Best technical background for patent law Forum

[inkavid]

Hey guys,

I'm considering getting a technical degree to practice patent law. I'm already an attorney. I was wondering if you have insight into what the most coveted backgrounds are at IP firms these days, and if there are differences in the work based on your expertise (aside from the types of patents I'd be working on).

Also, for those currently practicing IP, what are some things you like about it, and is there anything you would do differently if you could go back?

Thanks!

[dvlthndr]

You need to distinguish between patent prosecution and other types of patent-related work.

If you are trying to be a patent litigator or do tech transactions, you don't really need a special degree. Firms like to hire people with an engineering background, but it's not a strict requirement.

If you are trying to do patent prosecution, you need a degree that qualifies you to take the patent bar. This usually requires a a full 4-year engineering degree or the equivalent. You can find exact requirements here: https://www.uspto.gov/sites/default/fil ... ED_GRB.pdf

If you really want to get a degree, you should aim for electrical engineering or computer science. These are the most "in demand" fields. There is less demand for people with a B.S. in mechanical, biomedical, chemical, etc. -- and don't plan on doing anything related to pharma or life sciences without a Ph.D.

[middlemarch]

EE

[inkavid]

Thanks for the response. Yes, patent prosecution is what I'm interested in. I've seen others mention the EE and CS route -- what's the basis for this?

[eepatentatty]

Thanks for the response. Yes, patent prosecution is what I'm interested in. I've seen others mention the EE and CS route -- what's the basis for this?

It's the field with the largest amount of work and the fewest qualified attorneys. I would recommend EE with a significant amount of software related coursework (not necessarily straight CS).

[patent_guy]

Thanks for the response. Yes, patent prosecution is what I'm interested in. I've seen others mention the EE and CS route -- what's the basis for this?

EE/CS is correct.

What’s the basis for this? Its what a lot of the work is based on right now. Semiconductors, wireless stuff, streaming, etc. Think about the new technology that has come about the last few years - “smart” anything, most of it has a basis in ee/cs or at least involves ee/cs in some capacity.

[patent_guy]

I would also add that patent pros is a completely different type of law than anything you’re probably familiar with. Day to day is completely different than what my non patent pros friends from law school do and I would suggest discussing it with someone who does it before you go too far down this road. The work can be pretty tedious and monotonous at times and there is a huge emphasis on efficiency at it because most of the work is fixed fee. Some people thrive doing it and some people are miserable doing it.

[inkavid]

Thanks guys. CS EE seems intuitive and I believe it, just wondering if we had any numbers or specific research.

Thanks for the insights about fee-based/efficiency, and likability. Basically I've come upon the opportunity to take some classes in science and math and have really enjoyed it. So I'm interested in continuing my studies for the sake of enjoyment and personal development. But it would be great if I could leverage that knowledge with my legal background.