Description: The basic activities of patent law include ‘prosecution’, relating to the examination process before the United States Patent and Trademark Office (USPTO); ‘litigation’, or the protection in court of the rights of inventors as they relate to patents; and ‘licensing’, which relates to transfers of patent rights. These activities are carried out, to varying extents, by technical specialists, patent agents, and patent attorneys.
The most common point of entry for those with PhD or MD degrees is at the level of a patent agent. A patent agent is someone who has obtained a license to practice before the USPTO by passing the patent bar. Patent agents are most commonly involved in prosecution and licensing. Patent agents are not attorneys so are prohibited from practicing law beyond those activities that are incident to the preparation and prosecution of patent applications. The difference between a patent agent and a patent attorney is that the latter, in addition to having passed the patent bar, possesses a law degree and has passed a state bar exam. Patent attorneys are involved in every aspect of patent law, with a prominent involvement in contracts, performing due diligence, and litigation. Patent agents and patent attorneys are employed by universities, law firms, and R&D-based companies. Finally, the USPTO employs patent examiners, who are hired for their technical expertise and, given training, are responsible for reviews of patentability.
Advantage of Advanced Degree: Patent law as it relates to universities, biotechnology, and the pharmaceutical industry, requires a very high degree of sophistication in specialized components of the life sciences. Many employers require a PhD degree for employment as technical specialists or patent agents. If not required, the PhD degree nonetheless provides an advantage of intellectual wherewithal attractive to employers and clients. A PhD degree is not required of a patent attorney. Those who have a PhD, however, find it provides them a singular edge.
Key Competencies: Competencies intrinsic to scientific pursuit are of course essential. Much is made of specialized technical knowledge, but a demonstrated versatility among different scientific disciplines provides a considerable advantage. Highly cited, as well, are competencies relating to excellence in written and verbal communication and to teamwork.
On-campus Student Organizations: None
First Steps: The most practical step beyond evaluation of printed and web-based resources is, as almost always, contacting alumni who work in the field. There are no on-campus student organizations devoted specifically to patent law, however Penn’s tech transfer may be used to some purpose, at the very least to direct you to patent law firms with whom it works. As noted above, patent agency is generally the point of access for those holding PhD degrees. It is not uncommon for companies or law firms to hire those with PhDs into positions as technical specialists in advance of, or preparation for, the patent bar exam. Careful consideration should be given the decision to enroll in law school as a means of becoming a patent attorney given the time and expense.
- Katie Cottingham, Careers in Patent Law | Science Careers
- Robert Hagan, Getting Started with Patent Law | Bio Careers
- Nathan Machin, From bench to bar: Careers in patent law for molecular biologists. Mol. Biol. Cell, 24: 2073–5, 2013.