A question for those in IP Law

I know there’s quite a few lawyers that frequent this part of ST, so I figured I’d give this a shot. I invite anyone to contribute though.

I’m presently in the middle of getting my Ph.D., and, unfortunately due to funding problems, I’m taking a leave of absence for up to a year (depending on how things go). In the meantime, I’m going to use this “break” as an opportunity to seek out my different directions I may want to pursue upon graduation. I already know that staying in academia is out. I’ve slowly been getting more active in our entrepreneur clubs on campus, and had a local IP law guy come out and give a talk. That, coupled with discussions with the folks in the IP office to generate a patent on a technique I developed, leave me quite interested in the field, along with a nascent interest in small tech business development. I’ve also noticed over the years that I’m growing to be more people-centric over the bench.

So those who are in this world, how do you like it? What do find challenging and satisfying about your work? Is this presently a “good” field to be looking into, or is it saturated market?

Lastly if you know anyone in Socal that needs a broadly educated engineer for part-time technical consulting, please PM me and I can provide more details. :slight_smile:

Thanks!
D

What type of engineer? You could sit the patent bar, and become a patent agent fairly easily. I did it a few years back, but never went anywhere with it. There is huge demand for people with Biotech (PhDs) and Electrical (MS preferred). As an ME, the options are much more limited.

I’m an EE with prior semiconductor device/fabrication experience (MS) and my focus now is on the edge of bio-/nano- tech, but on the medical devices side of the spectrum. Lot of this work going on here locally.

Interesting there’s only a desire for a MS degree for EE types, do we get too specialized otherwise?

Thanks!

Sorry, MS would be the “entry point”, so PhD could be fine. With MEs, a BS works, EEs almost all call for MS, Biotech almost always specs PhDs as a minimum (seems like a lot of the work is in DNA and gene sequencing).

DougRob (I think that’s his username) is a Patent Attorney (practicing) that could also give you advice. From my research it would be hard to ever achieve payback on a law degree, over just going the patent agent route. But if you liked “patent litigation” more than “patent “prosecution”” it may be the way to go.

I self studied the materials (basically read the MPEP 2-3X) and did the practice tests (2-3X) over the course of 3mos and passed (you don’t get a score but I passed comfortably). Its a pretty easy and fairly inexpensive process. It would probably make sense to get the exam over with, get hired, see if you like it, if so have your firm pay for law school…

I wound up down that route as it looked like we were moving to an area where there was more IP work and less “industry” so I wanted to keep my options open.

Several of my good friends and a relative are IP attorneys. They work for the big firms here, so their comp is pretty good (and it’s the main reason a couple of them do it). But it’s growing much more saturated. One of them has been practicing for 7 years now and he says it’s harder each year. Another actually graduated in '09 with an offer in place, but with the tanked economy, they deferred him for 10 months before he finally started work. He was one of the lucky ones, there are a few people who were deferred for longer until they finally got cut. FWIW, they tell me it’s not much different than practicing any other kind of corporate law. You do a ton of research, go through reams of documents, and work long hours. The problem I’m told is that being a lawyer sort of decouples you from the IP side of it. ie, if your interest is primarily on the tech side, don’t be a patent attorney. One of my friends got an undergrad in nuclear engineering and worked for a while before going back to law school. He thought he’d marry the two disciplines sort of like you’re thinking. Unfortunately, it doesn’t work that way. So he spends all day as a lawyer and his spare time working w/ startup companies on the next big idea since they can’t actually afford to be his clients. He hopes to someday branch off and start his own practice so he can work with smaller more exciting companies. For the most part, companies that have IP counsel are large so most of the time is spent defending patents or litigating patent infringement.

Practicing IP attorney here, though not a patent attorney - I license patents and other IP, often as part of M&A transactions, but do not prosecute patents (though am eligible to sit the patent bar, it’s not the way my career has gone). It’s an incredibly interesting job, and most of the patent prosecutors I know love their jobs as well, as the field is dynamic and gives you a chance to learn about very new and interesting technologies that you often get to watch emerge/evolve into the marketplace. I spent seven years working in Boston, and there are IP-centric deals I was involved with where I look around today and say “damn, that’s pretty much how works now…” I think that’s cool.

Given your background and stated interest in IP and small business development, it seems like it could be a very good fit for you. While the general legal market is oversaturated in my opinion, there is still a strong demand for people with tech skills to do IP work. You also say you’re becoming more “people-centric” - if you can speak and write coherently, and have a knack for ‘dumbing down’ complex science to a level that a crusty corporate partner or high-octane venture investor can understand, you are that much more valuable.

Caveats: (1) Law school is wicked expensive and is another three years of your life, so if you’re thinking about becoming a lawyer, make sure the financials and time budgets work out. (2) To do the really cool work, you often need to spend some time in a big(ger) firm or large in-house corporate legal dept. to learn how to practice at a high level and/or get access to the coolest technology. This is a very broad generalization, but in my experience it has held more or less true - before you can hang out your own shingle or join an IP boutique, you often have to put in some time with the majors to learn the trade and get some cred. This can suck if: (a) you hate large corporate organizations; (b) you hate crappy hours/getting things dumped on you at the last minute; (c) you have other life obligations or desires that will make it hard to put work very high up on the list of important things in your life; or (d) all of the above.

Someone above mentioned become a patent agent (i.e., take the patent bar so you’re eligible to practice before the PTO, but not yet have a law degree). This could be a good option, as it can let you test-drive the field without the full commitment of money and time for law school. You still need to be tied in with a firm or IP-focused corporate legal department though, so (a)-(d) above still apply. It was a good option for friends from my old firm though - they came in with a MS or PhD; worked on cool technology while prepping for the patent bar; got paid approx. $90k/yr if working full time; if they wanted, the firm would pay for law school at night at a local school, with obligation to work at the firm for three years after law school graduation; when they graduated law school, they came into the firm with credit for the three years spent working while in night school (so joined as a 4th year lawyer, paid at around $200k, with no law school debt if they were willing to give the firm three more years).

Anyway, way longer post than I intended. In general, I try to warn people off of going to law school these days, or at least to think very very hard about it, because IMO the practice of law is getting nastier, more brutish, harder on your health and doing less and less good for the world. IP law is an exception to that bleak outlook though.

Wimsey, Jkuo, CW,

Thank you guys again for your insights! I really appreciate the comments and much to think about. Especially 1-4. :slight_smile:

Best!
D