Question about patent law

<p>I've read the stickied post on IP law, but I still have a question about patent law specifically for any attorneys here (or just generally knowledgeable people): What kind of degree do you typically need to be competitive in these fields? </p>

<p>I know an undergraduate degree in science or engineering is a must-have, but I've also been reading in some places that you actually need a Ph.D. to be able to understand clients' inventions and ideas, at least in biotech. It also seems like many patent lawyers are former research scientists who became lawyers after earning their doctoral degrees, so it would seem like someone with just an undergraduate science degree would be at a disadvantage. </p>

<p>Any thoughts? If my goal is to practice patent law in either biotech or CS, would it be advisable to get a Master's/Ph.D. in the sciences before enrolling in law school?</p>

<p>I know an extremely successful lawyer who has a B.M.E. from GA Tech and a J.D. from Vanderbilt Law and practices Patent Law and IP Law. He works at a medium-sized firm in a city of about 250,000 people and makes 250-300k a year. He is also listed in the Best Lawyers in America and is a fellow of the American Bar Foundation. In short, he has been very successful and competitive in the field of patent law without having obtained a Ph.D.</p>

<p>It that normal, or is the above lawyer an exception to the rule?</p>

<p>A PhD is overkill for several reasons:</p>

<ol>
<li>Undergrad and masters level science majors have enough background in the sciences to handle the legal field competently. PhDs might command higher salaries, but law firms don't necessarily need that level of study.</li>
<li> Some firms might, in fact, be concerned that you pursued a PhD. It suggests you wanted a career, possibly in academia. There is less suspicion amidst law firms of those with a BA or MA. </li>
<li> While you may be right that SOME patent lawyers are former research scientists, my sense is this is not the majority in the field. Think about it this way: Look at the law schools you might consider attending. Most tell you how many of their applicants have graduate degrees. They are usually a minority of students, and most of those are masters degrees.</li>
</ol>

<p>In biotech (esp. biology) there is a much higher demand for people with Ph.D.s. In engineering, a lot of people have no higher than a MEng or a BSEE. Keep in mind that the guy mentioned above as being a non-Ph.D. successful patent lawyer a) isn't in biotech and b) already has a job and appears to have had one for awhile. Generally, the newer patent attorneys have much stronger educational backgrounds than the partners because (esp. in biology) there are a lot of people trying to find alternative careers who have already gotten their Ph.D. and hence getting a patent attorney job is much tougher now than it used to be. </p>

<p>I am not saying that in all fields a Ph.D. is necessary-but in biotech especially it is becoming more and more common and not having a graduate degree is a becoming more and more of a liability even with some compensating experience. I would guess a Ph.D. is not that important in CS since it is on the high tech side although I don't know.</p>

<p>I wouldn't worry too much about what proportion of a particular law school class has the advance degrees, I'd look at the backgrounds of the attorneys at firms I'd like to work at and I would pay much closer attention to the backgrounds of those who had been hired in recent years.</p>

<p>As the post said, if you are aiming at patent litigation, a technical degree is not required but one, even a bachelor's degree, is often helpful.</p>

<p>So I am assuming that you are asking about patent prosecution, either in a law firm or a corporation. There, to qualify as a patent attorney, the USPTO website lists the exact requirements, which for the most part include either at least a bachelor's degree or a heavy concentration in certain sciences.</p>

<p>Before proceeding further, however, I need to issue the following caveat [legalese for "warning"]:</p>

<p>The comments that follow are my thoughts as of today. However, by the time the OP graduates college, let alone law school, the "facts on the ground", as it were, can have changed.</p>

<p>To be competitive depends on which technical field and sometimes which geographical area. The following represents my experience in the San Francisco Bay area, which is, as you would expect, a very desirable and thus competitive geographical area for patent attorneys. In other parts of the country, for example in smaller cities or some states, the competitiveness and thus the requirements can be less. Massguy is correct to a certain extent that a Ph.D. may not be necessary to understand much technology and to work on patent applications in it. The problem in desirable geographical areas is that many candidates may have Ph.D.s, so employers are likely to hire them over B.S/M.S. degreed candidates, whether or not a Ph.D. degree is actually "needed" to do the work.</p>

<p>So, in highly desirable areas, say San Francisco Bay, New York, Washington D.C., Austin, Texas, maybe Boston, maybe Philadelphia, maybe L.A., maybe Minneapolis, probably Seattle:</p>

<p>biotechnology or biology: you will need at least an M.S. to be reasonably competitive and many candidates will have Ph.D. degrees, sometimes with considerable academic or industrial research experience. If you have an M.S., work experience can help level the playing field.</p>

<p>Unfortunately, in my opinion a number of biotech and pharmaceutical companies, particularly small ones, believe that only a patent attorney with a Ph.D. can effectively interact with, and gain the respect of, their researchers. I don't believe that this is true, but many of them do, which is the governing factor.</p>

<p>Note, however, that the fact that one doesn't have a Ph.D. doesn't mean that one won't be able to get a job as a patent attorney. Such a person may be attractive to an employer with a smaller salary budget or in a location, or working in a technology, that's not as "hot" or as popular, as some others.</p>

<p>Electrical engineering/CS. Most candidates I have seen do not have a Ph.D., only some have an M.S. Again, some have work experience. So a B.S. may be fine.</p>

<p>Other engineering: likewise, in most engineering fields a B.S. (not a B.A.) is competitive and quite adequate to handle technology. This is particularly true in recently developing fields such as biomedical engineering, where there are very few Ph.D.s in general.</p>

<p>Physics: Physics degrees can serve as a basis for working in various fields. However, in most cases you would need at least an M.S. to have wide or deep enough exposure to technology to function well as a patent attorney, in my opinion</p>

<p>Chemistry: A B.S. used to be sufficient and may still be but nowadays in industry a B.S. may only be good enough to give you a high level technician's job; so for patent work an M.S. might be the minimum needed competitively. Again, it depends on the geographical area and the specific chemical technology, and a number of candidates have Ph.D. degrees.</p>

<p>And just for the record</p>

<p>Nanotechnology: this is not a specific field. It includes a number of technical fields, some of which are more engineering-oriented, others of which are more physics- or chemistry-oriented. So look at the comments for those fields for needs in nanotech.</p>