Requirements for IP Lawyer? Forum

[IT_GUY]

Ahh... you guys are very analytical. I appreciate that. I looked at many of the patent attorneys' bio who have biology background. Most of them have BS (Biology) degree.

Yes, I do understand computer patents. I did not want to put my entire resume here but some of the things that I have done on the programming side include databases - Oracle, Sybase, SQL Server, MySql. OS - UNIX, Linux and windows and have done development on many of the vendor purchased tools that are used for data entry and reporting. I have managed and done business analysis on internet project other than managing database development projects.

Why do you want to leave what appears to be a very lucrative career to go to law school?

TCQ but it will inevitably be lost on him... I predict he will answer (1) because I am really interest in expanding my opportunities and am familiar with patent law and want to be a patent lawyer, or (2) because patent attorneys make more and have better upward mobility... sigh...

BTW, getting hired to do CS type prosecution work with a degree in dairy technology (heh), even with your "life science" masters is not likely regardless of your industry experience. "Dairy Technology" just doesn't have the ring that "Computer Science" does on a firm bio. That said, go to a top law school and get top grades and hope for the best--just like everyone else.

Thanks! #1 and #2 are correct. Besides these, (3) there has not been a lot of job stability because of fewer jobs, lesser funding and outsourcing. IT people keep their fingers crossed most of times. (4) I wish to do some pro bono work in other areas of law like immigration, criminal defense litigations etc. (5) "IF and ONLY IF" there is a need to work beyond the normal retirement age, attorneys can work for few more years beyond normal retirement age.

[IT_GUY]

We aren't saying you won't be able to handle the work, we are just concerned nobody will hire you for the work. Talk to some firms in the area you want to work.

Yes, I spoke to one IP attorney. He was honest about the educational qualification and also about the age factor in the job market. Typically they like newbie lawyers to be younger (less than 40) because the younger ones are very excited about the job, retain more information (which is very important for this type of work) and are willing to work for younger people. That's how most law firms think in general.

I am considering going to Univ Wisconsin Madison Law school (ranked # 28). For work in IP law area, the attorney suggested trying more in the west coast areas.

[WestOfTheRest]

We aren't saying you won't be able to handle the work, we are just concerned nobody will hire you for the work. Talk to some firms in the area you want to work.

Yes, I spoke to one IP attorney. He was honest about the educational qualification and also about the age factor in the job market. Typically they like newbie lawyers to be younger (less than 40) because the younger ones are very excited about the job, retain more information (which is very important for this type of work) and are willing to work for younger people. That's how most law firms think in general.

I am considering going to Univ Wisconsin Madison Law school (ranked # 28). For work in IP law area, the attorney suggested trying more in the west coast areas.

The number one reason law firms like younger people is that they can retain them for longer. 40 is about where someone should be looking to become an associate partner.

[IT_GUY]

Yes, I spoke to one IP attorney. He was honest about the educational qualification and also about the age factor in the job market. Typically they like newbie lawyers to be younger (less than 40) because the younger ones are very excited about the job, retain more information (which is very important for this type of work) and are willing to work for younger people. That's how most law firms think in general.

I am considering going to Univ Wisconsin Madison Law school (ranked # 28). For work in IP law area, the attorney suggested trying more in the west coast areas.

The number one reason law firms like younger people is that they can retain them for longer. 40 is about where someone should be looking to become an associate partner.

That is probably true. Actually, the lawyer I spoke to started his own firm at age 35 along with 4 other lawyers (coworkers from another firm). At 35 years of age, he had around 7 - 8 years of experience as a patent lawyer so he was able to start this company!

[thwalls]

Ahh... you guys are very analytical. I appreciate that. I looked at many of the patent attorneys' bio who have biology background. Most of them have BS (Biology) degree.

Yes, I do understand computer patents. I did not want to put my entire resume here but some of the things that I have done on the programming side include databases - Oracle, Sybase, SQL Server, MySql. OS - UNIX, Linux and windows and have done development on many of the vendor purchased tools that are used for data entry and reporting. I have managed and done business analysis on internet project other than managing database development projects.

I just spent the past 6 months looking for patent agent position while I'm going to law school, I got one interview and luckily got one offer. I sent out over 75 cover-letters and CVs which included my research while I finished my PhD in Chemistry from a top 5 public university. I was told point-blank by my interviewer that they do not even look at people from the hard sciences without a PhD. You may have found people out there who are BS biologists, but in this market you'll never get a job with that. But if you're more interested in litigation, copyrights, trademarks, etc. you may have better luck. But as for prosecution, even if you pass the patent bar before law school, you're going to have a really tough time.

Also, if you don't have a CS degree you're going to have a huge hurdle trying to convince firms that you can prosecute patents - even if you have the knowledge. The reason is because they can't sell an IT guy who doesn't have a CS degree to clients who are seeking to patent code. Even if you convert your resume to a CV to flesh out your experience, I think the lack of a CS degree will really hurt. Moreover, people with CS degrees are having a really tough time finding jobs in this market as well. Again, I'm not saying that it can't be done, but you're not exactly going to be setting yourself up for great success. I don't care what your lawyer friend said about the industry either, it's always easier to advise people when you don't have a stake in the outcome and you need to take his advice with a grain of salt. You don't want to go to law school without the prospect of a job after you're done. Check out the employment threads on intelproplaw.com if you don't believe me.

I was promised by an attorney at Morgan Lewis that there would be nothing but great jobs out there for someone with my skills/degrees. I was told I would be able to find several firms that would pay me a huge salary and also would pay for me to go to law school part-time. Six months later, after passing the patent bar and getting my registration number, I received one offer and I'll be paying my own way when I attend law school this fall.

Be careful and good luck in whatever route you choose to take.

[OrdinarilySkilled]

I was promised by an attorney at Morgan Lewis that there would be nothing but great jobs out there for someone with my skills/degrees. I was told I would be able to find several firms that would pay me a huge salary and also would pay for me to go to law school part-time. Six months later, after passing the patent bar and getting my registration number, I received one offer and I'll be paying my own way when I attend law school this fall.

You probably just have a butt personality. All the patent agents I know are effing weird.

[CyLaw]

Hi,

I am planning to attend law school to be an IP attorney. I am a computer consultant. I just saw the requirements for the IP attorneys for registration at the US Patent Office. The closest educational requirements that match mine is Undergraduate degree in Biology. I have undergrade in Dairy Technology and masters in Life Sciences. Here are the requirements link (see page 6):

http://www.uspto.gov/web/offices/dcom/olia/oed/grb.pdf

I am just thinking too ahead since i have not yet started the admission process but since my interests are in IP, I want to know whether my educational qualification matches what US PTO is looking for.

Thanks

I don't think you can get a category A admission with that degree, you should contact the PTO--but it's very unlikely. Do you qualify under category B?

I think I may qualify for category A because of my MS (Life Sciences), which is a biology with concentration in Biotechnology but I have to check. I am yet to start law school but if I go to law school, then the only thing I am interested in being a patent attorney. I will check with PTO; I hope I get a clear response.

You should still contact the USPTO, but the guidelines are quite clear:

i. Bachelor’s Degrees In Other Subjects: An applicant with a Bachelor’s degree in a subject not listed above, such as Biological Sciences, Pharmacy, Mechanical Technology, or a Computer Science degree from an institution that was not accredited by the CSAC of the CSAB or by the CAC of ABET on or before the date the degree was awarded must establish to the satisfaction of the OED Director that he or she possesses the necessary scientific and technical training under either Category B or Category C below.

ii. Graduate Degrees: An applicant who has a Master's or higher level degree in one of the subject areas listed above, but does not have a Bachelor's degree in such subject, must established to the satisfaction of the OED Director that he or she possesses the necessary scientific and technical training. Possession of the necessary scientific and technical training may be satisfactorily established in the manner set forth under either Category B or Category C below.

It does not seem that you will be able to qualify under category A. You will have to qualify under B or C.

Regarding doing software without a proper Computer Science / Engineering background. The issue is not handling the technical or programming side (which is the smallest part of Com Sci and CPR E), it is the theory and algorithm side (being able to determine what is possible/impossible and what is obvious to a person of observable skill in the art) Note that this is why in category A programming and technical degrees are not allowed, only certain accredited computer science degrees that require high level math and computational theory courses (edit: in addition to the engineering degrees of course). The need for this becomes obvious not in the patent applications themselves, but in the responses to office actions during patent reexams.

Also, be aware that software patents are under constant fire and may not even exists without legislative intervention by the time you end law school. Take a look at the recent In Re Proudler decision from the USPTO's BPAI to see the current view of the USPTO on software patents.

[Edit sorry quote old guidelines, replaced with new]

[clintonius]

We aren't saying you won't be able to handle the work, we are just concerned nobody will hire you for the work. Talk to some firms in the area you want to work.

Yes, I spoke to one IP attorney. He was honest about the educational qualification and also about the age factor in the job market. Typically they like newbie lawyers to be younger (less than 40) because the younger ones are very excited about the job, retain more information (which is very important for this type of work) and are willing to work for younger people. That's how most law firms think in general.

I am considering going to Univ Wisconsin Madison Law school (ranked # 28). For work in IP law area, the attorney suggested trying more in the west coast areas.

The number one reason law firms like younger people is that they can retain them for longer. 40 is about where someone should be looking to become an associate partner.

What's an associate partner? I haven't heard the term.

[thwalls]

I was promised by an attorney at Morgan Lewis that there would be nothing but great jobs out there for someone with my skills/degrees. I was told I would be able to find several firms that would pay me a huge salary and also would pay for me to go to law school part-time. Six months later, after passing the patent bar and getting my registration number, I received one offer and I'll be paying my own way when I attend law school this fall.

You probably just have a butt personality. All the patent agents I know are effing weird.

Hey, I'm half-scientist/half-IP practitioner. We're not wierd...

...we're eccentric.

[IT_GUY]

I just spent the past 6 months looking for patent agent position while I'm going to law school, I got one interview and luckily got one offer. I sent out over 75 cover-letters and CVs which included my research while I finished my PhD in Chemistry from a top 5 public university. I was told point-blank by my interviewer that they do not even look at people from the hard sciences without a PhD. You may have found people out there who are BS biologists, but in this market you'll never get a job with that. But if you're more interested in litigation, copyrights, trademarks, etc. you may have better luck. But as for prosecution, even if you pass the patent bar before law school, you're going to have a really tough time.

Also, if you don't have a CS degree you're going to have a huge hurdle trying to convince firms that you can prosecute patents - even if you have the knowledge. The reason is because they can't sell an IT guy who doesn't have a CS degree to clients who are seeking to patent code. Even if you convert your resume to a CV to flesh out your experience, I think the lack of a CS degree will really hurt. Moreover, people with CS degrees are having a really tough time finding jobs in this market as well. Again, I'm not saying that it can't be done, but you're not exactly going to be setting yourself up for great success. I don't care what your lawyer friend said about the industry either, it's always easier to advise people when you don't have a stake in the outcome and you need to take his advice with a grain of salt. You don't want to go to law school without the prospect of a job after you're done. Check out the employment threads on intelproplaw.com if you don't believe me.

I was promised by an attorney at Morgan Lewis that there would be nothing but great jobs out there for someone with my skills/degrees. I was told I would be able to find several firms that would pay me a huge salary and also would pay for me to go to law school part-time. Six months later, after passing the patent bar and getting my registration number, I received one offer and I'll be paying my own way when I attend law school this fall.

Be careful and good luck in whatever route you choose to take.

Thanks for the intelproplaw link. Is a law career in litigation, copyrights, trademarks etc. a good one? The lawyer I spoke to mentioned that there is nothing in my educational and professional background that would stand out in job market in Milwaukee, WI, which is where I live. He mentioned that there are more jobs in east and west coast (more in west).

[IT_GUY]

It does not seem that you will be able to qualify under category A. You will have to qualify under B or C.

Regarding doing software without a proper Computer Science / Engineering background. The issue is not handling the technical or programming side (which is the smallest part of Com Sci and CPR E), it is the theory and algorithm side (being able to determine what is possible/impossible and what is obvious to a person of observable skill in the art) Note that this is why in category A programming and technical degrees are not allowed, only certain accredited computer science degrees that require high level math and computational theory courses (edit: in addition to the engineering degrees of course). The need for this becomes obvious not in the patent applications themselves, but in the responses to office actions during patent reexams.

Also, be aware that software patents are under constant fire and may not even exists without legislative intervention by the time you end law school. Take a look at the recent In Re Proudler decision from the USPTO's BPAI to see the current view of the USPTO on software patents.

I have reading profiles of IP attorneys for the last few days. In fact many of the people who started IP law practices have their undergrad degrees in some unrelated practices. Most of them have just an undergrad in some science field and are working on all sorts of things like software, mechanical engg., life sciences all at the same time. They started their practice within the last 6 - 7 years.

I just looked up one of them now. She started practice a while ago and has an undergrad in BA and then a law degree. Her practice areas are software, hardware, internet, privacy and security, social media law and more... I am not talking about the marketability of skills in the current/ future job market - I am just wondering how they go registered with PTO...

Looks like I am missing something. I have sent an email to USPTO to check with them about my educational background. I am not sure when they will reply.

[peterstein]

I just looked up one of them now. She started practice a while ago and has an undergrad in BA and then a law degree. Her practice areas are software, hardware, internet, privacy and security, social media law and more... I am not talking about the marketability of skills in the current/ future job market - I am just wondering how they go registered with PTO...

Because in those practice areas, they don't need to.

[IT_GUY]

I just looked up one of them now. She started practice a while ago and has an undergrad in BA and then a law degree. Her practice areas are software, hardware, internet, privacy and security, social media law and more... I am not talking about the marketability of skills in the current/ future job market - I am just wondering how they go registered with PTO...

Because in those practice areas, they don't need to.

Are you saying that in order to practice IP in these areas, we do not need to register with PTO? Why do you need to register with the PTO then?

[peterstein]

I just looked up one of them now. She started practice a while ago and has an undergrad in BA and then a law degree. Her practice areas are software, hardware, internet, privacy and security, social media law and more... I am not talking about the marketability of skills in the current/ future job market - I am just wondering how they go registered with PTO...

Because in those practice areas, they don't need to.

Are you saying that in order to practice IP in these areas, we do not need to register with PTO? Why do you need to register with the PTO then?

me thinks you have bad, bad reading comprehension, and will fail in the legal field

[CyLaw]

I just looked up one of them now. She started practice a while ago and has an undergrad in BA and then a law degree. Her practice areas are software, hardware, internet, privacy and security, social media law and more... I am not talking about the marketability of skills in the current/ future job market - I am just wondering how they go registered with PTO...

Because in those practice areas, they don't need to.

Are you saying that in order to practice IP in these areas, we do not need to register with PTO? Why do you need to register with the PTO then?

You only need to be in the patent bar to practice Patent Prosecution work. No other area of IP law, internet law, or entertainment law requires it.

[Grizz]

I just looked up one of them now. She started practice a while ago and has an undergrad in BA and then a law degree. Her practice areas are software, hardware, internet, privacy and security, social media law and more... I am not talking about the marketability of skills in the current/ future job market - I am just wondering how they go registered with PTO...

Because in those practice areas, they don't need to.

Are you saying that in order to practice IP in these areas, we do not need to register with PTO? Why do you need to register with the PTO then?

They don't.

Copyrights,trademarks,trade secrets =/= patents.

[IT_GUY]

I just looked up one of them now. She started practice a while ago and has an undergrad in BA and then a law degree. Her practice areas are software, hardware, internet, privacy and security, social media law and more... I am not talking about the marketability of skills in the current/ future job market - I am just wondering how they go registered with PTO...

Because in those practice areas, they don't need to.

Are you saying that in order to practice IP in these areas, we do not need to register with PTO? Why do you need to register with the PTO then?

They don't.

Copyrights,trademarks,trade secrets =/= patents.

Got it! Thanks a lot...

[IT_GUY]

I just looked up one of them now. She started practice a while ago and has an undergrad in BA and then a law degree. Her practice areas are software, hardware, internet, privacy and security, social media law and more... I am not talking about the marketability of skills in the current/ future job market - I am just wondering how they go registered with PTO...

Because in those practice areas, they don't need to.

Are you saying that in order to practice IP in these areas, we do not need to register with PTO? Why do you need to register with the PTO then?

me thinks you have bad, bad reading comprehension, and will fail in the legal field

Feedback helps Its all good...

[IT_GUY]

I just looked up one of them now. She started practice a while ago and has an undergrad in BA and then a law degree. Her practice areas are software, hardware, internet, privacy and security, social media law and more... I am not talking about the marketability of skills in the current/ future job market - I am just wondering how they go registered with PTO...

Because in those practice areas, they don't need to.

Are you saying that in order to practice IP in these areas, we do not need to register with PTO? Why do you need to register with the PTO then?

You only need to be in the patent bar to practice Patent Prosecution work. No other area of IP law, internet law, or entertainment law requires it.

THanks. I am waiting for a response from PTO. It looks like they either not response or respond after a while. I will post something when I hear from them...

[IT_GUY]

THanks. I am waiting for a response from PTO. It looks like they either not response or respond after a while. I will post something when I hear from them...

I called PTO. They said that my MS (Life Sciences) will qualify. On the phone, I mentioned the courses that I took during my grad school and they said that things like Molecular biology, biotechnology etc. can qualify; I just have submit my transcripts and school brochure to PTO during the process of registering with PTO.

[CyLaw]

THanks. I am waiting for a response from PTO. It looks like they either not response or respond after a while. I will post something when I hear from them...

I called PTO. They said that my MS (Life Sciences) will qualify. On the phone, I mentioned the courses that I took during my grad school and they said that things like Molecular biology, biotechnology etc. can qualify; I just have submit my transcripts and school brochure to PTO during the process of registering with PTO.

For category A or B. Just curious

[IT_GUY]

THanks. I am waiting for a response from PTO. It looks like they either not response or respond after a while. I will post something when I hear from them...

I called PTO. They said that my MS (Life Sciences) will qualify. On the phone, I mentioned the courses that I took during my grad school and they said that things like Molecular biology, biotechnology etc. can qualify; I just have submit my transcripts and school brochure to PTO during the process of registering with PTO.

For category A or B. Just curious

Category B

[Gatorbull84]

I hate to hijack the thread but I am in a similar boat. I have a bachelors in Biological Engineering and a masters in Molecular Medicine but no IP experience. I want to go to UF(havent taken the LSAT yet so who knows) and will be applying this year but I have been told that IP is getting harder and harder to crack into. Does anyone know if this is true?

[thwalls]

I hate to hijack the thread but I am in a similar boat. I have a bachelors in Biological Engineering and a masters in Molecular Medicine but no IP experience. I want to go to UF(havent taken the LSAT yet so who knows) and will be applying this year but I have been told that IP is getting harder and harder to crack into. Does anyone know if this is true?

Check out intelproplaw.com and their forums. If you have a science degree you have to have a PhD to break into the patent prosecution market. But, if you want to do litigation rather than prosecution (the actual drafting of the patent spec and its claims) then it's a different story entirely. Still, it's becoming a tough field to crack into without a terminal degree (MS is not a terminal degree in the sciences).

[IT_GUY]

I hate to hijack the thread but I am in a similar boat. I have a bachelors in Biological Engineering and a masters in Molecular Medicine but no IP experience. I want to go to UF(havent taken the LSAT yet so who knows) and will be applying this year but I have been told that IP is getting harder and harder to crack into. Does anyone know if this is true?

Check out intelproplaw.com and their forums. If you have a science degree you have to have a PhD to break into the patent prosecution market. But, if you want to do litigation rather than prosecution (the actual drafting of the patent spec and its claims) then it's a different story entirely. Still, it's becoming a tough field to crack into without a terminal degree (MS is not a terminal degree in the sciences).

I am just gonna go for it. Either patent prosecution or litigation. Being part-time, the soonest I will complete the law school will be in 4 years. Things can change - there could some other related area that could be better. Some attorneys expect some movement in the health law as well. I will just keep my eyes open. While patent law is my #1 priority, I will NOT just say "it is either patent law or nothing"...