Patent Examiner v. Patent Attorney Forum

[Anonymous User]

Does anyone know the benefits and consequences of deciding to be a patent examiner instead of patent attorney for a couple years after law school? The end goal is to be in a big law firm, but I do not have an offer from a desired firm coming out of law school. Is it better to take another firm or to become a patent examiner? I don't want discussion about the work-life balance.

[gk101]

for prosecution, I have seen clients show a preference for ex-examiners on occasion. I think you will gain more by working at a firm for those 2 years than being at the PTO (both in experience and probably salary). I know firms like Finnegan like to occasionally pick people from the PTO but I can't imagine you would be at a significant disadvantage trying to lateral to a similar firm after gaining some firm experience. This applies only to patent prosecution.

Haven't heard of anyone mentioning PTO experience as being a plus in IP litigation

[Anonymous User]

OP here. Would taking a job as an examiner put you back into the same position (recruiting wise) as you were applying for a job 2L year? I noticed a severe drop of interest between 2L year and 3L year.

[Desert Fox]

for prosecution, I have seen clients show a preference for ex-examiners on occasion. I think you will gain more by working at a firm for those 2 years than being at the PTO (both in experience and probably salary). I know firms like Finnegan like to occasionally pick people from the PTO but I can't imagine you would be at a significant disadvantage trying to lateral to a similar firm after gaining some firm experience. This applies only to patent prosecution.

Haven't heard of anyone mentioning PTO experience as being a plus in IP litigation

Typically its USPTO > part time law student part time patent agent > patent atttorney.

I'm not sure how kindly firms would look at doing USPTO after law school.

Actually doing patent prosecution is better experience than examining. Take the pros job. This is a no brainer.

[gk101]

OP here. Would taking a job as an examiner put you back into the same position (recruiting wise) as you were applying for a job 2L year? I noticed a severe drop of interest between 2L year and 3L year.

You will be in a much better position working at a firm and trying to lateral to a bigger firm after getting some experience. You will likely be compared against a pool of laterals and not against a pool of second year law students.

for prosecution, I have seen clients show a preference for ex-examiners on occasion. I think you will gain more by working at a firm for those 2 years than being at the PTO (both in experience and probably salary). I know firms like Finnegan like to occasionally pick people from the PTO but I can't imagine you would be at a significant disadvantage trying to lateral to a similar firm after gaining some firm experience. This applies only to patent prosecution.

Haven't heard of anyone mentioning PTO experience as being a plus in IP litigation

Typically its USPTO > part time law student part time patent agent > patent atttorney.

I'm not sure how kindly firms would look at doing USPTO after law school.

Actually doing patent prosecution is better experience than examining. Take the pros job. This is a no brainer.

I completely agree with this

[kcdc1]

First, your goal of lateraling into biglaw patent prosecution seems strange to me. People are trying to get out of biglaw at that point in their careers. I suppose if you just really love money and you don't have the resume to get biglaw right now, then maybe it makes sense. Even in that scenario, however, I think it makes more sense to shoot for a midlaw firm where you'll have a realistic shot to make partner.

Second, both patent examining and small firm prosecution work seem like bad ways to break into biglaw. Over the course of a 20+ year career, I think 2 years at the PTO would add to your skills more than 2 more years at a law firm. But if your goal is to have the best possible resume and skillset 2 years from now, it's probably better to be at a law firm. At least then you'll know the ropes.

[Anonymous User]

IME - USPTO after LS was more common in the last 5 years or so when the market was slower, deferred offers, etc.

If you did a 2L SA and did it now, it would be a very odd signal to me. That said, not everyone lands something out of school, and it can be a decent pros reset (but it will be an up hill battle). Its not quite the same as grabbing a Fed. Clerkship.

[Anonymous User]

Your chances of "a desired firm" fall off a cliff if you don't get that job right out of LS, if not right out of 2L summer.

My firm would view someone who opted for the PTO after LS as damaged goods or someone who didn't want the law firm life. I don't mean to be harsh, these are just the facts. Other small firms that are very prosecution-based like Oliff may be different.

[Desert Fox]

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