<p>Just curious enough to provoke, but would patent law, being so specialzed, mean that there are less individuals out there who meet these specific specializations that companies looking for qualified applicants are then forced to chose amongst those few applicants or just leave the position unfilled - meaning they wouldn’t care where their JD came from, but be more focused on that specialized experience? Hence, supply low so demand high. I think I get what you’re meaning: a software patent attorney is not interchangable with a drug development patent attorney, but within each specialization the market does in fact create the shortage the same way (lack of required/recommended experience in that specialization). Therefore, I propose that my hypothesis remains correct, however, reworded: because there seems like a short supply of EACH SPECIALIZED Patent Lawyer, I wouldn’t think companies are being too picky on where someone received their degree so long as they have some valuable SPECIALIZED exp and seem like they’d work well.</p>
<p>Specialization in this case - Chemical Engineering.</p>
<p>It is true that as a specialty patent law is small (around 20,000 registered with the USPTO). Not all of them are practicing anymore so the actual supply is small. Also, since 95% of attorneys do not qualify to become patent attorneys (BS in science/engineering required), you can’t just move into patent law from another field of law.</p>
<p>The further sub-specialization is another hurdle. Nothing in theory prevents a patent attorney working on mechanical inventions to switch to software for instance, but it is not common. I handle all types of inventions because I run my own practice, but I would still feel uncomfortable doing biotech patents for instance. </p>
<p>If you are going to work as in-house IP counsel, specialty matters less, because very few companies, even the largest ones, like IBM, file their own patents. They pretty much all farm the process out to outside firms. </p>
<p>It is definitely true that experience trumps anything else because of the very steep learning curve. A small mistake in drafting can cost your client his patent rights.</p>
<p>cellardweller
Are you implying that a boutique firm is a good place for a registered patent attorney just out of law school – i.e., one without legal experience?</p>
<p>What would you say if I asked whether attaining a Master or PhD during my years in industry would be worth it in the long run? I am skeptical of its usefulness throughout a patent career, in general, especially because you said only in the field can one really gain the skills needed. (Assume I am not pursuing a biological-related field. I am most interested in materials science, if you want something to focus on. Also, I am considering beginning UG research in our school’s microelectronics and photonics program soon. If I like it, I can pursue that in grad school.) Another idea I have in mind is using industry experience (four years minimum is required) to qualify for and pass the PE license exam – it couldn’t hurt, right?</p>
<p>It is interesting to me that patent litigators simply have to have a law degree to litigate in patent cases and are exempt from the engineering/science background rule. It is also interesting that big law firms don’t generally hire or train registered patent attorneys to do patent litigation. What is the reasoning behind this?</p>
<p>I know what you mean about your friend’s personal life taking a hit – I have a mentor who was forced to miss his honeymoon while working as a litigator. He also complained of opposing counsel, or whoever he was opposing at the time, purposefully dropping discovery requests on his desk every December 1st to ruin his Christmas holiday. I can imagine that worse things can happen while working as a litigator. (He litigated for four years. He now does patent prosecution.)</p>
<p>I did plan on passing the patent bar before applying to law school.</p>
<p>One more thing: I haven’t the slightest notion to the meaning behind getting hired as an “in-house IP counsel,” and had some trouble finding information about in on the Web. Could you elaborate on this just a little, please? </p>
<p>Boutique patent firms hire lawyers straight out of law school. They will train you from scratch. Generally, you get an internship in the summer before you graduate and the firm makes an offer during your last year in law school. You don’t get paid as much as Biglaw associates but the stress is also much less and they don’t weed you out if you are any good. It just costs too much to train patent attorneys. Lateral transfers from law firm to law firm are also very common in patent law.</p>
<p>Patent prosecution and patent litigation are two very distinct specialties. It is a little like contract law and business litigation. Linked but distinct. </p>
<p>Frankly with so many lawyers complaining about their jobs, most of the patent attorneys I know are actually quite happy. They are well respected and make a good living. Not as much as litigators, but again the lifestyle is much better. </p>
<p>The patent bar is really for dealing with all the procedures with the USPTO. Patent litigation is handled by federal courts. Very different rules and procedures. </p>
<p>You don’t need a PhD expect for biotechnology. A BS or MS will do just fine. </p>
<p>IP counsel is something you do once you have already significant experience. Generally, the in-house IP counsel (sometimes called Chief IP Officer) decides on the company’s patent and IP strategy. He typically reports to the CEO, sometimes to the Chief Counsel. he also handles any technology licensing with outside organizations. He may be a former patent attorney or he may not. He hardly ever files patent applications, leaving that to outside firms under contract. It is actually quite a cool job with much less stress than working for a law firm.</p>
<p>It’s a bit of an exageration to say that “*f you handle patent litigation you do nothing else.” I just checked the “Superlawyers” entry for an attorney who was lead counsel for a patent suit I managed in-house; it says “Intellectual Property Litigation (50%), Business Litigation (30%), General Litigation (20%)”. The firm web site for another attorney who handled a major patent infringement case for us states that she has handled employment cases as well. </p>
<p>It is true that most patent litigators spend nearly all of their time on patent litigation.</p>
<p>Patent attorneys have better in-house job prospects in Silicon Valley than most attorneys, but they still face competition in applying for jobs.</p>
<p>I really meant to say, if you handle litigation, you do nothing but litigation. I can readily see a patent litigator occasionally doing other form of business litigation, especially in federal court, but definitely not patent prosecution. There was a recent survey among all Federal Judges in the US evaluating the quality of litigators by area of law. IP litigators came up far above the rest in terms of professionalism and expertise. It could be that there is just less BS in patent cases, not to say there are not frivolous cases. There seems to be a current epidemic of patent suits. Apple vs Samsung; Yahoo vs Facebook. Every day there seems to be a new announcement.</p>
<p>Patent laws in the US were recently overhauled so the entire field is experiencing shock waves. It is actually a great time to enter the field as many of the old rules no longer apply.</p>
<p>I’ve heard this somewhere else too. I vaguely remember hearing about how outdated the US Patent system is so they are going for a complete redo. Sounds promising, actually.</p>
<p>Well, I thought I would share that I sat through two law course lectures today to wrap up my week before spring break. The faculty at my law school was very kind and helpful, as were the professors. This morning I went to a property lecture, and I enjoyed it so much that I made them put me in a civ. pro. lecture just a few hours later! </p>
<p>I felt at home. I think this is all meant for me. I know if I become an attorney, I’ll be in the right place. I’m glad my engineering career is only the beginning and not the end! I wasn’t meant to be an engineer! Ha</p>
<p>One cautionary note, LaBarrister. The experience of being in a law school classroom doesn’t correlate much to the experience of practicing law. That was good news for me - I never felt comfortable in law school classrooms. Law professors aren’t generally interested in making their students feel comfortable. Students walk through the door each day knowing there’s a chance that they will be called upon, questioned at length, and possibly humiliated before their peers. </p>
<p>Conversely, people who end up as law professors often found that they weren’t particularly comfortable practicing law. Few of my law professors had practiced law for more than a year or two.</p>
<p>LaBarr, GB made a great point. When my wife was taking her paralegal classes for certification, all of her professors were practicing attorneys for only a few years at most. One, who was actually the head of the department at this school, hadn’t practiced law a single day in his life despite getting his JDand passing the bar nearly 20 years ago. Long story short, he only got a JD because at the time he was working in DC and everyone he was working with had a JD so he thought that’s what he had to do to stay competitive.</p>
<p>I’m not saying that paralegal classes are the same calibur of law school classes, of course, but it was interesting to know that.</p>
<p>Greybeard
I have actually understood this and thought about it at a great length, as well as the fact that just because I do not particularly enjoy engineering school does not mean I will not enjoy being an engineer. I even brought this up at the professors’ offices through whose lectures I sat through. </p>
<p>Basically, the only reasoning I have ever concluded with in these considerations is this: there is NO way to know… until you know… until you’re actually practicing. With that said the fact that I enjoyed the atmosphere of class, the writing, the material, is not a negative, in my opinion. But are you saying that there is typically a correlation between people not enjoying law school but enjoying being an attorney, or vice versa? Or were you simply saying that because I like class doesn’t mean I’ll like the work?</p>
<p>With that said, I think there is one way to further my knowledge of attorney life about as much as I can, and that is to work at a firm as some sort of clerical intern or something. Is this correct? </p>
<p>I certainly am not lacking in enthusiasm. I want to know as much as I can before I go. I just need advice on how to do so to the fullest of my power. I understand that only so much can be known, though, until you practice.</p>
<p>I can only give you anecdotal evidence, but my guess is that most people who enjoy practicing law did not particularly enjoy law school.</p>
<p>The sample of people I knew who enjoyed law school is probably too small to draw any valid conclusions from them. </p>
<p>A couple of my colleagues mentioned recently that they enjoyed law school. Both of them appear to like their jobs. (One of them recently left her job for another company, but she presumably likes the work.)</p>
<p>I would recommend that people should work in the legal field (if they can) for a while before starting law school. (I worked part-time for an “American-style” law firm overseas the year I applied to law school.)</p>
<p>I know only two patent attorneys well enough to know that they neither enjoyed law school nor the practice of law. I guess I have to find some way, now, to learn more about the practice of law.</p>
<p>I’m looking at the three following options to spend my years between UG and law school:</p>
<p>1) Work as a patent examiner
2) Get a Master’s degree
3) Work in industry</p>
<p>Assumer I am only concerned about getting potential clients. Which one or combination of these would expose me most to that opportunity? Is it wise to begin now thinking about such a thing as potential clients? Consider I had around 50 hours per week over a 3-5 year period.</p>
<p>I dislike being confronted with hypotheticals, but I didn’t know how else to approach this concern.</p>
<p>I don’t believe any of these scenarios would assist you in getting potential clients, assuming you mean clients for patent work in the future. That is something you would get exposed to at a patent law firm. An internship at a law firm would expose you to the business side of patent law, but until you have practiced patent prosecution for some time, you would not be expected to find new clients. That is generally what the senior partners do, generate new business. Junior associates get assignments referred to them from others. You can generally estimate it will take 5 years of patent practice to be able to go out on your own and get clients. </p>
<p>Working as an examiner will make you a more attractive recruit to a law firm. A master’s degree may help you get a better job in industry. Working in industry may help you pay for law school.</p>
<p>cellardweller
Ah, so I was wrong in thinking one could prepare this early for possible future clients. I guess what really must come down to getting clients is being good at what you do as an IP professional. I mistakenly thought that a good reputation as an engineer or graduate student would bring those with whom you worked your way should they ever need assistance with IP. I understand, now.</p>
<p>Also, thanks for the last bit. I am just trying to prepare myself to serve those best when I become involved with the work later on. If most experience is learned on-the-job, and a Master’s or work experience won’t be particularly helpful, I think I may work with the USPTO for a while after UG, especially to make sure all of this is what I want to do. </p>
<p>Remember that working as an examiner is still quite different from writing patents. You will get to know a lot about patent law very fast, but your job will be to review other people’s applications. The creative element will be missing, something which I especially enjoy. On the other hand, it is very easy to transition to patent prosecution after a few years at the USPTO. And many examiners attend law school at night as the work hours are very flexible.</p>
<p>cellardweller
All you have said I will keep in mind. Here is something else: I wonder what lets a person know whether he or she was meant for prosecution or litigation, for I assume it to be either one or the other. I sort of want to find this out about myself early on in my career. My assumption is that I can try out litigation at a law school’s program, because many offer experiences in moot trials, or that sort of thing. Is this generally where lawyers find out which way they lean, or do many have to get out in the field before they discover such things? I cannot remember if you have answered this, but how did you decide litigation wasn’t for you? I mean, choosing between the working hours and lack of control and things is easy to mull over and depends a lot on one’s current situation with family and things, but I want to base my decision most heavily on what fits best with my personality and what I will end up being best at.</p>
<p>Sorry for rambling a little at the end there. Thanks for all of your help.</p>
<p>Patent litigation is an entirely different business from patent prosecution. It is also quite different from other forms of litigation and very specialized so don’t expect any training in law school. Moot court is mostly for criminal law. You have to be very experienced to get a position as a patent litigator. In addition to admission to the patent bar you have to be admitted to various Federal Courts which requires references from other attorneys already admitted. You generally need a whole team of people to handle a large case, so litigation is generally handled by large firms with deep pockets. They also would not care about your engineering background just your experience in litigation. You spend 90% of your time drafting motions and going through discovery and less than 10% in court if that. Federal judges also hate getting assigned patent cases because they are so technical and lengthy.</p>