If you are interested in a broad range of topics and cutting-edge technologies; enjoy working within a team of professionals with different expertise; can communicate clearly and write concisely; and enjoy researching publications and patents; this may be a career for you! You will need project management skills and a willingness to learn and adapt. (+/-)
Typical career paths in patent processing include:
- Patent agent or technical specialist with law firms, research institutions, industry, or in independent practice
- Patent examiner with the US Patent and Trademark Office (USPTO)
- Licensing Manager with technology transfer offices of research institutions, or government
- Business Development Manager with industry
- Patent attorney with law firms, research institutions, government, industry, or in independent practice.
There are three components/skillsets that merge in these careers: science, law (patents and intellectual property) and business (product development/commercialization). It would be important to consider if you would like to eventually work on the business side or the legal side and make a plan for your training so that you have two of the three skill sets. For example, if you are interested in law, you could become a patent agent (i.e., pass the patent bar exam) or a patent attorney (i.e., get a law degree); if you are interested in business you could get an MBA or show experience in negotiating deals, and forming alliances and partnerships. Passing the patent bar may also give you a leg up on the business side.
However, you do not need additional degrees to get started! Your PhD is enough to allow you to get hands-on experience in a tech transfer office, a company, a law firm, or the USPTO. Several firms pay for their employees to go to law school. Additionally, after working at the USPTO for 4 years, you may apply for a Patent Agent Registration number, which would allow you to do patent prosecution without having to take the patent bar exam.
Examples of tasks you may perform:
- Working for a technology transfer office in a research institution, you may assess inventions, make patent recommendations, negotiate transactional agreements, and/or work on marketing.
- In a law firm, you could work on patent prosecution (drafting and submitting applications to the USPTO initially and subsequently prosecuting the patent applications), licensing, valuation, freedom to operate, or even patent litigation.
- If you work directly for a company, your role would be to protect the company’s discoveries by drafting and prosecuting patents. You may also be involved in identifying technologies that the company could in-license or you may build R&D partnerships, potentially involving out-licensing of your company’s technologies.
Resources (+/-)
Training (+/-)
Professional Societies and Networking Groups (+/-)
A day in the life of.... (+/-)
Brian Coblitz, Ph.D
Licensing Associate, Office of Technology Transfer, The George Washington University
“A technology transfer office performs so many activities that people in a small office rarely have a typical day. A lot of time is spent communicating with people (inventors, attorneys, businesspersons, administrators, other technology transfer offices, and the government). The rest of the time will be doing research (patent related or marketing), managing patent prosecution, or editing agreements. This is a job for someone who is flexible and can deal with the unexpected. It is important to remember that you are providing a service to the inventors, part of which means providing a lot of education about the commercialization process. The highlights are when an inventor shows you the next hot technology before anyone else, when you put an invention on the path to commercial success, or when you help bring in money to support more research.”
Mythili Nadella, Ph.D., J.D.
Associate, Sterne, Kessler, Goldstein & Fox, P.L.L.C.
“An IP attorney’s work from one day to the next can be described as anything but typical. One day I may be drafting a patent application for a solo inventor or a corporate client. The next day I may be drafting an opinion on whether certain claims in an issued patent are valid for various legal reasons. Fortunately, most IP attorneys are able to craft their work experience and career around projects that they are personally drawn to. I currently work on a mix of patent prosecution and litigation. So, on any given day I will be submitting paperwork to the USPTO or a foreign patent office with the aim of procuring a patent on my client’s behalf. From time to time, I will also draft legal documents to be submitted to district courts or the USPTO in the course of patent litigation. I have also contacted numerous scientific experts to discuss their views on various technologies and the validity of patent claims in dispute. To be a successful IP attorney, one must be able to work well in teams and communicate effectively.”
We thank Brian Coblitz, Mythili Nadella, and Seth Zonies for their assistance in compiling the above information.
