IP/Patent Law - Engineering degree required? Forum

[zeth006]

Hey all,

Just had a question. Let's say I decided to specialize in IP law at my school. At any time during my path to becoming a patent lawyer, would the absence of an engineering/science degree of any sort become an obstacle?

[Adjudicator]

From what I understand, you cannot practice before the US Patent Office without an engineering/science degree. It is a requirement to sit for the Patent Bar. However, this is not necessary for other areas of IP practice including trademarks and copyright.

[underdawg]

it's not necessary for patent litigation either tho probably helpful.

[rayiner]

it's not necessary for patent litigation either tho probably helpful.

At one of my CBs (focusing on patent litigation), a partner at a V50 firm mentioned that clients are increasingly demanding technical backgrounds for patent litigation.

[underdawg]

it's not necessary for patent litigation either tho probably helpful.

At one of my CBs (focusing on patent litigation), a partner at a V50 firm mentioned that clients are increasingly demanding technical backgrounds for patent litigation.

that's cool. at one of mine, a partner told me his best patent associate did not have a tech background and clients are stupid in this matter. you think they're going to tell me that i can't do patent or tell you that your tech background does not greatly help you? guess i'll find out for sure on the other side...it definitely happens with associates at my SA firm.

[awesomepossum]

Usually you won't be hired directly into a patent litigation group without a technical background. However, some firms have their patent lit groups as part of a larger litigation group. In those situations, you can always get assignments and work your way into specializing in patent lit.

In patent lit, I think there are some tasks that are just very generic to litigation that anybody could do. There are however some tasks that would be much more difficult and time-consuming without a technical background. Effectively going through prior art and generating technically meaningful claim charts would probably be much more difficult and time-consuming for a non-technical person. One reason why that matters is that your time gets billed. If you're taking four times as long to read through and understand a technical paper, somebody is paying for that time.

[dood]

...

[rayiner]

it's not necessary for patent litigation either tho probably helpful.

At one of my CBs (focusing on patent litigation), a partner at a V50 firm mentioned that clients are increasingly demanding technical backgrounds for patent litigation.

that's cool. at one of mine, a partner told me his best patent associate did not have a tech background and clients are stupid in this matter. you think they're going to tell me that i can't do patent or tell you that your tech background does not greatly help you? guess i'll find out for sure on the other side...it definitely happens with associates at my SA firm.

I'm not saying a lack of a tech background will be a bar. I'm saying it will be a hurdle (which is what OP asked). Employers look for people who can handle the subject matter. If you have a tech background, they presume you can. If you don't, then you have to convince them, and that is a hurdle you have to overcome.

Depending on the specific employer, this can be a tough hurdle to overcome. I had a screening interview at one GP firm that also does patent prosecution. I spent like 2-3 minutes explaining that I've spent years working as a software engineer on wireless/telecom devices and I would like to do the CS/EE side of things. At the end he's like: "so, it seems like mechanical devices would be a good fit for you given your background." All he could see was my UG major.

Also, at a lot of firms, saying you're interested in "soft IP" can be the kiss of death. At one callback I had, I told a partner that I was strongly interested in patent lit, but I'd like to try a few copyright projects. He told me: "I didn't take it that way, but be careful how you phrase that in the rest of your interviews. There is almost no soft-IP work here and if the other partners get the idea that's what you're interested in that could be a problem." Out of ~40 firms I've interviewed with, 90% of which did a good amount of IP work, maybe only 2-3 did any substantial amount of soft-IP work. That fact is rarely obvious from publicly available materials, since firms will list people as having copyright/trademark experience even though they do very little of it in practice.

In the OP's shoes, I'd take possum's advice. Focus on firms that have IP litigation in their general lit department, and express your interest mainly in litigation. Then try to work your way into the IP work. And even if you're interested in soft-IP, don't mention it in your interview unless its with a firm (there are only a handful) known for their soft-IP work.

[thegor1987]

What is interesting is the patent bar is a law exam, not a science exam. Probably because such a wide variety of scientific backgrounds are accepted it would be though, although almost all disciplines require at least a basic level of math, physics, and chemistry. Biology might be the exception. So many law students could actually pass the exam without any knowledge of science.

BUT, lawyers have to file patents for clients, this means writing them. And without the specific background in the field I cannot see how a good job could be done. For example, the synthesis of a new pharmaceutical drug would require a background in organic chemistry. See, a scientist could help a lawyer explain the details, but he needs to know science to understand what is being told to him. Otherwise he might represent the law firm he works for as one that employs retards. There are many exciting medical breakthroughs but I don't think the legal community would be doing a service to public health or for the advancement of technology in general for that matter, we just need to know science. And that actually is why the science background is required.

[Duralex]

There is also the little known Category C route, which involves passing the Fundamentals of Engineering exam. WTF that is.

CATEGORY C.
Practical Engineering or Scientific Experience: An individual relying on practical engineering or
scientific experience or who does not qualify under Category A or B above may establish the required
technical training by taking and passing the Fundamentals of Engineering (FE) test. The FE test is a test of
engineering fundamentals. The FE test is developed and administered by a State Board of Engineering
Examiners in each State or comparable jurisdiction. Neither the USPTO nor any other U.S. Government
agency administers the test. Individuals who desire to take the FE test should direct inquiries to the
Secretaries of the appropriate State Boards.

[czelede]

There is also the little known Category C route, which involves passing the Fundamentals of Engineering exam. WTF that is.

CATEGORY C.
Practical Engineering or Scientific Experience: An individual relying on practical engineering or
scientific experience or who does not qualify under Category A or B above may establish the required
technical training by taking and passing the Fundamentals of Engineering (FE) test. The FE test is a test of
engineering fundamentals. The FE test is developed and administered by a State Board of Engineering
Examiners in each State or comparable jurisdiction. Neither the USPTO nor any other U.S. Government
agency administers the test. Individuals who desire to take the FE test should direct inquiries to the
Secretaries of the appropriate State Boards.

8 hour test with a lunch break in the middle. Generally taken by Civil, Mechanical, and Industrial engineers I think. Sometimes Electrical and Chemical. Rarely Aerospace or Nuclear.

Overall not a fun test. And, from what I gather, not an easy one to study for if you don't have the proper engineering coursework/knowledge, since it is fairly broad and fairly advanced.

[Duralex]

8 hour test with a lunch break in the middle. Generally taken by Civil, Mechanical, and Industrial engineers I think. Sometimes Electrical and Chemical. Rarely Aerospace or Nuclear.

Overall not a fun test. And, from what I gather, not an easy one to study for if you don't have the proper engineering coursework/knowledge, since it is fairly broad and fairly advanced.

--ImageRemoved--


But, yeah, in all seriousness it must be ridiculous if it's an alternative to obtaining a four year degree. But perhaps more feasible to expressly prepare for that test than to go back to school for another bachelor's degree for a person who missed the boat and really wants in? I mentioned it just because people don't seem to know that route exists at all.

[rayiner]

8 hour test with a lunch break in the middle. Generally taken by Civil, Mechanical, and Industrial engineers I think. Sometimes Electrical and Chemical. Rarely Aerospace or Nuclear.

Overall not a fun test. And, from what I gather, not an easy one to study for if you don't have the proper engineering coursework/knowledge, since it is fairly broad and fairly advanced.

--ImageRemoved--


But, yeah, in all seriousness it must be ridiculous if it's an alternative to obtaining a four year degree.

It usually isn't. It's usually taken by those who have the degree en route to being licensed as a professional engineer. In many states you can't take the FE exam without an engineering degree or equivalent work experience.

[Duralex]

In many states you can't take the FE exam without an engineering degree or equivalent work experience.

Ahh. There's the catch.

[paratactical]

.

[underdawg]

What is interesting is the patent bar is a law exam, not a science exam. Probably because such a wide variety of scientific backgrounds are accepted it would be though, although almost all disciplines require at least a basic level of math, physics, and chemistry. Biology might be the exception. So many law students could actually pass the exam without any knowledge of science.

BUT, lawyers have to file patents for clients, this means writing them. And without the specific background in the field I cannot see how a good job could be done. For example, the synthesis of a new pharmaceutical drug would require a background in organic chemistry. See, a scientist could help a lawyer explain the details, but he needs to know science to understand what is being told to him. Otherwise he might represent the law firm he works for as one that employs retards. There are many exciting medical breakthroughs but I don't think the legal community would be doing a service to public health or for the advancement of technology in general for that matter, we just need to know science. And that actually is why the science background is required.

filing patents for clients = patent prosecution. no one disputes that point

[jarofsoup]

I actually researched this here is a good link: http://www.americanbar.org/groups/intel ... y_law.html

Scroll down to Advice From Those Who Were Just in Your Shoes:
Guidance from ABA-IPL Young Lawyers

read pdf.

Answer is in some fields you need a sci degree some you dont. It is a real big field. Well IP law that is.

[underdawg]

I actually researched this here is a good link: http://www.americanbar.org/groups/intel ... y_law.html

Scroll down to Advice From Those Who Were Just in Your Shoes:
Guidance from ABA-IPL Young Lawyers

read pdf.

Answer is in some fields you need a sci degree some you dont. It is a real big field. Well IP law that is.

that "paper" is retarded. jesus christ everyone knows you don't need a tech background for soft ip and that you do need one for patent prosecution. EVERYONE

[zeth006]

Thanks for the responses. I'll be reading them later tonight when I get the chance.

[yellowjacket2012]

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[yellowjacket2012]

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[thegor1987]

What is interesting is the patent bar is a law exam, not a science exam. Probably because such a wide variety of scientific backgrounds are accepted it would be though, although almost all disciplines require at least a basic level of math, physics, and chemistry. Biology might be the exception. So many law students could actually pass the exam without any knowledge of science.

BUT, lawyers have to file patents for clients, this means writing them. And without the specific background in the field I cannot see how a good job could be done. For example, the synthesis of a new pharmaceutical drug would require a background in organic chemistry. See, a scientist could help a lawyer explain the details, but he needs to know science to understand what is being told to him. Otherwise he might represent the law firm he works for as one that employs retards. There are many exciting medical breakthroughs but I don't think the legal community would be doing a service to public health or for the advancement of technology in general for that matter, we just need to know science. And that actually is why the science background is required.

filing patents for clients = patent prosecution. no one disputes that point

interesting that the word 'prosecution' is used for requesting a patent, did not know that

[Zugzwang]

What is interesting is the patent bar is a law exam, not a science exam. Probably because such a wide variety of scientific backgrounds are accepted it would be though, although almost all disciplines require at least a basic level of math, physics, and chemistry. Biology might be the exception. So many law students could actually pass the exam without any knowledge of science.

lmao at calling the patent bar a law exam

[OrdinarilySkilled]

What is interesting is the patent bar is a law exam, not a science exam. Probably because such a wide variety of scientific backgrounds are accepted it would be though, although almost all disciplines require at least a basic level of math, physics, and chemistry. Biology might be the exception. So many law students could actually pass the exam without any knowledge of science.

lmao at calling the patent bar a law exam

More like a wordsearch exam.

[thegor1987]

What is interesting is the patent bar is a law exam, not a science exam. Probably because such a wide variety of scientific backgrounds are accepted it would be though, although almost all disciplines require at least a basic level of math, physics, and chemistry. Biology might be the exception. So many law students could actually pass the exam without any knowledge of science.

lmao at calling the patent bar a law exam

More like a wordsearch exam.

my apologies for not differentiating the two exams. I forgot law students like to make sure everyone knows their exams are hard. Especially law students who were once scientists who had to make sure everyone knew how hard their engineering classes were.