Route to IP Law

duncan_mary

I am currently a Masters student in Bioengineering with a BS in Chemistry (3.75 GPA). I have recently gotten some mixed opinions about the best way to get into Patent Law, and I'm really hoping I could get your advice/experience. I have heard that I should work as a scientist in the field and then go to law school once I have established myself with a company so as to increase my eligibility for an in-house position immediately following law school. I have also been told I should work as a patent agent for a few years after my MS instead and then go to law school.

My question is...How important do you think technical work experience is to law firms when hiring? Thanks in advance.

bananabo

In order to be a patent lawyer, you need to take both your state bar exam and the patent bar exam. The patent bar exam requires you to have at least a BS in a science degree, which you already have. In my opinion if you want to be a patent lawyer, go to law school and then take both bar exams because at the end of the day, whoever is hiring you to be a patent lawyer is going to analyze your ability and experience as a lawyer rather than your ability as a scientist.

Although having work experience as a scientist could be a plus, I think whether or not you want to gain experience as a scientist is completely up to you and your timeline – how long are you willing to hold off law school for while you gain experience? If you’re going to do 1-2 years of experience as a scientist, I think you’re better off just going straight to law school, honestly.

I’m obviously not a lawyer yet, but I want to go into IP law myself and this is the conclusion that I’ve come up with based off of my own research. I don’t know your specific situation, so take my advice with a grain of salt but I really hope this helps!

10000019

@bananabo said:
whoever is hiring you to be a patent lawyer is going to analyze your ability and experience as a lawyer rather than your ability as a scientist.

For litigation yeah. But for prosecution that is questionable.

bananabo

@10000019 Interesting! can you explain the differences?

10000019

@bananabo said:
@10000019 Interesting! can you explain the differences?

For prosecution, your job is convince a patent examiner. The examiner does not know case law. Although the MPEP does reference cases, the examiners don't read cases. If you try to make legal arguments (like argument by analogy) you aren't going to get anywhere. To prosecute a patent you need a technical background. And to complete the work in a profitable amount of time (most applicants pay fixed fees these days) you need to be efficient. So employers care a great deal about your technical background for patent prosecution.

For litigation, having a technical background is a plus but it isn't required. GPs especially don't seem to put much of an emphasis on technical backgrounds. Even when they limit their applicant pools to those that are patent bar eligible, they are a lot more forgiving about background.

Look at job postings and the employee bios of various firms and boutiques and you'll get an idea of how things play out.

SharpieHighlighter

@duncan_mary said:
I am currently a Masters student in Bioengineering with a BS in Chemistry (3.75 GPA). I have recently gotten some mixed opinions about the best way to get into Patent Law, and I'm really hoping I could get your advice/experience. I have heard that I should work as a scientist in the field and then go to law school once I have established myself with a company so as to increase my eligibility for an in-house position immediately following law school. I have also been told I should work as a patent agent for a few years after my MS instead and then go to law school.

My question is...How important do you think technical work experience is to law firms when hiring? Thanks in advance.

Hi there. I have a position at a law firm doing patent prosecution in life sciences, and was in your position not too long ago. I disagree with some of the advice you were given, and would like to offer my own thoughts which are the culmination of good advice I also received, and what I learned through my own experiences. Please understand this advice is related to working in patent prosecution, and not very relevant to working in patent litigation.

The most common route for working in patent prosecution, especially in life sciences, is to go directly from graduate school to an entry-level position at a law firm. Law firms need scientists with technical expertise to work in patent prosecution, and offer great experience and a foothold. The work you start doing is substantive patent prosecution, and there's no better way to get started.

Having work experience in industry doesn't hurt, but it certainly is not a requirement. I believe it would be less worthwhile for you to seek out an industry position if you intend to work in patent law, as you may need to accept a pay cut going from industry scientist back to a starting position to begin doing law, and there will be little to gain from delaying your progress in that way. I know plenty of people who did begin in industry, but usually because they only decided later to start in patent law.

I could be wrong here, but I don't think it is very common to land an in-house position as an IP attorney with no work experience in IP, regardless of having passed law school. Those positions are typically filled by attorneys with years of experience in firms who did not wish to continue onto partnership roles. Or at least someone with an IP background who can hit the ground running and do work for the company. It is understandable that companies will want to hire someone with a lot of expertise, and unlike law firms, companies don't usually have the resources or interest in hiring someone to be an in-house counsel who has no expertise and requires extensive training. The only exception may be large corporations with massive IP teams that function like small law firms themselves, who could afford to take you on, but I don't think that is commonplace.

Law school almost certainly is not required to begin in patent prosecution. I would strongly encourage you to consider working as a patent agent first (technically, you would begin as something below patent agent until you get your patent bar registration). First and foremost, law firms are often willing to pay your law school tuition. Secondly, while making a significant sacrifice to your free time, you will be earning a very good salary while doing law school, and should not be taking on any debt. As I mentioned above, the law degree itself is not really key to getting into patent prosecution, it's more of a means to an end once you are advancing in your career. The important aspect in the first few years is your technical background.

Happy to discuss in more detail if you like, but I don't want to make this comment incredibly long!

duncan_mary

@SharpieHighlighter Thank you for your advice! I am pretty much set on getting some kind of work experience before law school and was hoping to be told industry experience isn't all that necessary. I was/am leaning toward working as a patent agent and getting experience that way, so I'm glad you were able to corroborate that for me! Thanks again.

SharpieHighlighter

@duncan_mary said:
@SharpieHighlighter Thank you for your advice! I am pretty much set on getting some kind of work experience before law school and was hoping to be told industry experience isn't all that necessary. I was/am leaning toward working as a patent agent and getting experience that way, so I'm glad you were able to corroborate that for me! Thanks again.

Very happy to help. Feel free to message me if you want any additional info.