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by Steven C. Oppenheimer, Licensed U.S.
Patent Agent
Copyright © 2008 Steven C. Oppenheimer
After working more than fifteen years working
as a freelance technical writer, I discovered another career
option that draws
heavily on my technical writing background and potentially
offers significantly better money. The purpose of this article
is to help other technical writers decide if they want to explore
this interesting option. This same career option is also open
to scientists (in physical, chemical, and biological sciences),
engineers, and doctors. (Possibly nurses, too – read
on….)
Please bear in mind that what I describe
here applies exclusively to the career option of being a patent
agent in the United
States of America – I have no idea if there are parallel
career options in other countries, though possibly similar
career options exist! (I should add: There are absolutely careers
to be found in foreign patent offices, but these mainly entail
examination of patents. As to whether non-attorneys
can find careers in foreign law firms and companies, writing patents—which
is the part that's similar to tech writing—I
am not knowledgeable on that question. If someone knows and
wishes to inform me,
please write!)
Contents:
What Is A Patent Agent?
How To Become A Patent Agent
Career Opportunities As A Patent Agent
From Patent Agent To Patent Attorney
Working As A Patent Agent
A Related Path: Patent Examiner
Legal Notices
What Is A Patent Agent?
Let’s start by defining both patents
and patent agents.
A patent is a legal document which describes
a new invention, and in particular characterizes those aspects
of the invention
which are really “new” or “inventive”.
A patent has several parts, but the crucial parts are the detailed
discussion of the invention (sometimes referred to informally
as "the disclosure") and the claims.
The disclosure gives an overall description
of the invention, in sufficient detail that someone who is
well-versed in the
overall field of technology at hand could build the invention
based on the disclosure. The claims are a section of the patent
which—by means of very specific, structured legal language
and conventions—indicate precisely the aspects of the
technology that the inventor asserts are original, and which
should therefore be protected by law as his or her unique invention.
In the United States, inventors are legally
permitted to draft patent applications for their own inventions.
Most inventors,
however, recognize that drafting an effective patent requires
specialized training. As such, they turn to patent attorneys
or patent agents to draft their patents for them. Patent attorneys
and patent agents are licensed to draft, file, and prosecute
patents on behalf of inventors.
"Drafting” a patent application
entails gathering necessary information from the inventors
and writing up the patent application.
Patent “prosecution” entails a kind of legal dance
between the patent applicant and the United States Patent and
Trademark Office, or USPTO. It is common for the USPTO to initially
reject all or most of the claims in a patent application. The
claims can be rejected on various legal grounds, but the typical
reason is that there is a prior public disclosure, in the form
of a prior patent or other publication which the Patent Examiner
considers to anticipate the claimed invention. (Sometimes the
Patent Examiner argues not that patent application is anticipated
by a single existing invention, but rather that the application
is “obvious” in light of a combination of existing
technologies. These details are not central to our discussion
here, so for now we’ll just lump it all under “anticipation”.)
In other words, Patent Examiners at the
USPTO will argue that someone else got there first. The patent
applicant or applicants—typically
represented by their attorney or agent—may then either
amend the patent claims, or present factual arguments that
the claims are not actually anticipated by prior inventions.
Sometimes the attorney/agent will do a combination of both,
amending some claims while trying to argue around other rejections.
This dance can go through one or more rounds, and sometimes
winds up going through administrative appeals within the USPTO.
(It can even go beyond the USPTO, into the court system.)
Both patent agents and patent attorneys are licensed to fully
represent inventors in all respects before the USPTO. In other
words, from the standpoint of patent prosecution with the USPTO,
there is no practical difference between a patent agent and
a patent attorney.
The difference is, a patent attorney can also represent an
inventor in various legal proceedings which may take place
in courts beyond the jurisdiction of the USPTO. In addition,
attorneys can advise inventors on contractual issues, licensing
issues, and other legal matters which are beyond the strict
scope of patent filing and prosecution. Still, there is a lot
of work to be done just in the realm of patent filing and prosecution,
more than enough to keep a patent agent very busy!
A patent agent, under the supervision of
a licensed patent attorney, may also engage in “opinion” work.
This means, typically, giving legal advice to a client about
whether
one of their inventions violates a patent claim of another
patent (usually from another company or inventor), or whether
a competing product violates one of their patents.
How To Become A Patent Agent
Drafting and prosecuting patent applications is not exactly
the same as technical writing, but there is significant overlap
in the skills involved. Certainly, it is crucial to be able
to work with subject matter experts (like engineers or biologists)
to gather technical information, and further to be able to
write up the information in clear language. Drafting the
patent claims involves additional legal skills that would
be new to technical writers, but it certainly can be learned.
In the U.S., however, there are strict limits on who can become
a patent agent. On the one hand, a law degree is not required.
On the other hand, there is a licensing exam which is administered
by the USPTO. In order to qualify for the exam, you must have
significant technical training in a field such as electrical
engineering, mechanical engineering, chemistry, biology, physics,
or medicine. (Studies in math are not considered acceptable,
but computer science is. Also, please note this is not a full
list of the allowed technical backgrounds; you can obtain that
from the USPTO Web site, as described further below.)
As such, the patent agent field is wide open both to technical
writers with the necessary academic training, and also to engineers,
scientists and medical professionals who want to make a switch,
and who enjoy working with the written word.
Typically, you must have at least an undergraduate
degree in one of the appropriate fields, or the equivalent.
In my own
case, my college degree was for a kind of independent major,
self-designed program of study; however, I was able to provide
the USPTO with documentation showing that I had essentially
completed all the coursework that one would normally take for
a physics major. That was enough to qualify to take the test.
The exact requirements for being able to take the test can
be found at: http://www.uspto.gov/web/offices/dcom/olia/oed/examregist.htm
(Click on the link for “General Requirements Bulletin” for
a .pdf file that lists the exact requirements.)
Once you apply and qualify for the test,
you must take the test, which consists of 100 multiple choice
questions! (90
of the questions are actually graded, the other 10 will be “questions
under development” by the USPTO.) Studying for the test
is an entire art in itself, and perhaps I’ll write a
separate article on that at some point. In essence, however,
the licensing test is not a technical test—if you qualified
to take the test, it’s assumed you know something about
technology or science already—instead, it’s a test
on law and administrative issues related to patents. It’s
a very detailed test, and the pass rate is not all that high.
In other words, you really need to study for it.
Everything you need to know about patent
law and regulations can be found in a book called the MPEP,
or Manual Of Patent
Examining Procedure, which can be downloaded from the USPTO
web site. Unfortunately, it’s about 3000 pages long (really),
and it’s hard to know exactly what to study from that
book! When I took the test, I was able to study off of old
tests, which can also be downloaded from the USPTO web site.
(http://www.uspto.gov/web/offices/dcom/olia/oed/pastexams.htm)
However, in 2005 the USPTO switched from paper tests to an
electronic testing system. They no longer publish recent test
questions, and the existing old tests (from 2003 and before)
become progressively more out of date as the patent law and
regulations evolve over time. However, I would not completely
ignore these old tests. While the specific questions and answers
may become dated over time, the types of questions on the old
tests still reflect, at least in a broad sense, the kinds of
issues likely to be raised in the future.
There are patent prep course which you can
take, and others which can be obtained via mail-order. They
are not cheap (expect
to spend anywhere from $1000 to $5000), but if you are determined
to make a career transition the prep courses may help you pass
the test. For what it’s worth, however, I managed to
pass the test my first time, simply by working off of some
books I found on patent law at a legal bookstore, plus studying
off the old tests.
Here is a link to a site where you can get more advice on studying
for the patent agent/attorney licensing exam. (Agents and attorneys
both take the exact same exam.)
http://www.intelproplaw.com/ (Go to the “forums”, and find the discussions on
patent careers.)
There are also discussion groups on Usenet
related to patent law, where you can get advice. (See the newsgroup
misc.int-prop) Here is one site (among dozens that you will
find, if you search the Web) for course materials you can find
for the patent bar:
http://www.patentpublishing.com/index.html
Career Opportunities As A Patent Agent
What are the career opportunities as a patent agent?
I was surprised, after getting my license
from the USPTO, that I did not immediately land work with a
law firm. I would have
thought that my extensive experience as a tech writer would
have made me highly attractive to the law firms. What I found
is that some law firms, including both general-practice law
firms and intellectual property boutiques, seem to be more
interested in recent law school grads than in experienced tech
writers. Partly, I think it’s because they are simply
not familiar with technical writers; not that many people make
the transition from tech writing to patent work. Partly, however,
I think there is a bias on the part of some professionals in
the legal community towards lawyers.
That said, some patent law firms (and some
general practice law firms) will hire technical specialists,
meaning people
who have technical backgrounds, even if they are not licensed
as patent agents. (Some firms use titles other than “technical
specialist”, but the idea is the same.) Often, they are
seeking people with advanced degrees (M.S., Ph.D., or M.D.),
but some of them will be open to candidates with a B.A., B.S.,
or B.S.E., especially if you do have the technical writing
experience on top of that. Extensive experience as an engineer,
scientist, or medical professional can also be highly attractive
to some of these firms.
If you’ve passed the patent bar prior to even applying
for work—so you are a patent agent, instead of just a
technical specialist—that can elevate you above other
candidates for technical specialist jobs. On the other hand,
even if you have not yet passed the patent bar, some firms
will hire you as a technical specialist. The experience you
get at the law firm can help you understand the legal and administrative
issues that you will encounter on the test itself.
So the bottom line is, not all law firms engaged in patent
work will be open to patent agents (or technical specialists),
but some will. In addition, some private corporations draft
their own patents in-house, and will be open to working with
patent agents/tech specialists.
Another issue is experience. Many law firms, and probably some
private companies, want someone who is experienced in drafting
claims and prosecuting the patent through the actual award
of the patent. So, as with work in many fields, getting that
first job may take some real persistence. (In my case, it took
about six months from getting my license to getting an actual
job offer.) But it’s pretty clear to me that once you’ve
gotten experience on that first job, more opportunities will
open up if you decide to move on.
Also, the money-earning potential is very good. A starting
position as a licensed patent agent could easily afford you
the same kind of earnings usually seen by senior level technical
writers. (I’ve checked the salary stats on this – a
patent agent at two years can make as much or more as a technical
writer at ten or fifteen years.) The mere fact that a license
is required to do the job (and a license that requires passing
a hard test!) elevates the position from non-licensed tech
writing work. I’m not as sure how the patent agent salaries
compare to salaries for engineers or medical professionals,
but I’ll bet the patent agent salaries easily match what
most scientists can earn.
From Patent Agent To Patent Attorney
A final, very important perk is that—and, this is a whole
other branch of this career path—if you do get a job
with a law firm and decide to pursue a law degree, many firms
will reduce your full-time requirements while you go to law
school at night, and may help pay your law school tuition.
So, this is a potential route to making the transition from
tech writer/scientist/engineer/doctor to patent attorney. A
lot of work, but with the potential for large financial rewards.
The Washington, DC area is particularly fertile for patent
work, because so much of patent work revolves around interaction
with the USPTO. (For example, it’s convenient to be able
to meet on occasion with Patent Examiners.) However, most large
cities and most major high tech corridors around the U.S. will
have at least some law firms that do patent work. Before deciding
to pursue a career as a patent agent, you might want to investigate
the career possibilities in your geographic area.
Finally, it’s worth nothing that there are independent
patent agents. It’s probably hard to start out this way—again,
companies want you to have experience before sending work your
way—but once you’ve been in the field for some
years, you can probably set up shop on your own as an independent
consultant.
Working As A Patent Agent
I have been employed as a patent agent for close to two years
now, but in some respects I’m still learning what the
job is about. (There’s a lot to learn!) But, there
are at least a few things I can share:
First, if you work at a law firm, expect to juggle many projects
for many clients at the same time. You will not be working
on one patent, you will be working on six or eight or possibly
twenty. The work tends to be stop and go in nature.
As a beginner, you will do some work on a project and then
have it reviewed by more senior staff before continuing. But
even as an experienced patent agent, the work has breaks and
pauses. A client may send you preliminary information about
an invention, and you can start to do some researching and
writing, but then put the project on hold until you can interview
the inventor or another subject matter expert. Once you’ve
drafted the patent, it will probably be reviewed by another,
more experienced legal professional, as well as by the client,
before finishing touches are put in place. So, you can see
the need to have multiple projects in the pipeline.
In addition to drafting patents, you can also expect to be
involved in patent prosecution, meaning you will reply to correspondence
from the patent office. As indicated above, the work entails
determining whether rejections raised by the patent office
are in fact valid, and then either revising the claims in your
patent or arguing the merits of the patent vs. the prior references
(prior inventions cited by the patent office).
The writing itself is also different from technical writing.
There are a host of legal requirements, both formal (meaning
things you must do in drafting a patent) and prudent (meaning
things that are not legally mandatory, but that make for a
better, stronger patent application). You can expect to constantly
encounter new technologies, and you will be called upon to
grasp the essence of those technologies quickly.
One thing that I’ve found particularly challenging is
the need to sometimes be more general in my writing. As a technical
writer, filling in the details—and filling them in early
in a document—was often crucial to clearly conveying
an understanding of a technology. With patents, by contrast,
the goal is to define the invention clearly, but at the same
time to not narrow the invention too much; the ideal patent “claims” the
invention as broadly as possible. (The objective is to exclude
competitors from gaining patents on inventions that are essentially
or substantially the same, with only minor differences).
Broadly speaking, however, the work calls upon the same kinds
of writing skills, thinking skills, and people skills as
technical writing, while providing a somewhat different
challenge, and
significantly better opportunities for pay.
A Related Path: Patent Examiner
In addition to opportunities as a patent agent or attorney,
another option is to become a patent examiner. Patent examiners
work for the United States Patent And Trademark Office
(or similar agencies in other countries). Their job
is to review
patent applications and determine whether or not the applications
meet the criteria for patentability (such as the invention
being novel, non-obvious, and other criteria).
The USPTO provides free training for
its patent examiners, and of course the job can provide the
kind of security typically
associated with government employment. An additional benefit
is that, after some years working as a patent examiner,
examiners can automatically be licensed as patent agents
without having
to take the licensing exam. (I don’t know the number
of years required, but that information is available from the
USPTO. I think [fuzzy memory at work here…] it’s
on the order of five years or so, so it is not as if you
need to spend a lifetime as a patent examiner before skipping
out
on the exam.)
Of course, once you’ve waived out of the exam, and become
licensed as a patent agent, that opens significant opportunities
in the private sector. In particular, some law firms may especially
welcome your expertise, precisely because you’ve worked “inside
the system”, and understand how the USPTO operates.
______________________________
At the time of Internet publication
of this article (January 13, 2008), Steven Oppenheimer is
a patent agent at a boutique
law firm specializing in intellectual property. Mr.
Oppenheimer specializes in electronics, software, mechanical,
and
business method patents. He may be reached at steveqdr@yahoo.com.
Notice is served that while Mr. Oppenheimer is employed
as a patent agent at a law firm, and while he maintains
a Web
site for his (currently dormant) technical writing
services, doing business as “Oppenheimer Communications”,
there is no association between Oppenheimer Communications
and the law firm. Further, the law firm is not responsible
for the content of this article, and does not endorse
any of the contents of this article.
This article is Copyright © 2008 Steven C. Oppenheimer.
All rights reserved. This article may not be reproduced
or redistributed without the express written permission
of the
author.
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