By Karen Imgrund Deak, PhD; Director of Notre Dame’s MS in Patent Law and Registered Patent Agent
It’s no secret that the academic job market is tight – there simply aren’t enough faculty positions to absorb all of the newly-minted PhDs. Of course, many folks who hold degrees in science and engineering fields have the option of an “alternative” career at the bench in a R&D firm. Another popular option, and one growing in visibility, is for individuals with technical degrees to enter the field of patent law.
There are a couple of options for folks entering the patent law field; the fundamental distinction is whether or not someone has a law degree (JD). Subsequent posts and podcasts in this series will address the role of patent attorneys in the legal world. This post specifically focuses on the impact that PhD-holders can make without spending three more years in law school.
Many law firms will hire people who have PhDs (or sometimes even folks who have a technical background but not a PhD) to work on patent applications for their clients. If the person has passed the USPTO’s Patent Bar examination (formally, the Examination for Registration to Practice in Patent Cases), but is not an attorney, they can call themselves a Patent Agent. Even if someone has not passed the exam, they may still be able to get a job at a law firm as a technical specialist, patent scientist, or some similar title. Patent law is a very specialized subpart of the law – hence its own separate exam with different requirements than state bar exams – and one that is not well-understood by either clients or non-specialist attorneys.
Patent agents, technical specialists, patent scientists, etc. are all tasked with helping the firm’s clients get patents. Getting a patent requires a series of discrete steps: understanding the invention, writing and filing a patent application, and then negotiating with the Patent Office to convince the Office that the inventor actually deserves a patent. Additional layers of complexity can come from managing patent applications for the same invention in multiple countries around the world; and also from managing multiple, closely-related patent applications from the same inventor.
Once someone has passed the Patent Bar and become a patent agent, they are qualified to participate in all of these steps. Patent attorneys can do all of these things as well as additional work: writing contracts, or performing due diligence for a company, to name only two. In practice, however, a good patent agent or patent scientist often does these types of work, too – the work is just reviewed and signed off on by an attorney before it goes to the client.
Patent agents work both in law firms and in R&D-based companies. Patent agents at firms do very similar types of work at any firm – they help clients get patents. Patent agents who work in companies may help the company get patents; or they may alternatively oversee the company’s patent portfolio by “harvesting” inventions from the company’s researchers and then managing an outside law firm as the firm does the actual work of getting the patents.
If a person is considering a job as a patent agent, the competition is getting more and more intense. On the bright side, however, good, qualified patent agents are always in demand. So, what can one do to increase their chances of getting hired? Have a killer resume, cover letter and elevator pitch, of course; show some engagement with the patent system, if possible. There are also a series of post-PhD programs coming online to help with the transition – the MS in Patent Law and related offerings at Notre Dame, and a MLS of Patent Practice at Arizona State, among others. In general, these are programs of short duration and high intensity, which prepare their students by teaching the skills that a Patent Agent will use on a daily basis. Notre Dame’s program has seen high demand for our graduates.
Law firms especially have, in my experience, been very enthusiastic about hiring trained, competent Patent Agents. The salary for a Patent Agent is generally lower than for a patent attorney (but still completely liveable, and generally a multiple of what a post-doc position would pay); and they specialize in a niche field of law which is growing in importance.
I welcome any inquiries about a career as a Patent Agent, even if you’re just starting to explore and don’t have anyone else to talk to. Feel free to contact me at firstname.lastname@example.org.
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