not sure if the job market is going to let me pursue that kind of career.

Chem PhDs are highly desirable patent attorneys, especially in the pharmaceutical areas. It's hard to find people who have gone through so much schooling.

I would never recommend going to law school unless you really want to be a lawyer. It's just too much time, torture and money otherwise.

I would recommend, however, that you consider being a patent examiner as a backup career. The patent office has been hiring aggressively for the past few years to try and address the huge backlog of patents waiting to be examined (the 2012 budget includes 1,500 new examiner hires). An advanced degree is not required but would, of course, help you obtain one of these positions. It's my understanding that it's not difficult to get a job as an examiner due to the demand. The best thing of all is that to get hired as a patent examiner, you do not need any prior experience or knowledge of patents! The USPTO hires people with scientific backgrounds of all types and expects to train them fully. The PTO is also really great in that it has incredibly flexible hours for examiners and the office is essentially virtual so, after training, you can work from anywhere in the country. An advanced degree + a few years at the patent office would also make you a great candidate to be a patent agent after leaving the PTO (see above for description of this career). I suppose it's also possible to transition from a patent examiner role to a science role as well if you just need a job for a few years while the economy is in the crapper.

How about Biology PhDs?

Woopydalan said:

How about Biology PhDs?

That'll work... The best gauge is to look at current job postings and see what backgrounds are desired.

Supposing that you have zero knowledge of IP law, what are the skills people are looking for in an interview? Maybe more specific: as a theoretical physicist, with no industry experience, is analytic insight and experience with publishing articles sufficient to get in?

eendavid said:

Supposing that you have zero knowledge of IP law, what are the skills people are looking for in an interview? Maybe more specific: as a theoretical physicist, with no industry experience, is analytic insight and experience with publishing articles sufficient to get in?

Sorry, what job are you intending to interview for?

I might be interested in a job as a patent attorney (so if I understood correctly, you first apply for trainee patent attorney). I guess what I'm asking is: should one try to get a basic gist of IP law before applying?

I'm a Civil Engineering undergrad at UCLA and I'm also considering minoring in Environmental Engineering. What would you say about pursuing patent law after a few years of work in the field?

apat007 said:

I'm a Civil Engineering undergrad at UCLA and I'm also considering minoring in Environmental Engineering. What would you say about pursuing patent law after a few years of work in the field?

Those engineering degrees are not "hot" with respect to what job postings are looking for but that's not to say that you can't do it. I think with those degrees you would likely have to have a law degree as well as I believe it would be difficult to get a patent agent position.

Real world scientific experience is always viewed positively.

I hope this answers your question but I understand I'm not saying a lot. I'm trying to give practical advise with respect to the job market based on my experiences and general statistics. Just because it may be an uphill battle doesn't mean it's impossible to become a patent attorney, you may just have to be really determined to make it happen.

Oh okay, I see. Well I wasn't expecting to go into patent law without a law degree. Would it be worth pursuing a law degree or is patent law coupled with Civil or Environmental engineering just not a typical thing to do?

apat007 said:

Oh okay, I see. Well I wasn't expecting to go into patent law without a law degree. Would it be worth pursuing a law degree or is patent law coupled with Civil or Environmental engineering just not a typical thing to do?

Worth pursuing is a very personal question that I can't answer. CIV E or ENVIOR E + patent law are not "typical" or mainstream but that's not to say it isn't at all worth doing if that's a career you are interested in.

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?

NewtonianAlch said:

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?

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.

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?

Also, what would be a typical salary range after working in as a patent lawyer for 5 years?

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.

A relevant topic - http://www.ted.com/talks/drew_curtis_how_i_beat_a_patent_troll.html

It's important to understand patent law and IP law, as well as the technical details of a given technology.

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?

Classico22 said:

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?

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.

eendavid said:

I might be interested in a job as a patent attorney (so if I understood correctly, you first apply for trainee patent attorney). I guess what I'm asking is: should one try to get a basic gist of IP law before applying?

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.

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 that's the case then it doesn't sound like a wise background to have...