A day in the life of an IP lawyer Forum

[jeff2486]

Hey,

I don't have the real answer to the question, but I would guess and hope that experience could compensate for the degree. Hopefully Ken has the answer though.

[Ken]

Hi msconstrued,

Unfortunately, your name may be appropriate for this post. For the requirements to take the patent bar are very regimented and they do not give an allowance for your obviously strong background in software and having a few patents. In a sense, your actual knowledge of the patent process will not be enough and they would "msconstrue" your background and intentions (I know this is not the ideal use of misconstrued but I had to work it in somehow).

To become a member of the patent bar requires a lot of technical education from your college classes that results from having a scientific major. The following link discusses this a bit:

http://www.patentbarstudy.com/exam/qualifications.html

I researched this a bit and even though I was mathematic/economics and had a lot of science and math classes, I still needed to take several additional classes to qualify. As just a pure econ person, you would have to take even more classes and it would not be worth your time.

Note that you cannot do patent prosecution. HOWEVER, you can do patent litigation (which I did at a large Silicon Valley law firm) without needing a technical degree or needing to be a member of the patent bar. There a law firm would value your background and having a few patents yourself and would gladly want you to do patent litigation. I actually feel this is more exciting than patent prosecution, which is very routine and in the end boring (so I hear from my patent attorney friends).

I think your background will make you very attractive to IP law firms with a focus on patent litigation so do not lose hope just because you cannot take the patent bar.

Hopefully this was helpful. Best,

Ken

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[msconstrued]

Thanks, Ken. I really appreciate the insight (and humor). My original major was mathematics too, and I switched it to a minor after a nasty stint with topology (never did really "get" that). We're so much alike! Only totally different! 'Preciate the info, my friend.

ETA - I just counted up my science classes, and I'm 11 credits shy, which should equate to 3 courses. I might decide to go ahead and knock those out, just to have the option of going for patent prosecution. I know the actual work is a little dry, but the inventive process is still exciting.

[Ken]

Msconstrued,

I certainly considered taking a few extra science classes but I think I was 4 or 5 classes short and it seemed like too much effort and I was also more drawn to trademark law. However, given your interest and likely expertise in patent law it does make sense to take the 3 classes and then pass the patent bar. Note that you can take and pass the patent bar before going to law school. There is a very informative post by dtrossen on this forum with his giving advice on how to successfully do this (Dtrossen is now a first year at NYU). He rightfully thinks that this will give him a big edge when applying for jobs his first summer. Something to think about if you have the time. If you cannot find the post with the search function I will send it to you.

Hearing that you only had 3 classes does make it worth it. I thought you were just economics without a math background, which would be way too many classes to complete but 3 is quite managable.

Best of luck,

Ken

[MLBrandow]

Ken,

As I am looking through course descriptiong of Boalt, NYU, etc, I've yet to find a course that says something other than "no technical background required."

Where can I find classes that do require a technical background? Is that saved for OJT? Do these classes even exist?


Also, while I am hoping to attend school in either California or NY, I would prefer to practice in New York.

How might attending Boalt positively or negatively impact my aspirations to practice in New York? I know that the NY and CA bars are different, but is the Patent Bar the same across the US? I'm not sure how to better articulate my question, but hopefully you can provide some insight.

Of course I would prefer to attend the best institution for patent law, but at the same time not necessarily at the expense of where I would like to practice. What is the balance here, or am I making a deal out of something that is negligible?

[Ken]

Hi,

No classes will have any prerequisites. However, this does not apply to the real world and to be eligible to take the patent bar you will have to show that you have a technical background. Thus, there is a de facto self-selection where students taking advanced Patent Law classes generally have a technical background as they anticipate practicing patent law, which requires a technical degree.

The patent bar is a nationwide exam and it does not matter where you attend law school. Note that while a technical background is required to take the exam, the exam tests procedures of the patent office, not scientific knowledge.

If you are focused on IP, I would personally choose Boalt over NYU. Both are excellent schools and NYU is stronger than most in IP, but Boalt is the clear front runner in IP. The only debate worth having is Stanford vs. Boalt, but Boalt vs. any other school if you are focused on IP is won by Boalt.

Most Boalt students stay in CA, but this is by choice and not by a lack of choices. Those few Boalt students who wanted to be on the East Coast in New York, DC, or Boston were courted by many law firms. Supply (small)and demand for Boalties (high nationwide) works in your favor.

In sum, Boalt presents the better choice than NYU if your focus is solely on academics. However, it is best to visit both law schools for they each offer a high quality of life (unlike Columbia which has a more competitive atmosphere) but with a very different atmosphere.

Best,

Ken

[ent]

Ken (and all),

Any thoughts on University of Virginia's IP program? It's my first choice school but I'm getting a little nervous about it reading all these great things about Boalt! My goal at this point is to practice in Copyright or Trademark law. Please let me know if you have any opinions on Virginia as an IP school. Thanks!

[Ken]

Dear Ent,

I completely understand your desire to be at UVA. If I were not a CA resident they could have easily been one of my top choices. The beautiful campus, relaxed atmosphere, and a very high quality of life make UVA Law School one of the most attractive in the country to me. If you are interested in UVA Law School I would still consider them your top choice.

They are not known to be particularly strong in IP for I have never seen them mentioned in any ranking of the top 10 IP law schools. However, they are located close to Arlington, VA, home to the US Patent and Trademark Office so they surely have access to excellent IP attorneys who are likely adjunct professors. In sum, due to proximity I do anticipate that their program is above average, although not top tier like Boalt or Stanford.

I would still consider UVA to be your top choice, but apply to Boalt if you have not yet already and if you get in to both then please post here and we can reconsider later. I would base a lot of it upon your feelings while visiting the campus. I still love UVA so much that if it is your first choice, I think it still should remain so. Note that I picture going to Boalt more important for Patent attorneys than other IP branches, for Patent is so technical that you really want a thorough education (Boalt has many, many classes on patent law) but Trademark and Copyright law are not as technical and more of your learning will be on the job.

Congrates on considering two great schools. Great not only in the educational opportunities and prestige they offer, but great in their quality of life as well.

Cheers,

Ken

[ent]

Ken,

Thank you so much for your thoughful and thourough response. I really respect your opinion and your advice means a lot to me. I've applied to Boalt as well, so we'll see where this all takes me! It's good to know, however, that I would not be doing myself a disservice by going to UVA. Thanks!

[GodSpeed]

I see the "Do I need an MS or PHd" question asked way too frequently.

No, most certainly not. That is what your expert witnesses and engineers/developers are for. You need to keep up with them when they are answering your questions; you don't need to develop the product or derive the formula.

I have work in the in a industries which are considered to be at the forefront of R&D ranging from motorsports to military aerospace defense. I've designed parts and worked with brilliant people; many of them have several patents. Understanding what is going on is not difficult if you have an engineering undergrad; assuming it was a decent university and you were quasi-conscious. Then again, I tend to take more from my classes than most.

Some of my PE professors who were expert witnesses say it helps to have an MS in some of the extremely complicated and scientific areas just to speed everything along, but the lack of an MS is a speed bump at best, not a wall.

Take that for what it's worth. I'm not a law school student yet, for the record.

[GodSpeed]

Two things

First: sorry for the typos in the previous post.

Second:
Ken,
IP is certainly big in California, but it seems to be centered around telecom, software, hardware etc. Basically, it seems to be perfect for the CE, CS or EE major, but what does it have to offer for the Mechanical Engineer?

I enjoyed motorsports and I also enjoy aerospace & defense. This is one of the reasons I'm looking at staying in the New England area. There is a ton of aerospace here (Pratt & Whitney). However, after my short stay in California, I'm dying to get back!

[VictoriaMarie]

Hi Ken,

I've got an interview for a summer position at an IP boutique coming up. I do not have a science background, but this firm has large trademark and advertising litigation specialties. I can only assume that they're considering me for one of these specialties. Can you give me any insight on these areas of IP practice or tell me of good resources for information?

Thanks Ken!

[Mary G]

Hi Ken,

Thanks for all of your comments. This is a great thread.

I am a scientist with an advanced degree with the majority of my work being business related rather than bench science. I have been seriously considering taking the patent bar to become a patent agent. I would be interested in prosecuting patents (I'm one of the weirdos who like the boring stuff), not in patent litigation. I do a lot of scientific writing and had a prior career as a technical writer and think I would both do well at this and enjoy it.

My big concern is the ability to obtain work as a patent agent rather than a patent attorney. Is there a large advantage to having the law degree?
I have been looking around for information on this and am at a loss. Even a friend on faculty at a good law school can't seem to answer this one.

Any feedback, links, comments, or suggestions from anyone would be most welcome.

Thanks, and happy new year to all!

[patten]

Ken-

I'm trying to get your opinion as to my chances of being accepted to George Washington Law School. My stats are 3.66/162 and my major is Civil Engineering.

Also, is a Civil Engineering degree compatible with IP law?

Lastly, where do you rank George Washington law school among IP programs?

Thanks.

[ks2pa]

Ken (or anyone really)
Again great thread. After doing research into IP law i have found Trademark/Copyright to be very intriguing. I realize the job prospects are plentiful for Patent attorneys, what is the job outlook for Trademark/Copyright lawyers?

[StrucutredFinance]

Hi Ken,

Is Patent Bar something one can take up without having a JD or LLM, also I am a prospective Law Student with an UG in Engineering and also have a Masters in Financial Engineering. Would it helpful to get an admit if my admission essay tries to paint the picture of me getting into patent law.

Thanks

[hasmith]

Does anyone know how valuable having your P.E. license is? I have the EIT banged out and have the experience. I was going to take it this April, but can not. I am wondering whether it would be more beneficial to focus on that right now, or focus on passing the Patent Bar. Any thoughts? I will be going to GW law, I did my Bachelors in Aeronautical Engineering and my Masters in Mechanical Engineering. I would be doing my PE in Mechanical Engineering with a focus on HVAC.

[xyz123]

Hi Ken,

Thanks for your insight on IP law. Are any NYC schools considered particularly good in IP? Specifically Fordham, Brooklyn, St. John's, NYLS or Hofstra. Thanks.

[Catherine]

Ken, it may be months before you see this reply, but thank you very much for the insight provided in this thread.

As a bachelor of biology considering a career move into law, this is immensely helpful in considering my options.

Now to go do some research on bio/pharma IP law and the patent bar

[danpass]

Ken,

Great info and great site you have here. Thank you for having taken (and continuing to take) the time to develop such an awesome forum.


I have read briefly thru this thread and will continue this evening so there may be some dupeage in my questions/comments lol.


I have a BS in Mechanical Engineering and am in the process of practicing for the LSAT (June 07).

The specific goal is patent attorney. Big bucks/low hours, litigation, creativity

I will be applying to law school for the 2008 academic year. My current targets are Univ of Miami (I currently live in Miami) and Univ of Virginia. I grew up in New Rochelle, NY and wouldn't mind heading back up toward that way for school.

What is your opinion on these two schools? What I have read previously seems to indicate that there is no "major" per se when attending law school other than a simple "JD". What other schools stand out in your mind on the East coast?


As far as the Patent Bar goes, the USPTO site is absurdly difficult to use when it comes to setting up to take the Patent Bar. Any tips for getting info on it? I haven't been able to even find a test date or location LOL. How about preparation for the PBar?


On a self-serving note (perhaps further self serving ) are job prospects pretty much guaranteed for a JD with a BS in MechE and practical experience (automotive engineer for several years)?



Thank you for your time.



Best regards,
Dan

[justastudentoflaw]

hey ken

can you give a summary of what your typical day is like?

[jenjph]

Hi Ken,

I'm six years out of law school and have been working in the field of tort litigation defense in New York City my entire career. I'm stuck in a bit of a salary rut, and lust after the big firm jobs with their fabulous salaries and benefits. I would also like to move to a more intellectual, less noisy, branch of law.

I went to a very good state university and second tier law school, and although I was a law review editor, I was not in the top ten percent of my class.

I just realized that since I started out as a bio/genetics major in college, I would only need to take two additional physics classes to qualify to sit for the patent bar exam. My question is: in your experience, does admission to the patent bar overshadow a sub-par academic career and help attorneys land better jobs? Or should I save myself the time and effort?

Thanks!

[lioness]

I'm not Ken, but I'll try to answer a few questions...

You don't need a JD to take the patent bar. You just need an engineering degree or enough credits as specified on the uspto.gov web site. Once you take (and pass) the patent bar, you are a patent agent. You can draft and prosecute patents, but you cannot perform trademark and copyright work.

I work as a patent agent. Typically, I spend my days either drafting patents, or prosecuting patents in the form of office actions.

Drafting a patent:
I receive a 1 to 3 page disclosure from the company for which the inventor(s) work.

I schedule an inventor disclosure conference. Usually the inventor disclosure conference is done by phone unless the inventor is close enough to meet in person. That meeting takes 1 to 1.5 hours, and I usually (audio) tape the meeting. This is a very interesting phase of the patent process. It’s fascinating to see what new and exciting technology is on the horizon.

I draft claims, then draft the patent, and draw figures and flowcharts (typically 30 to 40-something pages). I email the patent draft to the inventors, asking for them to review it and provide comments. Once I receive their comments, I incorporate any necessary changes into the draft, and email the final patent draft back to the inventor with signature documents. Signature documents are documents the inventors sign stating that they are the inventors of the invention and that they are assigning their rights to the invention to the company for which they work.

The inventors fax the signature documents back to me. A patent secretary files the patent.

Prosecuting a patent:
After a patent has been filed, the USPTO provides a response within 18 months to 3 years in the form of an office action. The office action is a response from a patent examiner. The patent examiner may reject 1 or more of the claims based on a variety of reasons, and may also provides examples of other patents (filed prior to this patent) that appear to be patenting the same invention.

I read the office action, the patent (that is the subject of the office action, i.e., ‘my’ patent), and any other prior art (i.e., any patents that appear to patent the same invention as the patent that is the subject of the office action). I develop arguments as to why ‘my’ patent is different from the prior art and why ‘my’ patent is novel and inventive. I may also include some new claims based on what is already contained within ‘my’ patent. In most cases ‘my’ patent is a patent that was drafted years ago by someone else. However, I have had the opportunity to prosecute a patent that I actually drafted.

Once I draft a response to the examiner’s office action, a patent secretary files that response, and I wait for the examiner’s response. The examiner may agree with me and allow one or more claims of the patent or the examiner may reject my response. In that case, in response to that examiner’s rejection, I draft additional arguments. The cycle continues until we get claims allowed on the patent.

As Ken mentioned, it can be tedious and detailed, but it can also be very interested, especially for people who enjoy technology.

[ebarnett]

Hi there. I am an IP/IT lawyer and am looking for work in NYC. Either private practice or in-house (I have experience with both). I also speak fluent French if that helps. If anyone has any leads, can you e-mail me at internationalatty@hotmail.com? Thanks so much. Desperately seeking work in a bad economy! Eva