Engineer or Attorney?  Careers in Patent Law

Stephen S. Wentsler, Esq., Dinsmore & Shohl Law, Cincinnati, 513-977-8683, swentsle@dinslaw.com

While seemingly an odd combination of professional skills, an engineering degree complimented by a law degree can lay a sound foundation for a legal career.  In fact, only qualified attorneys having an engineering (or equivalent) technical degree can satisfy the educational prerequisites necessary for entrance to the patent bar exam.  Moreover, attorneys are not ethically permitted to designate themselves as “patent attorneys” unless they have passed the patent bar exam.  So whether you are approaching the end of your engineering education, or a seasoned engineer considering new career possibilities, your engineering experience can prove to be a valuable foundation for a legal career in patent law.

I.  What are the Responsibilities of a Patent Attorney?


Patent attorneys perform a wide variety of job functions within the general areas of patent prosecution, patent clearance, and patent litigation. 

A.  Patent prosecution - assisting others in obtaining a patent


Individuals who decide to obtain representation before the United States Patent and Trademark Office (“USPTO”) typically approach a patent agent/attorney with a written description, drawings, and/or model representative of their invention.  If warranted, the patent agent/attorney may direct a contractor to physically search the databases located at the USPTO in Washington DC.  As the USPTO will only grant a patent for useful inventions that are novel and nonobvious over what has been done before, performing a patent search may assist the inventor in determining whether meaningful coverage can be obtained for the invention.

If meaningful protection is available, the patent attorney will begin drafting a patent application for filing with the USPTO.  The patent application generally consists of a written description, one or more claims that describe the legal boundaries of the invention, and a set of drawings (if necessary) that illustrate at least the claimed aspects of the invention.  Broad coverage may be obtained by considering other design alternatives that competitors may later develop in an attempt to design around the patent.

Finally, after the application is filed, a patent examiner employed by the USPTO will review the patent application to determine whether it meets the standards of patentability.  If the examiner believes the application is allowable in its current form, the examiner will approve the application for issuance as a patent.  Otherwise, the examiner and patent attorney will negotiate in an attempt to bring the application in condition for allowance.

B.  Patent clearance - assisting others in avoiding patent infringement


Individuals and corporations are often confronted with the question of whether they are legally entitled to practice a newly developed concept.  Before tooling up for a large product release, company management frequently consults with patent attorneys in an attempt to weigh the risks of patent infringement.  If potential problem patents are detected early, simple design changes may be implemented to navigate around the legal limits of the patent in question, thereby reducing the likelihood of patent litigation. 

In order to obtain patent clearance, the patent attorney typically instructs a contactor in the Washington DC area to perform a patent infringement search.  The contractor will search issued US patents that are still in force (either having been filed within the last 20 years or issued within the last 17 years).  Such contractors are trained to examine these patents to determine if any pertinent patents should be closely studied by a skilled patent attorney. 

Any patents of interest are forwarded to the patent attorney, who then reviews the claims of each patent to determine whether each limitation of each of the claims are present in the proposed design.  If one of the claim limitations, or its equivalents, are missing from the proposed design, the patent attorney will likely clear the proposed design from any possibility of infringing that particular patent.  The clearance is a legal conclusion that the proposed design will not infringe the patent but does not guarantee that the patent holder will agree.  In fact, the patent holder may assert otherwise by bringing an action in federal court in an attempt to prevent further alleged infringement and/or damages for past alleged infringement.

C.  Patent infringement – representing others in a patent infringement suit


Patent attorneys may also represent their clients as plaintiff or defendant in a patent litigation suit.  If your client decides a competitor is infringing its patent, the client may elect to bring legal action in federal court for an injunction and/or damages for patent infringement.  Patent infringement can be very expensive and often settles with an agreement, such as a license, between the parties.

II.  What Do I Need To Practice Patent Law?


As discussed above, patent attorneys perform a wide variety of job functions within the general areas of patent prosecution, patent clearance and patent litigation. 

Patent Prosecution - the process of obtaining a patent is complicated and often requires the expertise of one familiar with the intricate and interrelated set of statutory laws, federal regulations and federal court decisions.  Only individuals who have passed the patent bar exam are qualified to represent others before the USPTO.  These qualified individuals are considered patent agents (without a law degree) or patent attorneys (with a law degree).  Thus, while a law degree is not necessary to assist others in obtaining a patent, only those who have passed the patent bar exam (i.e., patent agents or patent attorneys) may represent others before the USPTO.

In contrast, patent litigation and clearance activities do not require patent bar membership with the United States Patent and Trademark Office.  As patent clearance and litigation activities are regarded as practicing law, only those who are licensed attorneys may assist their clients in these areas.  Not surprisingly, most individuals who practice in any of the patent areas described above are typically registered patent attorneys (have passed both the state and patent bars).

III.  How Do I Become a Patent Attorney?


A.  Enter law school after obtaining an engineering degree


One of the most common educational paths for a patent attorney is to enter law school immediately after obtaining an engineering degree.  A legal degree requires three years of intense training at an accredited law school.  The summer after your second year of law school should be spent as a law clerk at a law firm or in the legal department of a corporation.  After graduating, you will spend the summer studying for the state bar exam to become a licensed attorney in the state where you will be practicing.  You may then take and pass the patent bar exam after you begin practicing law.

B.  Enter law school after obtaining experience in the industry


Engineers with industry experience also frequently decide to shift their career focus toward patent law.  Many engineers will attend law school part time at night to obtain their law degree.  Others decide to quit their day job to attend law school full time.  Whether you decide to obtain your law degree on a full or part time basis, industry experience can prove to be a valuable asset for understanding your clients issues on a day-to-day basis. 

C.  Obtain a law degree while working at the United States Patent and Trademark Office


Finally, some individuals may consider working for the USPTO as a patent examiner while attending law school at night.  Learning the system from an examiner’s perspective can provide valuable insight that will be sought after by your future employer and clients.

IV.  Conclusion


Even in the wake of the recent downturn in the economy, careers in patent law continually provide solid job security.  Patent law may prove to be a rewarding career if you enjoy technology and working with others to protect their inventions.
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