Careers in Patent Law Jeffrey Sunman, Ph.D. Patent Agent Daniel O’Brien, Ph.D. Patent Attorney Alston and Bird LLP

Patent Law – Good for you?  Office job  Reading and writing science – A LOT  Deadline driven/goal oriented  Excellent communication skills  Enjoy talking with scientists about their projects and inventions  Working with other attorneys/agents, clients, and foreign associates  And writing…a lot

What is Patent Law?  Obtain and protect intellectual property for inventors, universities, companies, etc.  IP = patents in the U.S. Patent and Trademark Office and international patent offices.  Incredibly valuable!

Main Areas of Patent Law  Biotechnology  Chemical  Engineering  Biomedical, chemical, electrical, mechanical  Software

Patent Law – Getting in  Patent Attorney  Patent Agent/Technical Specialist  Patent Examiner  Technology Transfer  Different requirements and goals

Patent Attorney  Traditional route  At least an undergraduate degree in science/engineering/computers  Ph.D. essentially required in biotech.  Attend law school – time and $$$  Pass state bar exam and the USPTO Registration Exam (i.e., the patent bar)

Patent Attorney – Prosecution vs. Litigation  Prosecution:  Work with inventors and clients to prepare and file U.S. and foreign patent applications  Work with (aka, argue with) U.S. and foreign patent examiners to prosecute applications, obtain patents

Patent Attorney  Litigation:  After patent is allowed  Court!  Sue others for patent infringement  Defend clients from infringement suits  Defend the validity of client’s patents

Patent Agent/Technical Specialist  Same degree requirements  Ph.D. essentially required in biotech.  Do not have to attend law school  Can work ~1 year prior to taking patent bar as technical specialist  Pass the patent bar = patent agent  Direct route from grad school or post-doc

Patent Agent  Only preparation and prosecution of patent applications  No litigation, no court  Work can be essentially the same as patent attorney doing prosecution  Cheaper hourly rates = better value

Attorneys and Agents  Where they work:  Law firms – large firms or IP boutiques  In-house – company, university, etc.  Career path and ceiling:  Attorneys – partnership in firms, corporate ceiling is high  Agents – Once an agent, always an agent

Attorneys and Agents  Salary:  Attorney – position based, but very high to start, $$$ in upper ranges  Agents – less than attorneys, lower ceiling  Comparably very good, increases with experience

Attorneys and Agents  Hours and Requirements:  Attorneys  More hours, higher billing requirements, pro bono, client development, etc.  Agents  Fewer hours, lower billing requirements, few additional responsibilities outside of prosecution work

Patent Examiners  USPTO  Based in Alexandria, VA  Offices in Detroit, Dallas, Denver, and Silicon Valley  Examine (!!!) patent applications  Determine novelty and obviousness of the invention  Draft Office Actions detailing rejections to the application and claims  Much reading and writing in your office, though mobile.

Patent Examiners  Federal employees  Trained to examine patents by the USPTO in two month course  After period of time, do not have to take the patent bar to be a patent agent

Patent Examiners  Starting salary based on education level, need for that type of examiner  Supervising examiners, management, good salary and government benefits  Hire sporadically – none right now

Technology Transfer  Universities and companies  Coordinate with faculty/staff and outside counsel to obtain patents for inventions  Work with outside groups to license technology to raise $$$  UND Office of Intellectual Property Commercialization & Economic Development (IPCED)IPCED

What to do, What to do…  Pass the patent bar  Experience with writing and editing  Attend IP seminars, symposiums, events  Join patent law organizations  NETWORK  In-person – should come naturally to introverted scientists  Informational interviews  Goal : Separate yourself from the stack