Overview of patent and intellectual property law

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<p>I don’t buy that argument. Before I became a patent attorney, I worked with other attorneys on patent applications on my own inventions. It was extremely frustrating when the patent attorney did not have an in-depth undertstanding of the field. If technical knowledge was not that important, the USPTO would not require patent attorneys to have a science/engineering background. I must say I have seen many poorly written patents and many patent applications even from major firms get routinely rejected for failure to really understand and research the prior art. Most patent attorneys who bill by the hour have no incentive to file a well researched application. They can charge more by trying to argue with the examiner later. The problem with that approach is that the client loses out in the end, often with an application that gets delayed or even finally rejected. </p>

<p>As far as the importance of legal skills, meaning essentially claim construction skills, you can only acquire it with practice. It is not taught in law school. In the end, even the best patent attorney cannot save a poor invention, or put “lipstick on a pig”. After I research an invention for a client, if I come to the conclusion that the invention as claimed is most likely not patentable, I will tell him. Inventors always believe they are the first to come up with an idea. In many cases, I may suggest aspects of the invention he had not considered patenting that would provide much greater coverage. Sometimes, I tell them there is just no chance. I just won’t take on a case that I don’t believe in. </p>

<p>I personally think that the best patent attorneys are also counselors, not just scribes. But that requires a lot of background research. How could you possibly counsel somebody if you don’t really understand their business? I can see how just translating an invention disclosure into an application could seem boring. I typically get “imbedded” in the client company when I work on an invention and become part of the team, which is much more exciting. After a while they don’t even see me as an outsider. </p>

<p>As far as getting a Masters degree, I don’t think that it is as important as getting industry experience. Going directly from college into law school to practice patent law is a bad idea in my opinion and not very common. The majority of patent attorneys have industry experience. </p>

<p>As far as work schedule, patent law is much less stressing than typical associate work. Applications and responses to the USPTO get “docketed” (scheduled) way in advance so there is seldom an emergency that would require you working weekends. Typically, progression from associate to partner is also a lot smoother. It costs a lot of money to train a good patent attorney, and they are very hard to replace, so law firms are very reluctant to lose them. Patent law firms are also smaller with generally less than 25 attorneys, so everybody knows everybody else in the firm. I took the route of forming my own patent practice right away, but that is definitely not typical. Now, I am hiring other associates to help me with the expanding business. I look for people that are very, very good in their field. I can always train a supersmart engineer or scientist into writing patents, but I could never train a great lawyer into understanding advanced technology.</p>

<p>I would say that whether someone spends too much time in the details of a patent application is more a reflection of that person’s nature or personality than of how advanced his degree is. And patent attorneys may have to be trained to become sufficiently efficient and not spend an undue amount of time on details (some of which can be unimportant). But the patent attorney needs to have (a) enough of a technical background to be able to understand the invention with the help of the inventor (because inventors usually are much more knowledgeable in the specific technology than the patent attorney), (b) an ability to translate technical jargon and technical details into clear and understandable English, and (c) an ability to suggest variations, modifications, and the like, and to point out unnecessary details so that the inventor has the potential of receiving protection that is broader than the specific piece of work he or she has carried out.</p>

<p>cellardweller,</p>

<p>I see that you are from Connecticut. I assume from what you said earlier that many of the attorneys you deal with are from smaller local Universities as opposed to Yale? Also you said that you run your own firm. I would love to do this one day, but am baffled at how you were able to do it. How were you able to find clients willing to give you their business when you had just started up with no experience? Also how did you know where to look for clients and how to run a firm since you had just started fresh. I am very intrigued by your path to owning your own patent law firm, and I would love to hear about your experiences and how you go to be where you are today.</p>

<p>Thank you cellardweller</p>

<p>Sorry for posting on an old thread, but I wasn’t sure where else to ask this question, and dadofsam and others on this thread seem very knowledgeable. As a chemical engineering major, could I go into law school right after undergrad, and then go back to school for a masters if I found it necessary for employment? Also, can industry experience replace a masters in the eyes of employers?</p>

<p>Similar questions have been asked and answered on this thread (by me and others) but for convenience I’ll try to summarize.</p>

<p>Yes, of course you can go to law school immediately after receiving a B.S.Ch.E. degree, providing you have the necessary GPA and LSAT score.</p>

<p>Should you take a Master’s degree? Before or after law school? And is industry experience a substitute for a Master’s degree?</p>

<p>At this point in time a B.S.Ch.E. is generally speaking sufficient for employment as an IP attorney (assuming that you can find an entry level position, which is getting a bit tougher. What the situation will be in three or four years after you would have graduated law school is impossible to predict. It could be that by that time other applicants for those positions will have obtained Master’s or even Ph.D. degrees and your bachelor’s would be relatively noncompetitive in comparison. Or that might not be the case.</p>

<p>So my advice would be to either get a Master’s degree, if you can, or three to five years industry experience, which could be an equivalent. Either would put you in a better position vis-a-vis people competing with you for the entry-level positions. The Master’s degree probably would be best obtained following college, while the subject matter is still fresh in your mind. Perhaps it could be obtained at night while you work in industry. Or, if you don’t mind giving up several years of your life, you might attend evening law school while you work in industry.</p>

<p>Good luck, whicheve course you decide to take</p>

<p>How much demand is there for lawyers with good technical training (MS or PhD) in petroleum engineering / petrochemicals / related areas ?</p>

<p>There’s relatively little patent activity nowadays in petroeleum or petrochemical technology. However, if you have a sufficiently broad education and/or experience in chemical engineering, there are opportunities in certain biotech and clean energy fields.</p>

<p>I am not sure how to word what I am about to say to make sure that I get my ideas across, but I want to share something personal that I have been thinking about all day. </p>

<p>Just to introduce my current situation: I am in college pursuing two degrees and will graduate in 2015. My plans have been to pursue patent law, but until now I have never really considered why or what I want in life. If I tell you what I want in life, do you think you could help me make some early decisions toward getting there?</p>

<p>I think that patent law is fascinating in the sense that patent lawyers can become part of a team with a group of entrepreneurial-minded people who want to drive their company forward and make their own mark on history. I want to be that kind of lawyer, and I want to do what is necessary to be considered great at what I do. When I think of my future, I’m a little scared because I wonder whether I will become one of those attorneys who sits at his desk for years and slowly dies and crumbles in apathy. I look at this as a black hole in law that all but too few get sucked into after they graduate law school because they don’t have a path they want to take in life that means something important to them. I don’t want to be like that. </p>

<p>My education is in chemical engineering and English, so I hope to have the theoretical science and the writing skills down enough come graduation to begin a solid career path. But I don’t know what steps to take to get from that point to where I want to be. How to I become an asset to a company that they can trust and believe in? How do I begin to gain the skills and knowledge that will increase my ability to help companies in need of patent/IP work and that will push them to succeed? I’m thinking of interpersonal skills, business savvy and networking. What can I do now and upon graduation to challenge and push myself to move forward in my career path? I’m just looking for advice. </p>

<p>So far my plans have been to go to the USPTO after graduation, but I’m scared that between that and law school I will have absolutely no correspondence with those businessmen whose companies are helping to shape our country, and instead I will just end up being some replaceable desk slave who slowly loses his spirit. </p>

<p>Do I go into industry upon graduation to learn how companies work? Do I then get an MBA with my JD? Do I skip the patent office altogether? I just need some guidance. I’m willing to do whatever it takes as long as I know which steps to take. If you want to e-mail me and help, I would be more than willing to accept your time and consideration. Just message me personally and I can share my e-mail with you.</p>

<p>Regards,
Cody</p>

<p>LaBarrister: Your thinking is right on point that in order to be valuable to a company one should not only have good technical skills but should also have an understanding of how one’s work relates to the company’s business and contributes to its profit margin. But since you still have a couple of years of college left, not to mention law school, this is not a time to worry. And it’s rare that someone first entering the job market is expected to understand that point right away.</p>

<p>You might get some exposure to business through one or more summer engineering internships. They most likely won’t put you to work on anything valuable but you can try to get people at work explain to you how their work fits into the company’s business aims, and how the company does business in general.</p>

<p>You might then try to work in industry for a couple of years after graduation to get more insight into business. And there are plenty of books that you can read. And as far as networking, you can join the A.I.Ch.E. as a student member and go to a conference or local meeting to meet people already in the field.</p>

<p>However, at this time if you are aiming for patent law your main task is to get and keep your GPA as high as you can in order to be able to gain admittance to a law school. Otherwise your plans won’t succeed.</p>

<p>Good luck with it all.</p>

<p>GPA for now. Thank you so much, dadofsam.</p>

<p>If I chose to go to GULC or GWU for practicing IP/patent law in D.C., would I be in good standing? Would it be safer to go to UCLA or UC Davis, respectively, to find good standing in Silicon Valley? By “good standing” I mean relatively good standing for IP/patent law employment in each school’s respective city. Any other notable schools/cities for future IP/patent lawyers?</p>

<p>The reputation of your undergraduate/graduate school(s) will trump law school for patent law. Employers want to be confident that you received the best substantive education in the relevant scientific field.</p>

<p>I keep hearing different viewpoints on that. From one side, I hear that, though undergraduate education is important, IP/patent lawyers are still lawyers who happen to have a background in science or engineering. Then I hear that, though this may be the case, that background in science or engineering will be more substantive than the law school you went to. So which is it? Is it more important to have the lawyering skills, or more important to have the science/engineering skills? I doubt they are equally balanced, and I consistently hear arguments for both sides of that situation. </p>

<p>Why, in your case, is the undergraduate degree so important? With the basic education in science or engineering, wouldn’t a would-be patent attorney be able to learn just about anything he needed to learn about a subject with some dedicated studying? I really can’t see why the undergraduate education is so important. I mean, my department has some top ten rankings as far as research grants go, but as far as an overall score goes, it’s probably not even in the top 100. There is nothing that I can do about that now. If I should focus on increasing my scientific or engineering prestige/influence/skill set, would you recommend that someone go to grad school, and at a more recognizable university, and that that would be more beneficial in the long run as an IP/patent lawyer than going straight to a comparably prestigious law school? I’m not opposed to or favoring either option, but really, the consensus on this isn’t consistent.</p>

<p>I’m a headhunter for lawyers and I know what my clients want. Of course, they really want top undergrad/post grad and law schools. If they can’t get that, they want to have confidence that the science background is solid. You certainly should not assume that attorneys graduating from top law schools are better lawyers since you learn very little about practicing law in law school.</p>

<p>With that said, I respect your time. Are good grades convincing enough, even if the school is mediocre? I mean, it’s at least ABET-accredited, but we aren’t MIT.</p>

<p>Graduating with top grades is always a good thing and will be important for the next step - getting into the law school that you want. My clients are typically the largest firms or top boutiques so I do see a certain slice of recruiting. There is plenty of hiring that goes on without the use of recruiters.</p>

<p>LaBarrister: My understanding is that, in general, all ABET accredited engineering schools are considered roughly equivalent in terms of the quality of their education. I don’t understand, therefore, your comment that you school might not be in the “top 100”.</p>

<p>But you do need to get really good undergraduate grades, both for having a good basis for future employment (either as an engineer or as a patent attorney) and to have the requisites for law school admission.</p>

<p>As for the law schools you mentioned, Gorgetown and UCLA have national reputations and GW and Davis have excellent local reputations and are also known outside their localities. Consequently they aren’t that easy to get into.</p>

<p>Some questions I hope someone can answer</p>

<ol>
<li><p>(EE student here) How important is industry experience?</p></li>
<li><p>Is it true that software patents are easy enough for EE’s to handle? </p></li>
<li><p>Do firms hire students straight out of undergrad to work as patent agent/technical specialists?</p></li>
</ol>

<p>GoodnightNell:</p>

<p>It’s difficult to answer your qustions exactly because they are not specific enough. Nevertheless:</p>

<p>In becoming a patent attorney, industry experience can be very helpful, especially in distinguishing oneself from other job applicants who might not have it. In today’s economy, that’s what you have to do to get a good position, especially if you have little or no experience in IP law. In fact, that’s often what one has to do to get ANY position nowadays.</p>

<p>Law firms do hire some people to become technical advisors but I suspect they would prefer to hire people with advanced degrees, if they can get such people. However, again, if you have some special industry experience, that could make the difference between them hiring you or someone else.</p>

<p>Both EEs and CS graduates can work on software patents. It really depends on one’s particular background - courses taken or industry experience. In some firms an EE wil be expected to work on software patents whether they prefer to or not, if that’s what the workload is.</p>

<p>Wow, this thread is amazingly helpful, and is such a change from the doom-and-gloom attitude about employment. Thank you for that.</p>

<p>I have a quick question for you. I seriously toyed with the idea of becoming a patent attorney in high school, but I really REALLY liked physics. So I got a BS in physics, and loved astronomy so much that I went into grad school. Well, lo and behold, I HATED the drudgery of research at grad school. I decided to get the MS in astronomy, and am now enrolled at UNH Law School (Franklin Pierce). </p>

<p>So my problem is this: many companies/firms look more favorably on people with engineering backgrounds. I feel like I need to prove that my physics background is an asset for the breadth of knowledge I have - so even though I didn’t do engineering, I can understand technologies related to EE, Mech E, and especially optics. </p>

<p>In addition, my MS is in astronomy, which is actually heavily physics based (but is generally thought of as just learning constellations - not simulating the physics of black holes). How can I convince people that there is value in my background?</p>