Patent Agent Experience

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Patent Agent Experience Can pre-law school patent agent experience compensate for class and school ranking when seeking an IP position?

Question

classmates. It is important to mention, one of the reasons

Before entering law school next Fall, I will have a year of high-tech patent prosecution

While there are certainly differences that

your background is valuable is that it makes

experience as a patent engineer. How much

could be pointed out, for the most part the

you eligible to sit for the Patent Bar. In order

will this experience benefit me when seeking

expertise of patent attorneys falls into the

to even sit for the Patent Bar, an applicant

an IP/Patent associate position with the big

following categories: (1) the life sciences,

needs prior scientific or technical training

firms? Can it make up for not being top of my

(2) chemistry & pharmaceutical, (3) mate-

at the Bachelor’s degree level in a science

law school class or not being from a top 25

rial science, (4) electrical engineering, (5)

or engineering field (or significant college

law school?

physics, (6) mechanical engineering, (7)

credits in one of these fields). Assuming you

medical devices, (8) computer science. In

have the requisite training to qualify to take

Answer

terms of demand, the greatest demand is for

the Patent Bar, you must also pass it, and the

Your experience as a high-tech patent pros-

attorneys with backgrounds in electrical en-

pass rate for the patent bar exam is much

ecutor will certainly strengthen your applica-

gineering or computer science. There is also

lower than for most bar exams - it typically

tion and should compensate for the fact that

a strong demand for attorneys with biotech-

ranges from 28% to 40%. In the 1996 exam,

you have not graduated from a top 25 law

nology, biochemistry or organic chemistry

for example, 968 people passed, and 1794

school or at the top of your law school class.

backgrounds. The lesser demand is for those

failed. Your engineering background and

Patent prosecution attorneys are typically

with mechanical or chemical backgrounds.

prior patent prosecution background will certainly help your chances of completing the

in high demand, and the pool of attorneys with the appropriate technical background is

The fact that you appear to have both a

exam successfully. Once you pass the Patent

small. Your background will likely make you

technical degree and patent prosecution

Bar, you will have all the elements in place to

eligible to sit for and increase your chances

background, when coupled with a law degree,

have a successful law firm career.

of successfully completing the Patent Bar.

makes you a unique and highly desirable candidate for law firms. While there are

I did notice that your question assumes that

Attorneys with scientific undergraduate or

certainly many people who graduate each

you will not be at the top of your class in law

graduate degrees are highly in demand in

year with technical and science degrees, very

school, even though you haven’t started.

the intellectual property arena. Moreover,

few of these people may have any interest in

Although you will likely be a marketable

attorneys with technical expertise in certain

attending law school because there is usually

attorney, graduating at or near the top of

scientific fields are far more likely to obtain

a good market available for these individuals,

your class will dramatically improve your

employment as a patent attorney than those

even without a law degree. Therefore, you

opportunities with top-tier firms. I strongly

without such expertise. As a result, the pool

will be a fairly unusual commodity with a law

encourage you to focus on your performance

of potential candidates for patent positions

degree. Additionally, the demand for patent

in law school. Although you may still be quite

is particularly small. To top that off, your

attorneys is compounded by the fact that the

successful without stellar grades, graduating

technical experience as a patent engineer

need for patents has continued to increased

at the bottom of your class may be a signifi-

will provide you with the technical know-

dramatically. For example, a recent article

cant hurdle for your success, especially with

how to understand the technical intricacies

in the Legal Times stated that the number of

respect to opportunities early on.

of patent prosecution, infringement and

patents issued each year has increased 30-40

negotiating and drafting tech-related licens-

percent since 1990. During the same period

In conclusion, it seems as though you have

ing agreements and briefs. This puts you at

of time, the number of software patents

all the pieces you need to begin law school

an advantage over many of your law school

increased by approximately 200 percent.

and do well throughout your career. I recom-

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