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(Message started by: nfromdenver on Apr 1st, 2005, 2:32pm)

Title: getting your foot in the patent law door
Post by nfromdenver on Apr 1st, 2005, 2:32pm
I am hoping to get some advice from you seasoned patent agents/attorneys out there.  i have a phd in molecular biology and worked as a biotech patent examiner at the uspto for a year. unfortunately, i had to relocate to a VERY small biotech market due to personal reasons.  i began calling law firms in the area about 2 months before moving and realized how small the biotech market was. while there are some firms doing biotech work, i have had no success in finding a position. i am currently working part-time in a non-patent position (adjunct biology professor) and interning at the technolog transfer office of a fairly well-known university. unfortunately, the university is not looking to hire any time soon. i have also applied to take the patent agent exam. i have decided that i want to pursue a law degree and have resigned myself to applying for the 2006 academic year at the state university and paying my own way through - despite the financial hardship this will bring to my family. my question:  am i going about this the right way? am i wasting my time at the tech transfer office or should i look for a part-time, even clerkship, position at a local law firm, regardless if they practice ip law or not? relocating is not an option for the next couple of years, so i'm wondering how to optimize my experience here and whether i have any other options.

any advice would be greatly appreciated.


Title: Re: getting your foot in the patent law door
Post by Patent_Type on Apr 1st, 2005, 5:13pm
Law firm experience will be more highly regarded by future employers than will time spent at the TTO.  Bite the bullet, take out some loans, and tough it out for your first year.  With your credentials, you should be able to stand out from the summer associate crowd and find some kind of law firm work.

Also -- give Jennifer McCallum (in Boulder) a call.  She is an experienced biotech practitioner, has a good handle on the local market and can give you the best advice.

Best of luck.


Title: Re: getting your foot in the patent law door
Post by guest on Apr 1st, 2005, 5:23pm
Just to respond to PT's negative view of a working for the PTO - the following is taken from the website of a very large DC firm.

"Former Patent Examiner Experience: We draw on the experience of our patent attorneys that are former patent examiners to understand how to most efficiently prosecute patent applications. For example, we rely on their Patent Examiner experience in determining when and how to conduct personal interviews with examiners assigned to examine applications that we are prosecuting. Our experience has been that in many cases, interviews conducted properly can resolve issues quickly."

Title: Re: getting your foot in the patent law door
Post by E24 on Apr 1st, 2005, 6:30pm
I would rework your resume to show how much you know about prosecution. It is a hands-down fact that with your 1 year of experience as a biotech examiner you will likely understand/know more than most first and second year associates  when it comes to prosecution.

A first or second year that does litigation will likely know more than you regarding litigation. So use  what you have.

Good luck

Title: Re: getting your foot in the patent law door
Post by DB on Apr 1st, 2005, 8:24pm
Guest..I think you misread PT's comments...he/she wasnt describing the PTO but rather the TTO (Tech Transfer Office).  

I think PT's advice is pretty sound...bite the bullet, go to law school and do all you can to land a summer position at an IP firm after your first year..given your experience you should be able to land one....however what should you do now?

Preparing for the LSAT and taking the patent bar seem reasonable...but are you going to stop trying to land a job in the meantime?  Even if there are only a few biotech IP firms in the area, I would continue to try to network and try to land a job at a firm...wouldnt it be great if in a few months you do end up getting an interview at a local IP firm, land a job, and them have THEM pay for your way through school? Also, by the tone of your email, it doesnt seem like you are currently doing something you really enjoy.....

I would think that working at the TTO you would get a chance to talk to people who may know more about the IP players in the area...perhaps from them you can get some info that could get your resume seen by decision-makers?  Have you considered trying to find an IP job at a biotech company?

Either way..Good Luck!

Title: Re: getting your foot in the patent law door
Post by nfromdenver on Apr 2nd, 2005, 12:07pm
thanks for the good advice and thank you, pt, for the contact. i will definitely contact her.  my continuous calls has landed one contact - i have a lunch meeting next week with a partner at the most visible biotech firm in the area and she's offered to bring along some younger associates who would be able to give me some input. this firm does utilize tech advisers, but they're not hiring right now.  she even made a comment that they're having a hard time finding enough work for their employees - a scary concept.  i phoned every single law firm and almost every single biotech company in the area i could find when we first got here (which was feasible considering how little there is here) and while everyone was incredibly accomodating, there just really wasn't anything out there that offered a paycheck, hence the internship at the tto.  should i offer my free services to a law firm instead?  

Title: Re: getting your foot in the patent law door
Post by nfromdenver on Apr 2nd, 2005, 12:24pm
thanks for the advice, db.  i had wanted some experience at the tto to see what life is like in that sort of office.  unfortunately, other than some patentability analysis cases i've worked on, most of my internship experience has been marketing and licensing. cold calling companies trying to market university inventions, while somewhat interesting, doesn't seem to be something i need to learn and i feel my experience at the pto is being wasted doing this. patent prosecution is outsourced to local firms, even provisionals, and the office has no interest in bringing any of that work internally.  so, i'm not getting any experience prosecuting, which i think is important.  i feel there's a mentality and motivation with which examiners approach patent prosecution that is vastly different from what i assume an attorney would have and i'd like to be exposed to this.  

i will continue calling firms and passing my resume around. the director at the tto has offered to give me a list of contacts of local attorneys the office works with. i guess i just have to stay on top of things and continue studying for the agent exam and LSAT.

Title: Re: getting your foot in the patent law door
Post by niczon on Apr 12th, 2005, 7:31am
I have to say that the best way I've found to get an agent position if your trying to get into the field is via lawschool. Not for the education, but for the contacts.

Many firms don't even advertise their openings. They hire through networks and "word of mouth" almost exclusively.  By the same taken, most of the evening students work at law firms in the day-time and go to class at night. These people aren't only available, but actively looking to network. If you act friendly and chat for a while, usually someone will know someone who is looking for someone, somewhere.

It sounds twisted, but it does work. Plus having no experience means you need some way to get your foot in the door, and having a reference on the inside helps.  At the very least they know you've been pre-screened, somewhat.

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