Patent Your Career
As the patent boom continues unabated, career opportunities abound for engineers---no law degree required.
01 January 2007
If you are looking for a position that exposes you to cutting edge technology without becoming pigeon-holed into a specific technological field, then a position in the ever-growing field of intellectual property (IP) support might be for you. Law firms, businesses, and government entities are hiring engineers in droves due to the patent filings boom over the last decade.
The number of patents filed each year has almost doubled since 1995,1 and there is no indication that this trend will end anytime soon. What does this mean for the engineering job market? It means that IP job opportunities are available like never before.
Thousands of Engineers Needed
Increases in the demand for patent work hit the legal community first. Most patent firms as of late have received waves of new invention disclosures from inventor clients---normally presented by corporate entities seeking patents.
Once received, the patent practitioner must, as soon as possible, review the disclosure information and grasp an understanding of the technological advances for which patent protection is being sought. This requires not only good technical abilities but also analytical skills.
Depending on the subject matter, this process will also likely involve significant communication with the inventors. Typically this is facilitated by having a disclosure meeting in which the inventors and patent practitioners openly discuss the invention and then come to an understanding with respect to what is to be patented.
Many firms, however, lack the personnel required to handle the current client demand for patents, thus firms are looking for help. In the past, this was a manageable problem because the firm in need could simply hire another patent attorney, but there is currently a patent attorney shortage. Because qualified candidates are hard to find, they usually can demand a premium.
This has led the more progressive firms to hire non-lawyers to perform tasks that do not require a law degree. Participation in the patent process is not as exclusive as you might think. United States Patent and Trademark Office (USPTO) rules allow qualified non-attorneys to practice before the office (e.g., file patent applications, respond to office actions).2 These non-attorney practitioners are referred to as "agents." Agents must have a technical degree and also pass a challenging exam, but once licensed can conduct any USPTO business related to patent prosecution just like an attorney practitioner.3
Because of this, many engineers will sit for the exam and obtain an agent's license before seeking an IP position with a law firm. For the right candidate, though, many law firms will hire unlicensed engineers, train them, and pay for them to sit for the bar exam, all in the furtherance of getting more completed patent applications out the door for needy clients.
The present opportunities available to engineers in the patent legal community are unprecedented.
Communication Skills Highly Valued
After the legal community takes the initial burden caused by the increase in demand, the government takes the next hit. Each new patent application received by the USPTO requires an examiner to do an extensive search of existing publications and other evidence, and render a decision about whether the claimed invention is patentable.
Examiners determine patentability by searching for publications and other evidence relevant to what the invention is claimed to be. Once the search is complete, the examiner must be able to effectively communicate with the attorney or agent on the other side of the process.
This process requires people who have the scientific knowledge needed to understand the invention, and the analytical skills to determine patentability. It has proved difficult for the USPTO to find people who have this skill set.
Because of this, the USPTO has begun massive, sustained efforts to hire qualified individuals. The office hired about 1200 new examiners last year4 and intends to hire another 1200 this year. Examiners are needed in almost every technological area, but highlighted areas of need include optical and computer-related inventions.
If the recent past is any indication, some new hires will have actual on-the-job engineering experience, but as many as 75% will be hired straight out of college undergraduate programs.5 One reason for the lack of emphasis on experience is that the USPTO trains examiners on the job. The office has an excellent training academy that initially teaches new examiners patent law and then mentors them along with their eventual supervisors.
One incentive the USPTO has provided to attract and maintain examiners has been to dramatically increase salaries. Because of this, and because of professional, lifestyle quality, and other reasons, many engineers make examining a lifelong career. Others ultimately leave and enter into private practice of some sort.
Patent litigators are also significantly impacted by the patent boom. More patents means more litigation. This increase affects not only attorneys, it also contributes to the demand for non-attorney technical assistance in law firms and corporations. Actual or threatened litigation normally requires analysis of numerous patent publications, and firms are now hiring non-attorneys to help tackle the scientific portions of the process.
Similarly, corporations that are continually involved in patent litigation often employ engineers for the sole purpose of reviewing patents to avoid future infringement entanglements.
Almost certain is that the boom's added burden to patent prosecutors, the USPTO, and litigators will continue to create novel opportunities for engineer candidates.
However, you are not likely to learn of them by checking the job board at your university or other traditional means. Because the IP career bucks convention, your search will likely involve navigating the USPTO website (www.uspto.gov) or attending IP-specific job fairs.
For engineers frustrated by the ordinary, though, the added effort might be the beginning of a more rewarding professional life.
IP Career Course
For more information on a non-traditional career in intellectual property (IP), bring Honeyman's course titled "Off the Beaten Path: Career Opportunities for Engineers in the Patent Boom (Law Degree Not Required)" (WS827) to your workplace. The In Company course will reveal the many IP career opportunities for engineers, and practitioners in the field will provide tips for entering the field. Learn more about the course at spie.org/education/honeyman.
1. Source: USPTO Patent Technology Management Division.
2. 37 C.F.R. § 11.5-6.
4. Running from 1 October through 30 September in both instances.
5. "The USTPO Needs More Patent Examiners With Technical Skills; Diversity/Careers;" Dec. 2002/ Jan. 2003. Article by Kimberly Walton, USPTO Deputy Chief Administrative Officer.
Marshall Honeyman is a patent attorney in Overland Park, KS, where he is of counsel to the law firm of Lathrop and Gage, L.C. Previously, he worked at the USPTO as an associate solicitor, and he served as a USPTO patent examiner, specializing in the examination of inventions relating to illumination technologies.