Overview of patent and intellectual property law

Graduate School Law School
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<p>Hiking: I’m not sure what to tell you. Your statements don’t give much of a clue as to your qualifications; they represent your own conclusions as to these, which might or might not match what a law firm or other prospective employer might think of them.</p>

<p>Having passed the patent bar and written technical papers are very positive qualifications. However, remember that this is a tough economy, entry-level positions are not as numerous as they used to be (for one thing, some clients of law firms have cut their IP budgets or even gone bankrupt) and there are more contenders for each position.</p>

<p>Did you attend a well-regarded law school? How were your grades? Are you competing for positions with people having more advanced degrees than you have? What technological field is your expertise in? (If you’re in biotech, you need a Ph.D., at least, to be competitive for entry-level IP positions).</p>

<p>Yes, try the Washington, D.C. firms; perhaps even the USPTO.</p>

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<p>dadofsam, thanks a lot for the reply. I did not come up with the patent drafting requirement. Some recruiters and employers told me about that. Because it is hard for a fresh graduate to get such experience, I think what they really mean is that they want to hire people with experience. Although my school is not the 20 best, it is a first tier in the US News. My grade is not the best but certainly not the worst. But I have lots of experience in chemistry/pharmaceutical science. It is difficult to have a chance to draft a patent application in this area unless you are in a law firm (not even in-house). BTW, how do you consider volunteering time and service in a company or a law firm (not sure if it accepts graduates)? Will this help? If yes, how? Any way to boost my qualification to open more doors?</p>

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<p>Hiking10k: Well, your field is chemistry and pharmaceutical sciences, you went to a good (but not top-rated) law school and your grades were OK but not outstanding. So you did not shine as a law student; on the other hand you have done a lot of scientific writing (though it’s not clear in what capacity). I assume that you have taken the bar exam in one or more states but have not yet heard whether or not you passed.</p>

<p>I can’t give you a lot of reasons to be optimistic. At this point in time the only way I can see for you to improve your qualifications is to take a more advanced technical degree, but that will take several years or more, so it would not improve your position at this time. So you need to make the most of your current qualifications, namely scientific experience. Remember, though that (as I have said) the competition is tough and is likely to have netter qualifications (on paper, anyway) than you (for the reasons mentioned above)</p>

<p>What you probably should do is expand the ways in which you look for a position. Sending solicitation letters to law firms is all right for a start but they probably did not get very far into the system.</p>

<p>I suggest you do the following (all of them) if you haven’t done so already:</p>

<ol>
<li><p>Contact your law school alumni association to see whether any alumni are IP lawyers and are willing to help you, either with advice or with a contact for an actual position. As part of this, see if you can get to meet someone on the specific understanding that you are not looking for a job with his/her firm but are looking for solid advice as to how to get a job in the profession in general (that makes it possible for them to help you without feeling obligated).</p></li>
<li><p>Check the websites of IP firms in the geographical area(s) you wish to work in. See if any are seeking entry-level patent attorneys and apply through the websites.</p></li>
<li><p>Look on Craigslist for openings.</p></li>
<li><p>You might need to have your resume rewritten; it will cost you money but it could be worthwhile.</p></li>
<li><p>Consider seeking a position as an examiner in the USPTO.</p></li>
<li><p>There are some people on this site who are legal recruiters. I can think of Cartera and Sallyawp. Perhaps they can be of help.</p></li>
<li><p>Finally, keep at it. You need to be persistent, especially in this economy</p></li>
</ol>

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<p>Another idea with no guarantee that it would help. In addition to looking for firms, look for sole practitioners or very small firms (2-3 attorneys) who would be willing to give you some experience/training in order to use your (hopefully) proven scientific writing skills.</p>

<p>You also may need to expand you search area to other parts of the country in order to find that elusive entry-level position.</p>

205

<p>I am a senior in high school (I know, shouldn’t be thinking this far ahead…) and am trying to decide between undergrad in MechE or Computer Science, both with a goal of becoming a patent/IP lawyer. I am currently leaning towards CS, but only because I enjoy/understand my CS class more than my physics class. </p>

<p>My Questions:

  1. In regard to the job outlook, do you have any input on attorneys with CS degrees versus ME degrees? For CS degrees, BA vs BS?</p>

<ol>
<li>Is a patent attorney with a CS degree restricted to only reading through lines of code, or do they often deal with other sorts of IP?</li>
</ol>

<p>Thanks</p>

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<p>dadofsam:
Really appreciate your time and thoughts. Thank a lot for your sober analysis and valuable input!</p>

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<p>Danord: As you have said (and as I have said many times on this forum) you are thinking too far ahead. First concentrate on choosing colleges to apply to and picking a major that you will like AND DO WELL IN and try to get admitted to that program. The rest can wait a few years. You may find that you decide to change your career path entirely while in college.</p>

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<p>Hiking10k:</p>

<p>beyond the two paths clearly outlined by dadodsam, I think there is a third way: </p>

<p>Start your own shop!</p>

<p>That may sound like a crazy scenario for somebody straight out of law school but I don’t believe it is. In the current economy I personally think it is the best choice. Big law is not hiring and small boutique shops are also struggling. </p>

<p>It is the path I followed and it has worked beyond my wildest expectations. I graduated from law school two years ago and opened shop the day after my acceptance to the state bar. I took the patent bar six months later. I now have five to six long term clients and am ready to hire another partner because on the demand on the business. I don’t advertise, don’t even have web site but still business is flowing in. I don’t bill by the hour and my commute is 20 feet from my bedroom to my home office. </p>

<p>This may sound too good to be true, like one of these late night infomercials! Now granted, I didn’t follow the traditional path. Law is really a second career to me after 25 years as a technology entrepreneur. I graduated from MIT back in 1980 and have started and run a number of companies, none of which unfortunately hit the jackpot. After the market bust of 2000, where my latest venture had run out of cash, I was getting bored with nothing to do while waiting for the tech market to recover. I thought I would form a consulting company to work with small business. After dealing with the frustrations of trying to get my own inventions protected and patents filed, I felt there was a disconnect between what emerging technology companies needed and what IP firms offered. There was no concept of building IP as an asset that could be leveraged. Patent work was just a big black hole where money went in and little ever came out. I then thought about becoming a patent agent but quickly realized I would better off as an attorney. I could give all type of business advice not just write patents. </p>

<p>I had to have an angle and I found it: the patent field was going through major changes, established attorneys were confused by the new rules and major patent reform was on the horizon. Clients hated the bill by the hour model (I know I did) and they wanted quick results. I focused on a small niche which most established patent firms don’t cover which is accelerated examinations. Established firms firms don’t do these examinations because they don’t know how and even if they do it their business model makes it difficult for them to pursue these opportunities: you needed to do tons of upfront research and you could not charge it all back to the client. I tested the concept with a few tech companies and their investors and the response was immediate: you mean you can get me an office action on the merits within 3 months as opposed to 3 years! A patent within one year as opposed to 5! Where do I sign? </p>

<p>I also approached universities for business as they all try to leverage their R&D but it didn’t go far. They wanted docketing software, liability insurance and the competition was fierce. They also didn’t care about accelerated examinations as much as small companies.</p>

<p>So now, I work with a few hand picked companies that need to build a patent portfolio in order to raise capital. The projects are at least a year in length and I charge the companies a flat monthly retainer. Companies don’t see my cost as an expense but as an investment in IP. I can help them monetize their inventions. I work on nanotech, software, medical devices and anything I believe I can get my hands around. I “imbed” with the inventors until I know everything about their work. That will typically take months. My objective is to know as much about the technology as the key inventors before I write a single sentence in the application. Most inventors have no clue about the prior art so I have developed specialized search tools to help me survey the opportunity. </p>

<p>Since you have a strong technology background, and if you are willing to invest a ton of time to understand new technologies, i don’t see why what I do could not work for you. Send me a PM, maybe we could work together!</p>

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<p>Cellardweller: Congratulations on your innovative and imaginative way to start a practice. Best of luck as you continue expanding.</p>

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<p>danord - I am currently finishing up my senior year in achieving a B.S. in Computer Science, and I have sent off my law school applications. Like you, I thought ahead. I knew that I wanted to be a patent attorney in the 8th grade. I chose Computer Science because it is a growing field for patent law, and the first time that I wrote a program was during my freshman year of college. If you feel like patent law is what you want to do, focus on that goal and work for it. I’ve done numerous extracurricular activities (ex. student government, judicial board, etc) which not only are beneficial for law school, but are also beneficial for internships. </p>

<p>I encourage you to go for the B.S. It may limit your schools, but trust me, you will be better off. I have friends who are getting a B.A. in CSC, and they regret it. You will learn more of a practical application, and that’s incredibly useful. </p>

<p>The plus to CSC is that there are really awesome and well paying internships. Also, I have a couple contacts who used to sit in on admissions boards for law school, and having a major like CSC makes you stick out as a candidate (in a good way :slight_smile: )</p>

<p>I hope this helps. Thinking ahead isn’t a bad thing, and a plus is that you’ll have a stable undergrad degree :)</p>

211

<p>Is there an oversupply of patent lawyers? Also, would majoring in Aerospace Engineering be a good choice if you are considering to go into patent law some time later in your career? How hard is it to get a job as entry-level patent lawyer these days?</p>

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<p>Firstmove: From your message it sounds as if you are a high school student. It’s good to think ahead, but if my understanding is correct and if you are thinking seriously about a career, frankly you are thinking too far ahead.</p>

<p>Whatever the situation may be today, it probably will be different once you have finished both college and law school (if you go to law school, that is). You should focus on college and choose a major that you will like and that you will do well in. Otherwise, you are setting yourself up for four difficult years in college and, in addition, if you don’t do well in your major you will not be a prime candidate either for a good engineering job or for law school or any other graduate school.</p>

<p>If my understanding of your current situation is not correct, let us know.</p>

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<p>I would like to echo FirstMove’s question: I am currently in Aerospace Engineering, and I want to do patent law, so I am somewhat curious if AE is very marketable for patent law. </p>

<p>I am asking mainly because if it was a contest between AE and no patent law OR something like mechanical engineering and patent law, I would go with ME as they are similar enough, though I like AE better. </p>

<p>Also, I would like your opinion on the saturation of patent law/the difficulties of getting into the industry if you go to a non t14 school. I saw you said there are other good patent law schools, but I am more so asking if you do not get into those either. Thanks for the help.</p>

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<p>Also, what about Biomedical Engineering? Is it marketable for patent law? </p>

<p>I’m a second year college student.</p>

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<p>graduatttpe</p>

<p>There is no such thing as good law schools for patent law. There are very few classes generally on patent law in most law schools. A few have special certificate programs in IP, although it is not clear that helps much to get a job. Getting an internship with a patent law firm during the summer second year is probably the best route to get an offer on graduation. </p>

<p>Frankly, your technical competency is more valuable than where you went to law school. Mechanical and electrical engineering are probably the most common backgrounds for patent attorneys together with computer science, just because of the sheer number of patent applications in those fields. If you want to work on biotech patents you will most likely need a PhD. </p>

<p>In theory, you could have pretty much any technical background to practice patent law. I agree with dadofsam. Study the field you like best and will do well in. I would stay away from biomedical engineering as it is really a hodgepodge of disciplines with poor track record for employment in general.</p>

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<p>I have just finished the first half of my junior year in college. I am pursuing a degree in mechanical engineering. At this time I am thinking about the options I have after I earn my degree. As I have been considering patent law for a number of years now, I’d like to know if it would be wise for me to begin studying for the LSAT now and plan on going to law school right after I finish my undergrad. </p>

<p>I’m conflicted as to whether I should go to law school right after undergrad or find a job with my bachelor’s degree and then later consider going to law school. Assuming I go to law school right away, would it be very detrimental to my credentials as a patent attorney knowing that I don’t have experience in industry? Or, are there many patent attorneys (as well as jobs) out there whose qualifications don’t necessitate engineering experience? </p>

<p>Thank you for all input.</p>

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<p>Industry experience is not a prerequisite to becoming a patent attorney. Patent prosecution experience on the other hand is certainly helpful. How do you do that? By becoming a patent agent. You don’t need to go to law school or even take the LSAT, but you need to pass the patent bar which is quite tricky. You do need a BS in engineering or science to be eligible for the patent bar. There are plenty of online prep tools for the patent bar that are fairly cheap. Patent agents can easily make over $100/hr writing patents as contractors or they can be hired by a patent law firm. It is a great way to determine if you really want to go through the hassle and expense of law school. Some agents never become attorneys. Some become patent examiners for the USPTO which is actually on a hiring binge. You will also have a much higher chance to find a job as a patent attorney on graduation from law school and will get a higher starting salary if you already have the experience as a patent agent.</p>

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<p><<in theory,=“” you=“” could=“” have=“” pretty=“” much=“” any=“” technical=“” background=“” to=“” practice=“” patent=“” law.=“” i=“” agree=“” with=“” dadofsam.=“” study=“” the=“” field=“” like=“” best=“” and=“” will=“” do=“” well=“” in.=“” would=“” stay=“” away=“” from=“” biomedical=“” engineering=“” as=“” it=“” is=“” really=“” a=“” hodgepodge=“” of=“” disciplines=“” poor=“” track=“” record=“” for=“” employment=“” in=“” general.=“”>> Please elaborate. I like Biomed best.</in></p>

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<p>Biomedical engineering has often been considered as “engineering light”. It is typically if not always an interdepartmental program. Biomed programs are often offered by schools with weak overall engineering offerings such as JHU or Duke. The biggest problem with all biomed programs is that they lack a strong scientific grounding in a particular discipline. Chemical engineering is based on the chemical sciences, mechanical and electrical engineering on physics, biological engineering on biology. Biomedical engineering on the other hand is a mix of various disciplines, none of which are covered in depth. There are no standard biomed programs. A little mechanical, a little electrical, sometimes some biology and some computer science. Graduating students just don’t have any strong skill sets. For this reason especially, MIT decided long ago not to offer a biomed degree. They offer biological engineering which is very different and based on biological principles, which can be very useful if you work on drug development or biotechnology.</p>

<p>If you look at surveys of starting salaries for engineers, biomedical engineers are always at the bottom. Chemical, electrical and mechanical engineers always dominate in part because they have very large member societies, have standardized curricula and are present in every industry. Even in the biomedical field companies prefer hiring engineers from established disciplines. I have worked for over 25 years in the medical device field and none of the companies I worked with ever hired biomedical engineers; we hired plenty of mechanical engineers, electrical engineers, computer scientists and even material scientists. So, even if your interest lies in the biomedical field you are much better off with a traditional engineering degree. even more so if you want to do patent work, because at least you will know one field well.</p>

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<p>Graduatettpe: If you really are intersted in patent law, a degree in mechanical engineering probably would be more useful than one in aerospace engineering, since it would or could cover a broader range of topics. But this will be preferred only if you can do well in that course of study; otherwise it could negatively affect your law school admission possibilities.</p>

<p>But if you really want to do aerospace enginering, then major in that.</p>

<p>As for biomedical engineering, I defer to Cedllardweller’s knowledge.</p>