Technical Specialist Postions at Law Firms Forum

[collegebum1989]

I recently finished my masters in engineering from a T-10 engineering school and looking to go to law school in the future to pursue a career in patent law. My field is biomedical engineering and my BS/MS are both in this field. I have decided that I wanted to go to law school part-time in DC area (GULC, GW, or American) and work at a firm as a tech specialist/patent agent while I pursue my JD.

I had a few questions for people on this board who may have done the same path or have known people who are interested in it:

1) Is it necessary to have a PhD to be competitive for a technical specialist position or is a masters in engineering plus 4-5 years research, publications and fellowships sufficient to be competitive?

2) I know prosecution firms will look through transcripts to see undergraduate performance. My undergrad GPA was OK (3.21) but my graduate GPA was amazing (3.98), will this make me
Competitive for a big-law or botique IP prosecution firm?

3) Does one need to have already passed the patent bar and/or be accepted to a part-time JD program to be considered for a patent agent/technical specialist position at a law firm?


Thanks so much for the help.

[mrsmartypants]

Preliminarily, note that relatively few prosecution firms have formal tech advisor/patent engineer to JD programs in which engineers/agents are hired with a formal expectation that they will attend law school part time in conjunction with employment. Wolf Greenfield does, and I used to know of some others, but I can't recall them anymore. You should research firms that do have such programs for any particular requirements they might have.

Far more common, in my experience, are firms that do some sort of case-by-case arrangement for candidates who have been working for a year or two as advisors/specialists/agents and show promise. My firm falls into this camp. (It looks like even Wolf Greenfield wants you to work for a year before going to school, according to their website.)

1) Outside of life sciences, pharma, and chemistry--that is, for electrical/computer/mechanical technologies--a Ph.D. is usually not required for prosecution. A master's plus experience makes for a pretty competitive candidate. Regarding biomedical, the more EE/CS in your background, the better.

2) A 3.2 is on the low side of what I like to see in candidates, though it depends on the school. I and my colleagues tend to significantly discount grad school grades because in our collective experience, most graduate classes aren't curved and the majority of the class gets As. (Whether true or not for a particular institution, this is how at least some folks look at it.)

3) Can't speak to those firms that have formal programs. I can say generally that no, it's not necessary to pass the patent bar to be considered for a tech specialist-type role, because if it were, you'd be a patent agent and not a tech specialist. (That is, the "tech <whatever>" title exists only to distinguish those non-attorneys who have not yet passed the patent bar from those who have.)

I would strongly recommend that someone who's considering this path find a tech advisor position and work in it for a year or two before going to law school to ascertain whether it's really a good career fit. Patent prosecution is one of those few areas of law (perhaps the only?) where it's possible to do substantive work as a non-attorney that gives you a decent idea of what that area of practice is like.

[collegebum1989]

Thanks for the valuable feedback mrsmartypants. I've read some of your other posts on this forum and they were very helpful.

I have some post-grad international research fellowship experience (with prestigious medical school) and my experience here was with medical device design. I would say my experience is catered to mechanical and opto-electronic devices in the bio-medical field. How would the fellowship be valued during tech specialist recruitment process?

Also, I've applied to a couple of D.C. firms for Technical Specialist positions. I've also applied to the USPTO for patent examiner positions. Would you recommend any other types of positions based on my background?

[mrsmartypants]

Happy to help.

Regarding experience generally, any practical engineering experience is a plus. Many prosecution firms are reluctant to hire new grads without technical experience unless they have stellar credentials.

Regarding your particular experience, I would think it would make you particularly desirable to firms with medical device clients. You might consider researching recently issued patents (left as an exercise to the reader; hint: look at class 607) to see what firms have such clients. Your prospects would be enhanced to the extent you could market yourself as technically able to deal with a broad range of hardware/software technologies--i.e., not limited to your particular subfield of study or experience. The most successful prosecutors I work with are avid generalists, able to use their accumulated knowledge to come up to speed quickly on new technology.

Almost all entry-level patent positions for non-attorneys that I can think of are either at firms or, to a lesser extent, at the PTO. (The PTO went on a hiring binge a few years ago but I have the impression hiring has slowed quite a bit since then.) Occasionally, technology companies will create a path for an engineer to transition over into the IP department to serve in an in-house counsel sort of role, but I doubt many companies would hire an outside candidate for this position who didn't already have patent experience.

One fringe benefit at the PTO is that they're pretty good about allowing examiners to attend law school part time on the agency's dime. Or at least they used to be--I don't know whether sequestration has forced changes to those programs.

[MormonChristian]

1) Outside of life sciences, pharma, and chemistry--that is, for electrical/computer/mechanical technologies--a Ph.D. is usually not required for prosecution.

Doesn't Biotech want a PhD for prosecution?

[mrsmartypants]

Define "biotech."

To the extent the discipline in question deals more with chemistry, biochemistry, biology, genetics, pharmacology, or the like, then yes.

On the other hand, most "biomedical engineering" programs I'm familiar with are interdisciplinary within a school of engineering (I think if they're ABET accredited, they have to be) and heavy on EE, CS, and mechanical engineering. I would consider such a background to be more engineering than life sciences.

[siddhishah]

Can anyone tell me which law firms offer tech specialist positions in DC area? I have BS in computer engineering and ms in computer science. Really looking for tech special or agent positions in the firms. I am part time student at GWU.