Advice for Patent Law Forum

[afcart]

Hi everyone! I'm trying to choose a law school right now (and even considering not going), and I was wondering if I could get some advice from someone who has had experience working in patent law in particular. I have an engineering degree from undergrad, I've found patent law to be very interesting, and I'm familiar with it from some experience at the USPTO. I'm heard all the arguments against "special snowflakes" or taking on debt for prestige. The realities of a legal education today are clear to me, and I have no delusions about being a special snowflake. I would still like to go to the best school I can and I was wondering if prospects in patent law were less bleak.

My options right now are to go to UCLA w/$105k, Michigan w/$75k, or Duke w/$67.5k (I haven't negotiated yet). Alternatively, I have a job offer to join the PTO as a patent examiner. I know I want to be a lawyer, but with the current job market I don't know if the better rankings at Michigan/Duke are worth the money, or if it's even in my best interests to go to law school with a secure job offer in hand. Are there any patent folks out there who can shed some light on my situation?

Thanks!

[DildaMan]

Where do you want to work after graduation?

[afcart]

Where do you want to work after graduation?

I would prefer CA or NY.

[Nelson]

If you're at all interested in patent pros, it's worth going to the PTO full time as an examiner for a few years. Law school isn't going anywhere.

[afcart]

If you're at all interested in patent pros, it's worth going to the PTO full time as an examiner for a few years. Law school isn't going anywhere.

Is it worth it if I want to go into litigation?

[Nelson]

If you're at all interested in patent pros, it's worth going to the PTO full time as an examiner for a few years. Law school isn't going anywhere.

Is it worth it if I want to go into litigation?

It certainly won't hurt. Compared to being straight through from undergrad, getting some work experience is almost always worth it.

[rpupkin]

The patent folks around here could give you more meaningful advice if you provided a little more info:

What do you want to do in patent law? Prosecution? Litigation?

What kind of engineering degree do you have?

You mentioned that you are familiar with patent law due to "some experience at the USPTO." What was the nature of that experience? Was it an undergrad internship or was it professional experience?

[fl0w]

Right. Where are you in life? Fresh out of undergrad? Been working a few years? Have a wife and kids?
CA is really two markets: SoCal and Bay Area.

[afcart]

The patent folks around here could give you more meaningful advice if you provided a little more info:

What do you want to do in patent law? Prosecution? Litigation?

What kind of engineering degree do you have?

You mentioned that you are familiar with patent law due to "some experience at the USPTO." What was the nature of that experience? Was it an undergrad internship or was it professional experience?

Got it, thanks! I want to do litigation. The experience at the PTO was a summer internship where we basically worked on cases for primary examiners. It's a great job in terms of salary and benefits, but it was definitely dry and repetitive which is what drove me away from prosecution.

I would be going to law school fresh out of undergrad. No wife or kids, and I am from and going to college in Los Angeles.

[rpupkin]

Got it, thanks! I want to do litigation. The experience at the PTO was a summer internship where we basically worked on cases for primary examiners. It's a great job in terms of salary and benefits, but it was definitely dry and repetitive which is what drove me away from prosecution.

That's really good to know. Still, I think there are good reasons to work for a year or two as a patent examiner even if you are fairly certain that you don't want to do prosecution. First, as a general matter, you'll likely be a better law student, and a more attractive job candidate, if you have a couple of years of professional experience. Plus, as an unmarried 22-year old, you should be able to save up a fair amount of money, which will help offset your debt when/if you ultimately go to law school.

Specific to patent law, your experience as a patent examiner would be valuable even if you decide to go into litigation. A patent's prosecution history is often relevant to invalidity and infringement litigation. Moreover, the new post-grant review proceedings before PTAB are looking like they'll be a pretty big deal in patent litigation. Experience at the PTO would be relevant there as well.

I would be going to law school fresh out of undergrad. No wife or kids, and I am from and going to college in Los Angeles.

You could justify going to law school right now. Given that you have an engineering degree, and considering that you got into good law schools with decent scholarship money, you'll probably be fine. BUT....keep in mind that patent litigation is not an easy field to break into. Unlike with pros, where your law school grades barely matter (though your undergrad grades do!), patent litigation generally requires above-median grades from a top school.

All in all, I think the best choice for you is to take that job as a patent examiner at the PTO. As Nelson said, law school isn't going anywhere.

[fl0w]

All of the above is pretty spot on.

Understanding the patent prosecution process is definitely important in patent litigation. And post-grant reviews are quickly becoming a key litigation strategy in many matters.

The thing about your engineering background is it becomes exponentially more valuable when coupled with work experience. While USPTO is one form of relevant work experience, many law firms that want you for your engineering experience would REALLY start drooling if you had work experience in your engineering field (mechanical engineering, computer science, computer engineering, biomeidcal.. these are all extremely hot in the Bay Area at least). I'd even argue that such field experience is more valuable than the USPTO because you can learn about prosecution when you hit the ground running in your practice. But years spent as an engineer is the rare skills that firms want from a patent litigator.

So honestly I'd say you should seek a job in your field of engineering if that is possible. If it isn't, then working at the USPTO is great experience as well because you will have a lot of opportunity to research and learn about different technologies, etc. + learn about the inner workings of the office.

All of this said, I don't think any undergrads should be allowed to go to law school right out of undergrad. There just isn't a replacement for substantive work experience. It makes you a better student and a more attractive candidate.

[afcart]

Thanks for all the valuable feedback, I really appreciate it.

Around sophomore year of undergrad was when I realized I really didn't enjoy engineering (I'm MechE). High school me thought MechE would be like being a car mechanic (laughable, I know). I had no idea what it would actually entail, both in school and in industry. I (foolishly) actively avoided internships in industry that involved actual engineering work, and explored my interest in law instead. I am taking a patent law course in our law school right now with a professor who used to be a litigation partner with Irell & Manella and I was so relieved when I discovered that I loved both learning the substantive law and the stories about the kind of work he did there. For once I feel like I know what I'm actually getting into, especially with TLS providing the harsh realities, and I know that I want it.

Please bear with me as I know I'm young and probably naive, but I can't help but feel like I'm delaying my life by not going straight to law school. If I don't need the work experience to break into litigation, I can't seem to justify spending years of my life working before going to law school. It just seems strange to me that I would do work that I don't like and delay doing work I actually want to do. What do you guys think? Could you elaborate a little on why it's so bad to go to law school straight out of undergrad?

[konoha]

But years spent as an engineer is the rare skills that firms want from a patent litigator.

Hi, could you expand on this a bit?

I've read folks with years of experience, who then decided to pursue law, would have a difficult time due to being older. How about an applicant that is (35-40ish/ engineering/ and primary examiner).

Thanks,

[fl0w]

But years spent as an engineer is the rare skills that firms want from a patent litigator.

Hi, could you expand on this a bit?

I've read folks with years of experience, who then decided to pursue law, would have a difficult time due to being older. How about an applicant that is (35-40ish/ engineering/ and primary examiner).

Thanks,

i finished school at 30. I'm not sure that my age made anything more difficult for me, but I'm single and do not support a family. Can you be more specific about what you mean / why things would be harder?

[09042014]

Experience is only desired in patent lit if it's on point to stuff likely to come up in a patent case. However, any good experience you'd get is probably a better career than being a lawyer. So if you are doing semiconductor work for intel, GREAT experience, but it's also a better career than patent shitigation.

PTO experience is good for prosecution, but patent agent experience is way better. I'd take the USPTO jerb, and then try to land a job at at DC patent prosecution shop. Alternatively, see if GW or some other local school will hand out a fat scholarship for a part time DC law school. Some DC patent shops will employ you as student associate while you go to school. Finnegan does at least.

[run26.2]

Some DC patent shops will employ you as student associate while you go to school. Finnegan does at least.

This is exactly what I was going to say. I'd say you should try to go to GULC, if possible, though. Also, working as an examiner would be helpful, and make you marketable to certain types of firms, if you were open to doing litigation in the form of the new AIA proceedings at the PTAB. You would probably start off doing other things (probably including prosecution, though also probably district court litigation) before you started working on these.

[4lg2lb]

I’ll offer some different advice.

You have obviously done well enough in undergrad and on the LSAT to get into great law schools. I did the patent externship my 1L summer at the patent office. Based on your opportunities, don’t waste your time becoming an examiner. The payoff in working as an examiner for 18 months when you have already worked there for 10 weeks is going to be marginal. The fact that you already have this experience on your resume is good enough. Why pass up the earning potential that you could make as a lawyer? Instead, take the patent bar now to show firms your continued interest in patent law. It shouldn’t take you more than 6-7 weeks to study for and take the test.

Here’s the one caveat I’d give you: your undergrad degree isn’t as desirable as an EE degree or masters/doctorate in another hard science. You’ll still have to do decent in law school to work for a more prestigious patent firm or to get a clerkship. In addition to your school’s OCI, students interested in patent law can also get jobs through the Loyola Patent Law Interview Program (PLIP). Boutiques and large law firms from across the country attend this job fair. These should provide enough opportunity for you to land a job in one of the locations you desire.

As for the years of engineering experience that firms desire for their litigators… I personally don’t see that. Firms want good lawyers as litigators. The engineering background helps you understand the concepts you’re dealing with, but more than anything it enables the firm to say that their litigators have “substantial knowledge” of the technical issues involved (which they say regardless of how long you've worked). Clerking in a patent heavy district would do more for your career then spending 5 years doing CAD drawings or 2 years pumping out office actions in some mind-numbing, ME based art unit.

Take the scholarship, pass the patent bar, do well in school, become a patent attorney.