PATENT ATTORNEYS: Changing practice area - learning patent law

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cookiegirl521

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PATENT ATTORNEYS: Changing practice area - learning patent law

Postby cookiegirl521 » Mon Sep 10, 2018 11:19 pm

I began life as a transactional attorney, but have a technical background and now want to become a patent attorney. I see a lot of theads in which people compare the different patent bar review courses from the standpoint of passing the patent bar - but I don't see any comments about which, if any, of these courses would give a newbie a solid foundation in the law itself. A couple of folks I've spoken with tell me that PRG's program was more like a law school course, whereas those offered by PLI and others were much more targeted towards passing the exam - but all of the folks I spoke with had been in practice for more than 10 years, so things might have changed.

Opinions?

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totesTheGoat

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Re: PATENT ATTORNEYS: Changing practice area - learning patent law

Postby totesTheGoat » Tue Sep 11, 2018 4:27 pm

but I don't see any comments about which, if any, of these courses would give a newbie a solid foundation in the law itself.


None of them do... the patent bar has very little to do with the law. It's all about the contents of the MPEP, including deadlines and other minutae that end up being built into your docketing system and promptly forgotten about. PRG may be more law focused, but I wouldn't count on anything of a legal foundation from it.

If you want to learn about patent law, do it separately from your study for the patent bar.

If I may, what's the purpose of the switch to patent law?

kyle010723

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Re: PATENT ATTORNEYS: Changing practice area - learning patent law

Postby kyle010723 » Tue Sep 11, 2018 4:55 pm

I think Gene Quinn at IPWatchdog, who teaches the patent bar review course for PLI, has a seminar course on patent prosecution for newbies, but it is quite expensive and I've never heard of anyone that took the course. Otherwise PLI also have some patent law 101 type of CLEs.

QContinuum

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Re: PATENT ATTORNEYS: Changing practice area - learning patent law

Postby QContinuum » Tue Sep 11, 2018 9:30 pm

As totesTheGoat says, the patent bar won't prepare you to practice patent law, any more than the regular bar prepares you to practice transactional law. But I wouldn't worry too much about learning patent law by yourself. As with most legal areas, the only/best way to learn patent law is by doing it. Passing the patent bar sends a good signal about your commitment to doing prosecution; the rest you'll get "on the job."

My very first day on the job, one of the partners who'd interviewed me walked into my office, plonked an office action down on my desk, and said, "why don't you take a crack at drafting a response." That was it. By the time the firm's formal training course rolled around, I'd already been practicing for a couple months and got very little out of the training.

Before I sign off, I also want to echo totes in asking why you want to switch. Are you aware of the ever-increasing billing pressures in patent prosecution, and the emerging consensus that prosecution and BigLaw may be incompatible?

Also, which field is your technical background in? You should be aware that a Ph.D. is generally required for prosecution jobs in the life sciences (despite a B.S. being sufficient to confer patent bar eligibility).

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totesTheGoat

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Re: PATENT ATTORNEYS: Changing practice area - learning patent law

Postby totesTheGoat » Wed Sep 12, 2018 9:07 am

QContinuum wrote:My very first day on the job, one of the partners who'd interviewed me walked into my office, plonked an office action down on my desk, and said, "why don't you take a crack at drafting a response." That was it. By the time the firm's formal training course rolled around, I'd already been practicing for a couple months and got very little out of the training.


Ah, good to know that I wasn't the only one to get tossed in the deep end like that.

Before I sign off, I also want to echo totes in asking why you want to switch. Are you aware of the ever-increasing billing pressures in patent prosecution, and the emerging consensus that prosecution and BigLaw may be incompatible?


This is all true (although, I'm seeing better quality apps on average from our BigLaw firms than from our boutiques). I also don't want OP walking in blind if they think that patent law is anything exciting. It is profoundly mundane and clerical.

gucciboy

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Re: PATENT ATTORNEYS: Changing practice area - learning patent law

Postby gucciboy » Fri Sep 28, 2018 4:23 pm

Any info regarding a prep course pick for the Patent Exam? I've seen/used some of PLI's product but it is very static in presentation. It's user interface is a bit dated. I'm considering Wysebridge or Omniprep but have not made the decision yet. Thoughts?

kyle010723

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Re: PATENT ATTORNEYS: Changing practice area - learning patent law

Postby kyle010723 » Mon Oct 01, 2018 11:18 am

gucciboy wrote:Any info regarding a prep course pick for the Patent Exam? I've seen/used some of PLI's product but it is very static in presentation. It's user interface is a bit dated. I'm considering Wysebridge or Omniprep but have not made the decision yet. Thoughts?


PLI's interface is actually probably their best attribute as it prepares you well for the exam. My one complaint with PLI was that their material was a little dated compare to what was actually tested. But I passed, so I cannot really complain too much.

bigpete777

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Re: PATENT ATTORNEYS: Changing practice area - learning patent law

Postby bigpete777 » Mon Aug 19, 2019 9:30 pm

I'm a recently licensed TX attorney who just took the CA exam last month. I've been out of law school for a long time ('08 UCLA law grad), and thus have struggled immensely with the job search (have tried several different gigs so far). I've considered patent law, upon hearing the common refrains about it being a good area long term. I do not have a tech background, but am very good mathematically (and probably should have pursued something in that area rather than law). What would be the best way to gain patent bar eligibility (online e.e. degree?), and would that be at all feasible to do over a several year period while working full-time? Just trying to develop some semblance of a long-term plan (thought also of tax or probate), but obviously it's extremely difficult for someone taking an untraditional route. Would appreciate any advice or suggestions - I'm in the DFW area now, but my wife and I are contemplating moving back to Southern CA.

dvlthndr

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Re: PATENT ATTORNEYS: Changing practice area - learning patent law

Postby dvlthndr » Tue Aug 20, 2019 12:02 am

You don't need a degree to do patent transaction work or patent litigation work. However, to do patent prosecution (i.e., writing patents and dealing with the patent office), you need to get registered with the USPTO. This is the only time you need to have the right kind of degree. You can check the requirements on their website:https://www.uspto.gov/sites/default/files/documents/OED_GRB.pdf. The gist is that you need an ABET certified degree with "Engineering" in the name (or an equivalent amount of coursework).

Electrical/Computer Engineering is the only area where you will have a chance of getting work with only a B.A. You will never get any work related to medical devices or life sciences with a graduate degree (a Ph.D. is usually expected). On top of that, many firms/clients are snobby about where you went to school, and you will probably be competing against people with graduate degrees for work even in the EE/CE/CS space.

Keeping all that in mind, your plan sounds pretty terrible. Realistically, it's hard to see how you would be able to find work even if you managed to get some online EE degree. If you were *truly* set of this, I would try to get M.S. in electrical engineering from some part-time program and make sure you will hit the minimum required coursework for the PTO. That might give you *some* hope of getting work in prosecution--but the deck would still be stacked against you. Honestly, you should just skip it and do something else patent-adjacent if you really love tech (like IP transactions), or stick to something like T&E with a decent lifestyle and lower barrier to entry.



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