Transitioning from Science to Patent Law

I have been asked enough times by science and engineering Master's and Ph.D. students about transitioning to patent law that I thought it would be worth summarizing some basic information that I can refer them to. Which is not to say that a science background is necessary for a successful patent-related career, or that all science degrees are created equal from the perspective of patent law employers. If you are thinking of shifting to patent law, you should get guidance on your individual situation. This post is intended merely as a starting point for folks who know nothing about patent law careers.

Most U.S. patent law work falls into three general buckets: (1) being involved in the patent examination process before the Patent & Trademark Office (PTO), either by helping inventors get patents (known as "prosecution") or by working for the patent office to decide which patent applications to grant; (2) helping clients assert their patent rights in court or defend against patent lawsuits ("litigation"); or (3) helping arrange transfers of patent rights ("licensing" or "transactional work"). There are other options, including the growing field of patent office litigation (a hybrid of litigation and practice before the PTO), but I'll focus on these three.

Patent prosecution involves interviewing inventors, writing patents (sort of like writing a technical paper, but with bizarre rules), and rebutting arguments of patent examiners about why the patent shouldn't be granted. To prosecute patents you don't need to go to law school; you just need to have a bachelor's degree in a technical field (or equivalent, see p. 4-8 here) and to pass the patent bar exam, a 6-hour multiple-choice exam that tests rules related to the patent office (for which there are various commercial test prep courses). Passing the patent bar makes you a "patent agent." (Non-U.S.-citizens can apply for "limited recognition" to practice before the PTO.) If you are also admitted to a state bar, which typically requires going to law school and passing a 2-day state bar exam on many aspects of law—not including patent law—you are a "patent attorney" and are allowed to provide legal advice (and will typically make more money).

I've spoken with patent prosecutors who say they find the work very gratifying because they enjoy learning and writing about many different successful technologies and communicating with people from different backgrounds, and that they appreciate the relatively stable work hours compared with other areas of law. I've also spoken with folks who found it to quickly get boring. Try searching Google Patents for patents in your area of expertise to get a sense of the style, and talk to a bunch of patent prosecutors to see if it sounds fun to you.

How do you get started in the world of patent prosecution? If you are qualified to sit for the patent bar exam, you can apply for a job as a patent examiner at the PTO, which would allow you to work on the other side of the patent application process (e.g., here is an ad for examiners in computer engineering with starting salaries around $50k). Many employers are interested in hiring former examiners, so some people view this as a transition step to other careers. If you have an advanced technical degree (usually M.S. in engineering or Ph.D. in hard sciences), you may also be able to start with a higher-paying job as a law firm as a "technical advisor" or "scientific advisor" who helps draft patent applications. The firm will then pay for your patent bar exam course so that you can become a patent agent, and will sometimes also pay for you to attend law school. In addition to sites like LinkedIn, you can search the Patently-O Jobs section, or go to websites for large firms with established technical advisor programs (such as Ropes & Gray). Or, if you know you want to go to law school eventually and don't want to do it at night, you can start with that and then look for jobs as a patent attorney.

Patent litigation involves duking out patent rights in court. Contrary to most court TV shows, your day-to-day life will not involve arguments in front of a jury. Rather, you will be reviewing documents, drafting questions and responses related to "discovery" (gathering information for cases), doing legal research, and writing legal arguments in memos and briefs. Patent litigators must be admitted to a state bar. A technical degree is not required, and many terrific patent litigators spin their lack of technical background as an asset that allows them to communicate more easily with lay judges and juries. But many firms look for new patent litigation associates who do have some technical training, so this is another common route for those transitioning from science to patent law.

I know scientists-turned-litigators who say they love their jobs because they get to regularly engage in high-level analytical thinking (for which scientists are often well trained), to translate technical ideas for lay audiences, and to work on high-stakes cases. And I have spoken with others who got frustrated with cases that seemed disconnected from the technical merit of the underlying inventions. On average, litigators work longer hours and earn higher salaries than patent prosecutors.

How do you pursue a career as a litigator? One option is to follow the technical advisor→patent agent→patent attorney route and then seek to broaden your practice to litigation assignments. But if you know you want to focus on litigation, starting with law school probably makes sense, especially if you can afford it. If you go to law school full time rather than at night you get to start making a lawyer's salary a year sooner, and you can earn a significant amount over the summer as a summer associate, and you may be able to go to a more elite law school that does not offer a night program, so the financial tradeoff is not obvious. Financial aid packages vary widely by law school, as does your likelihood of paying off your loans. The best advice is probably to start studying for the LSAT, which plays a disproportionate role in the admissions process.

Patent licensing and transactional work involves arranging deals involving patents. It requires the least technical background, so I think most scientists who transition to patent law gravitate toward prosecution or litigation instead, but licensing can be an attractive option for those with economics and business skills. Like litigation, patent licensing does not require the patent bar but does require that you get admitted to a state bar, which typically means going to law school and taking a state bar exam. You might be able to learn some more from the websites of firms with leading patent licensing practices.

Practice environments vary dramatically for any type of patent law. Law firms vary based on size, location, and culture. Most firms involve "billable hours," which can be a shock to those who aren't used to accounting for their time (or who are used to regular web-surfing breaks). Unsurprisingly, the more demanding firms provide higher salaries; starting salary at the very top firms is $160k or more, though it can be hard to get a job at these without going to an elite law school, and prosecution work in $160k firms is relatively rare. Many patent lawyers start at law firms and then move "in house" to a company or to a university tech transfer office, which often involves a saner work schedule and no billable hours.

Other options: Of course, these are not the only possible choices; they are just relatively common ones. There are many cool patent law jobs that don't look like regular lawyering, and there are many lawyering opportunities for scientists and engineers besides patent law. I went to law school thinking I would have a career in patent practice and ended up loving legal scholarship and finding myself in academia. For a taste of other opportunities, see Ali Sternburg's Google Doc of IP/tech law jobs. And there are lots of other resources to learn more. The Science to Law site has a lot of good content from a Yale Law graduate. Google quickly revealed a bunch of other useful sites related to patent careers. Once you've spent some time getting a sense of what you might be interested in, I highly recommend reaching out to folks who already have patent law careers—such as through your school's alumni network—to hear more first-hand accounts of what their day-to-day lives are like. When I started reaching out for similar advice (over a decade ago), I was amazed at how generous people were, and how much I learned from them.