• FreeAdvice has a new Terms of Service and Privacy Policy, effective May 25, 2018.
    By continuing to use this site, you are consenting to our Terms of Service and use of cookies.

Become Patent Attorney

Accident - Bankruptcy - Criminal Law / DUI - Business - Consumer - Employment - Family - Immigration - Real Estate - Tax - Traffic - Wills   Please click a topic or scroll down for more.

Gaff

Junior Member
I am going to finish my Ph.D. degree. My thesis is related drug carrier systems, pharmaceutical and biotechnological applications. In which I gain my knowledge in chem eng. as well as pharmaceutical perspective.

I really keen to join IP Law firm. However, all the local IP company is listing Trainee position either Electrical Engineering or Mining, not much related to pharmaceutical.

I want to know if it is very hard for myself in doing IP trainee in EE or mining. It is because all my knowledge is within pharmaceutical and chem eng. Is it like totally changing my field of knowledge?

I notice that all the IP law firms are working in groups of specialties. If I chose EE to start of my IP training, am I not going back to IP of pharmaceutical.
 
Last edited:


divgradcurl

Senior Member
I am going to finish my Ph.D. degree. My thesis is related drug carrier systems, pharmaceutical and biotechnological applications. In which I gain my knowledge in chem eng. as well as pharmaceutical perspective.

I really keen to join IP Law firm. However, all the local IP company is listing Trainee position either Electrical Engineering or Mining, not much related to pharmaceutical.

Then maybe you need to move. There are a lot of firms that represent biotech and pharma companies out there, and they really prefer to hire PhD's over lower-degreed folks if they can. May I ask where in the country you are living/looking?

Have you taken the Patent Agent's exam yet? http://www.uspto.gov/web/offices/dcom/olia/oed/examregist.htm

I want to know if it is very hard for myself in doing IP trainee in EE or mining. It is because all my knowledge is within pharmaceutical and chem eng. Is it like totally changing my field of knowledge?

It's probably unlikely that you would be hired to do EE or mechanical prosecution with a pharma PhD. EE work usually only goes to people with EE, CS or physics degrees. Besides, you have a PhD, why not use it? There are a TON of law firms doing pharma-related patent work -- you need to find one and use your degree and experience where it will help you, not hold you back.

This stuff is all driven by the clients, not the law firms. A bunch of EE's who come up with an electrical invention are going to want to work with a patent agent or patent attorney with an EE background, or at least an in-depth understanding of EE. The clients want their attorney to really understand their technology, and don't want an attrorney or agent who doesn't undersrtand the fundamentals.

The same is true, maybe even more so, for biotech and pharma clients. At least most of the EE clients are willing to work with an attorney or agent with a BS degree. Most of the biotech and pharama clients demand that their attorney's and agent's have a PhD.

Since you have a PhD, might as well make it work for you.

I notice that all the IP law firms are working in groups of specialties. If I chose EE to start of my IP training, am I not going back to IP of pharmaceutical.

That's true, but again, this is more based on the client's needs and wants that the law firm's. It's easier to get a big EE client if you have a roster of EE attorneys or agents who are able to handle the work -- most larger companies don't want to hire a firm with only one or two people who can handle their work. What happens if one of those peope is sick, or on vacation, or quits, or is just overloaded? Clients want depth.

If you did manage to get into an EE or mechanical group, you would learn skills that would help you later if you decide to move to a firm handling biotech or pharma work. You won't really be locked in. That said, it will probably be tough to break into an EE or mechanical group given your background (or maybe not, if there is demand in your area and few people to meet that demand), and you would be better off joining a biotech or pharma group to begin with, if possible.

Based on your post (EE and mining), it sounds like you are either in Colorado or thereabouts, or maybe in the rural East. If you have the ability to relocate, well, you probably already know where the big biotech and pharma hubs are (Boston, SF Bay Area, San Diego, a bunch of other places). The law firms in these areas will have pharma or biotech groups. Also, if you live (or want to move to) the DC area, you can work for the USPTO directly -- you won't make as much (probably) as workinig for a law firm, but you can gain valuable experience and skills that will make you highly employable if you decide to go into private practice later on.

Are you planning on going to law school?

EDIT: Also, many of the biotech and pharma companies have their own patent agents or attorneys on staff, and sometimes hire people directy into those roles. That's another possibility, but again, requires that you live near a biotech or pharma company that has an in-house patent department.
 

Gaff

Junior Member
Thanks Divgradcurl,

Thanks for your advice. Thats really clear a lots of the uncertainty in my mind. I should consider relocate to different places like Boston.

Yes, I am planning to law school. I am now considering a JD. Hopefully can find some big firm willing to pay my school fees and pay good salary.

On the other hand, I still have may be 8 - 10 months to finish my Ph.D.

Am I too early to apply for law firm?

In case they accepted my application. Are they willing to wait half year until my graduation?
 

divgradcurl

Senior Member
Hopefully can find some big firm willing to pay my school fees and pay good salary.

Unfortunately, a ot of firms no longer do this, but there are still some who have programs. I know Finnegan Henderson still has a program for this, but I don't know if they have a Boston office or not. They do have a DC office for sure. Other firms have similar programs -- trying doing a search here, I know this topic has come up before: http://www.infirmation.com/bboard/clubs.tcl?topic=Greedy IP

Am I too early to apply for law firm?

I don't know what the hiring timeline is for tech-specs or patent agents. Your best bet is to just ask around. Also, Loyola University in Chicago and the AIPLA (American Intellectual Property Law Association) have annual job fairs, you could search and find out where and when they are -- they are mostly for law students, but I know the AIPLA is also for practicing attorney, so they may be looking for agents or tech-specs as well.

Your best bet is to do some research (check firm websites, check with infirmation, ask around) and find out who is offering what, and work from there.
 

Patently_yours

Junior Member
Have you considered USPTO?

If you have a Ph.D. in pharmaceutical discipline, the chances are very unlikely that you will be considered for position which require E.E. background, or areas irrelevant to your field of study.
I'm not sure what your future career path is, but there are several options for people with science background who also have an interest in law.

The most obvious one is to become a patent attorney.
Becoming a patent attorney can be expensive as you need to attend a law school.
Or, you can become a patent agent, by taking the patent agent exam with the USPTO. If you pass, you'll get a registration number to practice before the office. Preparing for the exam, however, may require the services of professionals.
Or, you can work as a patent examiner with the USPTO. While a patent examiner position may not pay as well as a patent attorney, one does not need a law degree or pass the patent agent exam. One nice thing about working for the USPTO is in that they are currently providing tuition reimbersements for those who decide to go to law school (part-time) while working for the USPTO. While they want a time commitment in exchange for this program, you will be getting valuable information about patent prosecution.
One last thing to note is that patent examiners with JDs are more likely to get hired by an IP firms than PhD/JDs with no previous patent prosecution experiences.

Also, visit e-formationcentral.com for comprehensive overview regarding patent prosecutions.
 

Find the Right Lawyer for Your Legal Issue!

Fast, Free, and Confidential
Top