I would personally not recommend patent prosecution to any lawyer or aspiring lawyer. Patent prosecutors hold a second class status within the legal profession, something I only realized when I started working in that area. The work is inherently challenging (in a bad way) in a typical law firm context resulting largely from the fact that it is generally fixed-fee work (with those fees generally having been driven down over a long period of time) in a context where lawyers have nominal billable hour expectations. You are under pressure to churn out patent applications in a relatively short period of time. I believe this is one of the main reasons for problems in patent quality seen particularly in the software space over the past two decades. The work itself is highly non-intellectual in nature.
Maybe the considerations are different for a patent agent who doesn't intend to go to law school. Some firms will pay for patent agents to go to law school part time which could be beneficial if the patent agent were to graduate and go into some other specialty (but I suspect that hardly ever happens).
Edit to add a related point: For anyone with a scientific or engineering background who goes to law school, I recommend resisting the temptation to take the USPTO's patent bar exam (this exam is also incidentally something patent agents take). It might seem to be a useful credential, but by becoming a registered patent attorney, you will get pigeonholed into a patent prosecution practice group within a law firm, which is problematic for the reasons I give above.
From my experience, patent lawyers who focus on patent prosecution bill at rate ~$300 - $500; patent litigators are $500 - $1000 (and I'm sure some litigators are much higher).
Patent litigation is an important sub-area of litigation work and practitioners in that area are not especially likely to have STEM backgrounds (unlike patent prosecution specialists) and are not expected to be USPTO-registered. You can see evidence of the two-class system in the academic backgrounds of the lawyers involved -- patent prosecution specialists are more likely to have attended less prestigious law schools than the patent litigation specialists at a given firm. It's my sense that outside the US the equivalent of patent prosecution lawyers are typically not members of the legal profession and often work in small firms focused entirely on patent and trademark procurement grunt work.
Of course, it can also be very challenging. Setting aside troll/NPE cases, you're sometimes competing against the best attorneys at the best firms in the country, in cases where the amounts of revenue at stake vastly exceed any amount that the attorneys could reasonably bill (even at the typical rates of $500-$1500/hr).
I learned that law school was intellectually rewarding and the practice of law can be fun, but I could not stop thinking about software that I wanted to build to improve the practice of law. I took that as a sign that I needed to spend some of my working life being a software engineer.
I think what I have now is a great balance. A stable job as an engineer, with a law practice where I only take on clients that are nice to work with.
These days you can do an undergrad or masters level specialization in biomed, but that hasn't been true for very long. People make there way their from all sorts of paths, including (pretty often) mid-career moves.
One thing that impacts it is you are typically working in a regulated industry, so it's easier to make the change if you have some experience in this. This can be more of a jump for people in software who may haven never seen formal engineering practices. This sounds scarier/more annoying than it is (or at least, than it has to be)
Contrary to some comments here, pay wise it seems to mostly be pretty middle of the pack. Nobody that I know of is going head-to-head with FAANG for "pure" software roles, but overall seems comparable to similar jobs.
My guess is bachelors in an engineering field, particularly biomedical engineering.
Sadly I think they fall on the lower pay end for engineering fields.
Ultimately he came back to tech, but acts as a sort of front line patent agent for our company as well.
We have many discussions about the inanity of the whole system. I’m an idealist, he’s more of a realist about it. It exists. If nothing else, we participate from a defensive posture.
He has shared that he kind of likes the game of patents. You have an idea, which you then have to represent/express/model in a language that looks like English but isn’t exactly that has its own set of rules and idioms. Or in short, it can be seen a lot like the software we write. While he likes it as a sort of variety, he seems to like it about 20%, and when the workload goes above that much commitment, the complaining starts and the desire to get back to “the real work we do” begins to be expressed.
When I have asked him why he doesn’t do more of it, he has shared the same observation others have shared here: Agent is a great skill to have to broaden your value, attorney is what you want to do if you want to earn lots of money at it.
On that note, we both observe that the foundation of lawyering is to be in contention with someone, and generally speaking the less contention among people, the better. Someone’s gotta do it apparently, but it’s not a sphere of happiness.
Ultimately, he went to law school because he didn't feel there was career growth as just a patent agent... you've got to be a full-on attorney if you want growth in that marketplace.
I'm recalling a little bit of his rationale, but it seems that if you're curious about the law, it's a decent way to get exposure without the total commitment of law school, and you get paid while you're learning. But don't think of it as a "career transition" unless you're going totally into the law, it's more like an experiment to see if that's a direction you'd want to take. You'd still have to go to law school and pass the bar if you want to make a career out of it.
(advice is U.S.-based)
Also if you have web development & SEO skills, legal marketing is stupidly lucrative and you need to be a lawyer to actually take advantage of co-counsel fees. You could advertise personal injury on the side and outsource your case qualifying to a few big firms and just collect money by selling leads.
(I worked at a law firm doing exactly this for 3 years)
I remember reading about Cellino and Barnes and their use of TV ads and found that fascinating so would be interesting to learn more about the current state of affairs.
However, (with a small "boutique" firm) the hours are more flexible, the work is rewarding due to always learning new technology at the bleeding edge, and you get to interact with engineers/developers in the industry. Having a strong engineering/science background helps you in getting up to speed on new technology quickly, and having a strong writing background is a required skillset (but that can be developed over time). As with many careers, having good mentor(s) does make a difference. The "lawyer" part is definitely present, but more in the background for drafting/obtaining patents (referred to as "prosecution") vs. litigation work. For prosecution, "the law" is more about learning a set of "operating rules" and applying those rules to your daily work to both comply with the requirements and to anticipate litigation issues in the future. Patent work can also encompass licensing, employment agreements, trademarks, portfolio strategy, competitor analysis - all of which vary from firm to firm on how deeply that sort of work crops up. For litigation, you are definitely more involved in traditional attorney work, sometimes courtroom work/sometimes behind the scenes.
To become a patent agent, passing the Patent Bar Exam is required, and takes a bit of studying - it is not trivial and largely learning a set of rules/procedures to practice in the field. Of course, adding the "attorney" title requires yet another more comprehensive Bar Exam (state-by-state) and most states also require attending a law school prior.
One is writing patents for new, novel, and interesting things and doing all the other things you describe.
The other is churning out crappy patents as quickly as possible and flooding the patent office with whatever will stick.
But, to stress again, the work is inherently different on prosecution vs. litigation. Prosecution also has its work deadlines, but these can be managed more flexibly in practice. Prosecution is a joy for someone like me who prefers to largely work independently (once you learn your craft sufficiently), attempt a good work-life balance, learn new tech every day, apply that knowledge to writing about it in a very specialized manner, compartmentalize tasks (each patent can have its own mental silo), and still do some limited "lawyerly" work dealing with examiners at patent office to attempt to get patents allowed in light of the prior art. Plus, depending on the firm and your ambition, you can branch into anything - litigation, licensing, contracts, etc.
I should note that you don't need to pass the patent bar exam to do litigation, but you would eventually need that for prosecution (agent, attorney). So some say that it can be harder to switch from litigation to prosecution because of that barrier.
"That level of exhaustion is taking a toll. In a survey of over 1,700 lawyers published in September, LawCare — a mental health charity in the sector — found almost 70 per cent had experienced ill health, either clinically or self-diagnosed, in the 12 months to January 2021, including depression and anxiety. According to the study, those aged between 26 and 35 were displaying the highest burnout scores — in part because of a lack of autonomy over their working lives. A fifth of respondents said they felt unable to cope." [0]
I'm guessing that law attracts competitive personalities who are willing to work long hours to make money, and that prospect might cause many lawyers to be high-strung.
[0] Paywalled, but the most relevant bit is quoted: https://www.ft.com/content/f4006248-eb05-49d2-a938-d70118c4c...
Even in public sector, the mental toll of dealing with criminal prosecution and defense is high. Alcoholism is rampant, all sorts of personal acting out / implosions are frequent. (High-flyer prosecutors and corp counsel people in local government are looking for money indirectly through political aspirations or access.)
It’s the price of admission to working your way into a more elite strata of society. It’s much harder than the old fashioned way.
People who find a less lucrative, but sustainable, niche are like any other professional.
[1] https://insights.stackoverflow.com/survey/2021#section-demog...
Only some computer science degrees count, and only some degrees with "engineering" in the title count. The patent office is usually very strict with this and is not interested in hearing about why your degree should count.
They do offer alternative methods of qualifying based on the specific numbers of credits you have in certain classes, but that too is fairly strict.
+ extremely independent + lots of reading about different subjects + less time working on tooling or “chores” + admin to manage your calendar - much higher productivity expectations than tech - high intensity - varied knowledge of attorneys
I think there are some interesting avenues opening up there, around Legal Tech and also around the general fact that I expect that tech will become more compliance-driven in the future.
I mean: When I started out in the field, it was pretty much this unregulated wild west. When I retire, I expect that working in a tech company will feel a lot like working in a bank does today. In a bank, lawyers and law-savvy managers are hugely influential, because everyone else struggles to navigate all the nuance of the regulation that affects them, and it's not even just about money, but about potentially going to jail or not.
My dad did a transition from Mech E to patent lawyer, but super early in his career. Basically to the point where he didn't work much professionally as a mechanical engineer. My understanding is it's very different, but he really likes patent law. It requires a much greater interest in digging through legal history, and an even greater emphasis on writing than engineering does.
From my perspective (working as an engineer, growing up hearing everything about patent law):
If you like the building stuff part, stick with engineering.
If you like the debugging / analysis / almost-audit-like side of tech, and aren't scared by a giant reel of red tape (and as mentioned before like history digging and writing), then maybe patent law would be for you.
If you get good enough, you may be able to affect changes in the red tape even.
I can't really say much about the patent agent side.
it’s interesting to him since he is always coming across curious inventions and applications but otherwise it seems like a pretty dead end career. he is particularly unambitious so i think the lack of pressure other than “review this stuff” is pretty nice for him.
I wouldn’t trade being a builder to be a paper pusher.
However I can confirm what others have written: she was at the bottom of the hierarchy. They treated her as if she were a paralegal.
This wasn't about her specifically -- we had a bunch of partners and associates working on our thicket of IP over the years: men and women from all sorts of national and social backgrounds. Despite her extensive education they considered her skills as simply mechanical.
PS: they charged as much for her time as a junior associate. I doubt she got paid as much though.
You'll be "solving" a problem that is the result of a completely artificial and particularly badly designed system. Such jobs can get to you as you curse the stupidity of the people who came up with and run that system daily.
That said - as long as nothing changes - someone has to do the job.
Also, I don't agree with patents in a political sense.
But 50-100% of most attorneys' time is spent either "reading things," "researching things," or "writing things," if that is what you mean. That is the bread and butter of legal work these days, whether it's writing briefs, e-mails, letters or something else, and reading legal opinions, research materials, discovery, etc.
Basically most of your job as a patent litigator is to read things and occasionally depose people, then research things, then write things (not always in that order). The remainder of time is mostly spent on client communications and marketing.
Occasionally you may make it to trial or a mock trial, where you spend a lot more time on your feet and speaking (or sitting and listening while someone else speaks), but still generally around 25-50%+ of your trial time is spent reading and writing.
Even patent attorneys who do prosecution, however, are in for kind of a grind. Again as others mentioned, it's often either fixed-fee or low-billable-rate work, and the client often won't know the difference between a really great patent and a mediocre one.
To me the real fun is in patent litigation, where you sue or defend lawsuits in federal court. That is where the rubber hits the road and patents are really tested. To get a job there, you mainly need a law degree from a good or great school and excellent grades, although a tech background (or a background as a patent agent) can help.
As others have noted, your degree will determine whether you can actually sit for the patent bar and be a registered patent agent. Certain degrees or showing equivalent level of training are required.
geofcline's comment covers the high level differences (+ extremely independent + lots of reading about different subjects + less time working on tooling or “chores” + admin to manage your calendar - much higher productivity expectations than tech - high intensity - varied knowledge of attorneys) so I'm going to talk about the part of the process I know about.
When I applied to college, I couldn't decide between Engineering and Law. I ended up going with Engineering, but 5 years into my career it was time to change jobs, so I figured I might as well try the law route. The path I chose was to become a Technology Specialist (or similarly worded role) at a big law firm.
A Technology Specialist was someone with an Engineering degrees who helped the actual patent attorneys evaluate and draft patents. The law firm would pay a salary (only about 5% than my Engineering salary at the time) and would both pay for law school and guarantee you a job after school. At the time, starting attorney salary was about 50% more than my current salary, so that was quite a deal.
I sent out 5 resumes, got 3 interviews, and one job offer. I joined a firm and was one of about 25 Technology Specialists. Here's where it got interesting. I was very unique in that I had a) actual experience b) a degree that wasn't biology or chemistry and c) the only one with _only_ a master's degree. Every other "tech spec" was a PhD that noped out of post-doc life of long hours and low pay for long hours and high pay. I later found out that CS/EE types were a harder sell because they typically had to take a pay cut to join.
While I saw some cool and innovative tech, and got to meet some names that anyone in tech at the time would know, I saw just as much bogus business process and software patent work. I had a beautiful office with city views and an amazing secretary (patent secretary itself is a skilled, well-paying role), and billed out at $250/hour. The job itself was fairly boring, though. I worked mostly by myself and was creating nothing. After a year I went back to tech and joined a startup.
FWIW, the life of an attorney doing patent prosecution seemed much more chill than those doing litigation. I think part of the reason is that there are only so many people with advanced engineering degrees required to be understand and write patents who also want to be lawyers. For myself, I showed up at 7am to take a couple hours to study for the LSAT, and I generally stayed until 5:30pm to take advantage of free dinner in the cafeteria. The office (and this was early 2000's, so not a ton of WFH tech) was generally empty before 9 and after 6.
