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ADAPT Professional Guide
Patent Prosecution Attorney
As a patent prosecutor, you are primarily responsible for drafting patent applications based on invention disclosures and interacting with the U.S. Patent and Trademark Office (USPTO) to help inventors obtain a patent for their inventions. You will also educate inventors to help them understand their options for filing a national and/or international patent application. In an in-house role, you may be responsible for developing and implementing patent strategy, reviewing invention disclosures, and managing outside counsel.
“My experience as a patent prosecution attorney gives me the opportunity to continually learn new and exciting technologies, and advocate for my client to protect those new and exciting technologies.”
-Patent Attorney, Mechanical Engineering
Qualifications
Undergraduate degree in engineering/science
Law degree and state bar membership
Some law firms prefer to hire a law student who has worked for some time as an engineer or a scientist
Passed the USPTO Patent Bar
Job Description and Responsibilites
Firm:
As a patent prosecutor at a law firm, you are primarily responsible for drafting patent applications based on invention disclosures and interacting with the U.S. Patent and Trademark Office (USPTO) to help inventors obtain a patent for their inventions. You will also educate inventors to help them understand their options for filing a national and/or an international patent application. You will also manage a list of patent applications (called a “docket”) that are filed or will be filed. That list includes due dates when certain actions need to be taken with respect to those patent applications. These due dates will structure the “prosecution” process of the patent, including deadlines around application filing, examination by Patent Examiners at the USPTO, and eventually issuance of the patents (if approved by the Patent Examiners at the USPTO).
You will also be responsible for drafting opinions, including freedom-to-operate, invalidity, infringement, patentability, etc.
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In-house:
As an in-house patent prosecutor, you are primarily responsible for developing and implementing the patent strategy for the company. You will also educate inventors on patent law and patent strategy and counsel various business groups on patent strategy. You will review invention disclosures and decide for which inventions to pursue a patent. In some in-house positions, you may draft and prosecute patent applications yourself, and in other in-house positions, you may manage outside counsel in the drafting and prosecution of patent applications.
Gov’t:
There are a variety of different job opportunities at the USPTO for patent attorneys, including Administrative Patent Judge, Office of Patent Legal Administration, Office of the Solicitor, etc.
Kevin's Path
Law Firm Associate - Patent Prosecution
In my current role, I focus primarily on drafting patent applications for cutting edge technologies and responding to office actions from the U.S. Patent Office to obtain patents for my clients. I worked as an engineer for a few years and then went to law school because I wanted to learn about how the law could be used to protect technology. As a Patent Prosecution Attorney, I learn about new technologies everyday and seek ways to protect them using my knowledge of patent law.
And, this is the path I took to get here.
Electrical Engineer
Summer Associate role at Law Firm (during law school summers)
Law Firm Associate - Patent Litigation
Law Firm Associate - Patent Prosecution
Electrical Engineering (B.S.)
Law Degree
These pros and cons were provided by professionals in the field and are purely subjective.
Pros
Cons
Firm:
Work on different technologies with different clients
Variety of different types of work.
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In-house:
No billable hour requirement
Deeper knowledge of the business and the business needs for developing patent strategy
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Gov't:
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Job stability
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Transparency into career trajectory
Gov’t:
No billable hour requirement
Firm:
Work can entail long hours because most law firms have a minimum number of hours that an attorney is expected to bill (called “billable hours”).
Sometimes, work hours can be unpredictable if a client (i.e., company) decides to file a lot of patent applications in a short time, or if a client decides to stop working with a law firm. This means that your work/life balance and schedule may be unpredictable at times.
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In-house:
Lack of variety of technologies
Gov’t:
Workload can be intense due to relatively little support
Pro-tips on how to land the job
During the first year in law school, apply for an optional 1L summer associate job for patent prosecution at a law firm. This will give you a head start and shows your interest in practicing patent law.
During the second year in law school, apply to get a 2L summer associate job. Getting a 2L summer associate job is important because law firms usually hire law students from their 2L summer associate programs so that these law students will work for them after they graduate law school.