It’s a well-known fact that a legal education, while valuable (and essential to becoming a lawyer), doesn’t actually prepare you for a law firm career in a practical sense. Law schools largely follow very traditional curricula, with the first year of law school comprising highly theoretical subject matter; hence the purpose of law school often being described as “teaching you how to think like a lawyer.”
Law firms know this, and they are prepared to educate new attorneys on the job. For the most part, BigLaw attorneys have few to no expectations that junior associates will walk through the door with useful background knowledge or experience. But there’s one exception: patent prosecutors. This highly specialized career path requires a specific background not common among attorneys, which also makes patent prosecutors hot commodities.
Read on to learn more about this unique niche in the legal industry—is it for you?
What is a Patent Prosecutor?
If you’re not familiar with what a patent prosecutor does, your guess is probably wrong. When most of us, even lawyers, think of a “prosecutor,” we think of the attack side of a lawsuit. But a patent prosecutor doesn’t attack patents. Quite the contrary.
Just to make sure we’re all on the same page, let’s very briefly review patents.
A patent is “an exclusive right granted for an invention, which is a product or a process that provides, in general, a new way of doing something, or offers a new technical solution to a problem.”
Patent prosecution refers to the writing, filing and handling of patent applications. It encompasses the patent examination process from initial filing to the grant, including all the back-and-forth responses with the US Patent and Trademark Office (USPTO).
The process for obtaining a patent, in a very small nutshell, consists of 1) researching whether an idea is patentable, 2) preparing and filing a patent application, and 3) convincing a patent examiner (employed by the USPTO) that your patent should be granted. This third stage is what is formally known as “prosecution.” That being said, a patent prosecution attorney is involved in all three of these patent stages, as well as any necessary appeals and ongoing patent maintenance.
What Makes the Patent Prosecution Path Unique?
As noted above, patent prosecution is the only legal field in which having particular background knowledge and experience is not only helpful, but necessary. This distinction exists because patent prosecutors, in addition to passing a U.S. bar exam like any other lawyer, must also pass the Patent Bar Exam in order to be licensed to practice before the USPTO. And while the patent bar is largely procedurally oriented, testing an applicant’s familiarity with the rules and procedures of the USPTO, eligibility is not.
The USPTO imposes three requirements on any applicant for registration: 1) Good moral character, 2) legal, scientific and technical qualifications necessary to render valuable service, and 3) competence to advise and assist patent applicants in the presentation and prosecution of patent applications.
The true delineator in this list is the second requirement regarding scientific and technical qualifications. To meet this requirement, an applicant to the USPTO must possess a bachelor's, master's, or doctoral degree in a technical subject recognized by the USPTO, including biology, chemistry, computer science, most engineering disciplines, and physics. If you do not possess the requisite technical background, you cannot even apply to take the patent bar.
(That being said, if you have an accepted technical degree, you can take the patent bar even before going to law school. This is the route to becoming a patent agent, a role similar to a paralegal but more specialized.)
Looking at the process for obtaining a patent, the reason for this requirement becomes clear. In order to determine whether an idea is patentable, a patent prosecutor must research “prior art,” which is any information that was publicly disclosed or available prior to the effective date of a patent application filing. If you took IP, you may recall that an idea is not patentable unless it is novel and non-obvious; an idea is only patentable if it meets these criteria. A patent prosecutor must be familiar enough with technical concepts to discern even small differences and details in both concepts and executions, draft applications with specificity, and argue these nuances before a patent examiner.
So, all Patent Lawyers are Also Scientists and/or Engineers?
Well, no, not necessarily. It depends on whether we’re talking about patent PROSECUTORS, or patent LITIGATORS. If we hadn’t already explained why a patent prosecutor isn’t what you might think, these two different practices might sound confusingly similar. Fortunately, now we know better.
Patent litigation is pretty much like any other type of litigation, just in the context of patents. Patent litigators represent clients in disputes over patent infringements, which are litigated in US federal courts. This is not to say that a technical background wouldn’t be an asset for a patent litigator, but the reality of patent litigation—like litigation in many other areas—is that the subject matter itself is secondary to familiarity with the Federal Rules of Civil Procedure and the various stages of litigation.
Why are Patent Prosecutors “Hot Commodities,” Like we Said Earlier?
The answer to this question can be found in an entirely different discipline: the world of economics, and more specifically, the law of supply and demand. Something becomes a “hot commodity,” so to speak, when supply is low and demand is high. Such is the case with patent prosecutors.
To be slightly more precise, it’s not that demand for patent prosecutors is through the roof. Innovation and technology fuel a steady and consistent demand for patents (and attorneys able to prosecute them); the bottleneck is on the supply side, and several culprits are to blame.
One reason for the shortage is simply that most students studying science or engineering do not have a legal career on their radars. Most probably don’t even know that patent prosecution is, well, a thing, much less a potentially lucrative career path. Basic informational campaigns could certainly help increase supply, except for a bigger hurdle: Law schools.
More specifically, law school admissions. And to be even more specific, the problem really stems from law school rankings, and the numbers that go into them. US News (which has recently been at the center of turmoil surrounding its own rankings system) measures “selectivity” as approximately 20% of its rankings, one aspect of which is undergraduate GPA.
Historically, undergraduate science and engineering courses grade far more strictly than humanities subjects, which increasingly have fallen prey to grade inflation (for reasons we won’t explore here). As a result, engineering students and Bachelor of Science recipients tend to graduate with comparably lower GPAs—which makes them less attractive, overall, to law schools, which prioritize high GPAs as an important element of boosting their rankings.
The unfortunate, and frankly silly, part of all of this is that we’ve just established how highly employable these students are in the legal industry, and employment rates also go into law school rankings. Ask any law school career counselor; they’ll tell you that the small handful of 1Ls with technical backgrounds usually have offers of permanent employment before they can even smell their 2L year. Still, the problem persists.
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So, do you have a technical background, or do you know someone considering STEM and career paths? The patent prosecution path can be a fantastic option. As the Gershwin brothers once said, “Nice work if you can get it.”
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