Patent law with chem B.S and WE Forum

[senorhosh]

With a chemistry degree, and WITHOUT advanced degrees like PhD or MS, how much WE would be enough to replace those qualifications for IP?
And how much WE would be enough to get me in the door?

I'm taking a year off to work but might take 2 years. Would taking an extra year off for 2 years WE be anywhere near helpful for breaking into IP (prosecution and litigation)?

[Dr. Review]

With a chemistry degree, and WITHOUT advanced degrees like PhD or MS, how much WE would be enough to replace those qualifications for IP?
And how much WE would be enough to get me in the door?

I'm taking a year off to work but might take 2 years. Would taking an extra year off for 2 years WE be anywhere near helpful for breaking into IP (prosecution and litigation)?

As for getting into prosecution, a bachelor's makes you pat-bar eligible, which is the biggest thing. As far as landing a job, I think it depends on the WE a little bit. Don't expect to go into biotech without an advanced degree. If you can sell it more towards materials/coatings/compositions I think you're probably fine, and a job that shows you're more comfortable with that type of chemistry makes it an easier sell, same probably goes for any research you might have done in undergrad. Two years WE should be enough to demonstrate expertise/experience, one year is less certain, but on a case by case basis, could be enough.

There's a decent market for chemists, in part because almost any tech background can prosecute a mechanical patent, although I've heard that the focus is going away from chem. I know for a FACT that there is a big push for EE/CS (primarily EE), and so you'll be competing against those folks, and they'll have a leg up on you, so you'll want to give a firm a reason to take you instead. Pick your market wisely (preferably one to which you have ties and which also has business that lends itself to chemical prep/pros work), go to a good law school, and get good grades, and the WE starts to be more of a soft/tiebreaker.

hth

edit: and if you're in the DC area, trying to get on as an examiner at the PTO puts you in a good spot for finding prep/pros work, although it can pigeonhole you a bit and preclude you from more lit related work.

[SirCadogan]

Would it be accurate to say that a Bio BA without significant WE/undergrad research/advanced degrees would prevent patent prosecution (I think I saw somewhere else on TLS that copyright/trademark/patent litigation doesn't require so much hard science background) from being a future option? I anticipate that there are many, many life sciences majors with more than a bachelor's competing for those spots..

Thanks!

[Dr. Review]

I think that bio without an advanced degree is a tough sell, especially without much WE. As far as prep/pros goes, the majority of cases are going to be complex and really more appropriate for those MS, PhDs to develop. It's true that litigation doesn't require as much hard science knowledge, but patent litigation can still involve a fair amount of learning a technology. The more useful your tech background is, the easier it is to sell it in an interview.

Copyright litigation is basically not something you should anticipate doing. There's very little of it. Trademark litigation maybe a little moreso, but still not a huge market. It's difficult to get into IP these days without a more complete package. Essentially, why would a hiring committee take one guy for soft IP and another for hard IP when they could hire one that does both?

[SirCadogan]

Interesting, thanks for the information. I've definitely become mildly interested in IP, but guess for me it's out of the question unless I end up pursuing an MS/PhD. Still many (many) years to go until I become a 1L though

[r6_philly]

Many patent litigators at the top firms only have a BS in Chem or ChemE. I think for prep/pros it probably helps to have a PhD, but for litigation probably not. I think as long as you can understand the technology, you can learn what you need to learn for each case. There are plenty of patent litigators staffed on cases not in their technical field. You just have to be able to and willing to learn.

[collegebum1989]

Do firms make a distinction between MEng and an MS, the first one being an engineering non-thesis, coursework-based degree with 8-9 courses and the second being a research-focused degree with 3-4 graduate courses?

Also, how do research publications and experience factor into job prospects for either prosecution or litigation?

[Dr. Review]

Do firms make a distinction between MEng and an MS, the first one being an engineering non-thesis, coursework-based degree with 8-9 courses and the second being a research-focused degree with 3-4 graduate courses?

Also, how do research publications and experience factor into job prospects for either prosecution or litigation?

I should preface this response by saying that my knowledge is fuller in respect to boutiques than it is to GP firms and that since my background is chem, I don't often discuss the nuances of engineering degrees (outside of EE, because the EE hiring bubble fascinates me to a certain extent).

I'm not an expert on more heavy engineering hiring, but I think that when it comes to these type of degrees, it won't matter what type of masters you have, because most employers won't require or expect one to begin with. I think having either of them is good, although not entirely necessary. The general thinking that I have heard from patent hiring managers is that anyone can do a mechanical patent, but it takes a chem/chemE to do chemical patents, EEs to do electrical, etc.

I think publications and experience can show knowledge and savvy in an area, which helps prep/pros. Litigation tends to be a little less background focus, aside from boutiques, so I don't know what the effect of the additional qualifications would be.

[collegebum1989]

Thanks, that's good to know.

My degrees (masters and bachelors) are both in Biomedical Engineering. My area of interest are medical devices, instrumentation, biomaterials, etc.

I've read mixed reviews of BME as a technical background, that 1) since there is no current niche for BME as there is for EE/ChemE, it doesn't help with background, and 2) Since its in the medical field, people automatically think biotech.

Any insights if any of this is true?

[Dr. Review]

BME is an animal all its own. I worry that BME background might be too removed from mech eng to work with those type of patents, but too mechanical to do biopharma work. Biopharma type work is pretty much reserved for PhDs. You said your area of interest is medical devices, instrumentation, etc, which is better, but if I am not mistaken most people who work in those groups tend to have more general degrees. For medical device pros groups, I've seen MEs, EEs, Physicists and PhD biotech degrees. I think you'd be in a good position to do that, but with the caveat that not every firm prosecutes those patents, not every market generates that type of work, and your degree may be offputting to more mechanical/physical pros practice groups.

My suggestion would be to find a way to demonstrate your interest primarily in the ME/gen eng/device category so that when someone looks at your resume, they see that you aren't looking to prosecute drug patents without a PhD.

(Sorry if this post rambles a bit, I've got a lot going on today)

[airplay355]

Why do you feel a PhD is necessary for biotech? One can publish papers with an undergraduate degree as a first author just as a PhD student would do and thus a potential employer would be able to judge your expertise by the number of peer review papers on your resume. I'm not accusing you of being wrong, I'm genuinely curious as I'm in a position where I could potentially get a PhD or go to law school. I'll have first author papers published from 3 years of post undergrad WE but if I go to LS instead of the PhD route I obviously won't have the advanced degree. My UG degree is in Medical Biology and I am patent bar eligible, just fyi.

[Dr. Review]

Why do you feel a PhD is necessary for biotech? One can publish papers with an undergraduate degree as a first author just as a PhD student would do and thus a potential employer would be able to judge your expertise by the number of peer review papers on your resume. I'm not accusing you of being wrong, I'm genuinely curious as I'm in a position where I could potentially get a PhD or go to law school. I'll have first author papers published from 3 years of post undergrad WE but if I go to LS instead of the PhD route I obviously won't have the advanced degree. My UG degree is in Medical Biology and I am patent bar eligible, just fyi.

There are some key advantages to having a PhD:

1. Inventor PhDs will respect you more and will likely help you out more. With a PhD, you're a member of the club and not some outside blood sucking lawyer.

2. Firms love to advertise how many PhDs they have working for them.

3. Sky high per hour rates are a bit more paletable to the clients if the person billing has a PhD.

[MormonChristian]

With a chemistry degree, and WITHOUT advanced degrees like PhD or MS, how much WE would be enough to replace those qualifications for IP?
And how much WE would be enough to get me in the door?

I'm taking a year off to work but might take 2 years. Would taking an extra year off for 2 years WE be anywhere near helpful for breaking into IP (prosecution and litigation)?

Why not do both? Get a Masters Degree while you work for two years?

Also, if you are going to work, why not work for a patent firm? Then you can take the patent bar before you start law school?


In my opinion, nobody really knows where Patent Law is going with the new patent legislation and the courts ruling on Prometheus.

[MormonChristian]

There are some key advantages to having a PhD:

1. Inventor PhDs will respect you more and will likely help you out more. With a PhD, you're a member of the club and not some outside blood sucking lawyer.

2. Firms love to advertise how many PhDs they have working for them.

3. Sky high per hour rates are a bit more paletable to the clients if the person billing has a PhD.

I have seen PhD scientists yell at patent lawyers that didn't understand their "great" invention because they didn't understand research. They had to call in the non-JD Patent Lawyer with the Phd to work with the PhD scientists because the JD lawyer with the BS degree couldn't speak the same language as the scientists.

[Dr. Review]

I have seen PhD scientists yell at patent lawyers that didn't understand their "great" invention because they didn't understand research. They had to call in the non-JD Patent Lawyer with the Phd to work with the PhD scientists because the JD lawyer with the BS degree couldn't speak the same language as the scientists.

To be honest I can definitely see this happening. Despite my above post, I think that the PhD means a lot more than just the paper. The kind of patents PhD biotech guys are putting out are pretty specific and pretty high level.

[collegebum1989]

Why do you feel a PhD is necessary for biotech? One can publish papers with an undergraduate degree as a first author just as a PhD student would do and thus a potential employer would be able to judge your expertise by the number of peer review papers on your resume. I'm not accusing you of being wrong, I'm genuinely curious as I'm in a position where I could potentially get a PhD or go to law school. I'll have first author papers published from 3 years of post undergrad WE but if I go to LS instead of the PhD route I obviously won't have the advanced degree. My UG degree is in Medical Biology and I am patent bar eligible, just fyi.

Disclaimer: I am a 0L, so everything I say is from things I've read as opposed to direct personal experience.

The PhD requirements for biotech patent attorneys are because to economic reasons. Due to the limited number of academic appointments available to PhD students in life science fields, many graduates have dropped the faculty route to pursue non-academic positions. This combined with the fact that biotech technologies proliferated in the late 1990s have caused many PhD scientists to go into patent law as a lucrative career. As a result, the current market is saturated with patent attorneys with PhDs, so its come to a point where you need a PhD to remain competitive with other attorneys in the field. The technical requirement (by the USPTO) is still whatever is required to take the patent bar.

Another reason is that the requirements for patent attorneys reflect the technologies which they work with. Biotech patents tend to be more specialized and research-oriented due to the nature of fields like biochemistry, pharmacology, etc. Some of fundamental aspects of the technologies are not taught at the undergraduate level, and therefore requires graduate-level work to understand. This is true for biological technologies, which are highly specialized to specific fields of biology. In cases like this, PhD research relevant to particular patent technology provides an advantage when prosecuting.

[Triveal]

I'm fresh out of a B.S. in chemistry, but I can read pretty much any paper on any aspect of biology or chemistry outside of pchem and understand what's going on (or perhaps with a little research on my own for some of the more specific topics). PhDs are so incredibly narrow that I can't possibly imagine the skills I'd gain from spending 5 years getting that degree would possibly be worth it when it came to making me more competent at patent law. Admittedly, I did get my degree from a top (arguably #1) school, and I have buttloads of research experience in many areas - I'm not sure how common that is elsewhere.

[jim-green]

I have seen PhD scientists yell at patent lawyers that didn't understand their "great" invention because they didn't understand research. They had to call in the non-JD Patent Lawyer with the Phd to work with the PhD scientists because the JD lawyer with the BS degree couldn't speak the same language as the scientists.

What is a "non-JD Patent Lawyer"?

[Dr. Review]

is a "non-JD Patent Lawyer"?

patent agent

[senorhosh]

Sorry for the "necro" (don't know if two months counts) but i didn't want to make another thread on this (im op)

For everything that's been said about a phd and understanding the technical aspects, is that geared towards prosecution or litigation? Because i heard litigation deals with very general language and issues in terms of technicalities.

also when people say "IP is hot", do they mean both lit and pros?
I think I'm only taking one year off, not getting a masters. Would my situation make me part of this "hot IP field?"

[Dr. Review]

Sorry for the "necro" (don't know if two months counts) but i didn't want to make another thread on this (im op)

For everything that's been said about a phd and understanding the technical aspects, is that geared towards prosecution or litigation? Because i heard litigation deals with very general language and issues in terms of technicalities.

also when people say "IP is hot", do they mean both lit and pros?
I think I'm only taking one year off, not getting a masters. Would my situation make me part of this "hot IP field?"

1) pros
2) both lit and pros
3) more than likely, but do something useful during that year. get some real work experience (read: lab or engineering work)

[collegebum1989]

Sorry for the "necro" (don't know if two months counts) but i didn't want to make another thread on this (im op)

For everything that's been said about a phd and understanding the technical aspects, is that geared towards prosecution or litigation? Because i heard litigation deals with very general language and issues in terms of technicalities.

also when people say "IP is hot", do they mean both lit and pros?
I think I'm only taking one year off, not getting a masters. Would my situation make me part of this "hot IP field?"

1) pros
2) both lit and pros
3) more than likely, but do something useful during that year. get some real work experience (read: lab or engineering work)

Great to hear, how to firms view undergraduate/graduate lab or research work during OCI?

[sky7]

Would it be accurate to say that a Bio BA without significant WE/undergrad research/advanced degrees would prevent patent prosecution (I think I saw somewhere else on TLS that copyright/trademark/patent litigation doesn't require so much hard science background) from being a future option? I anticipate that there are many, many life sciences majors with more than a bachelor's competing for those spots..

Thanks!

Biology will be difficult, but certainly not impossible. Just look around at the various firms/boutiques. While there aren't many, there are a few biology non PhDs.