Intellectual Property Forums (http://www.intelproplaw.com/Forum/Forum.cgi)

(Message started by: babak_khoramdin on Nov 18th, 2005, 12:59pm)

Title: need your advise to become a patent attorney!
Post by babak_khoramdin on Nov 18th, 2005, 12:59pm
I am 37 years YOUNG living in Canada with B.Eng. in Communication Engineering, MSc in Communication System Engineering and Ph.D. in Optical Communication from United Kingdom.  My previous work experiences have been mainly in research, design, and development in the fields of Fibre Optics, Electronics, and Telecommunication in either side of Atlantic Ocean (UK and Canada).

All these sound wonderful to impress girls in a party but the reality is that things are not that great when you get your pay check at the end of the month and you are constantly worried if you are going to get laid off.  Let’s face it, in the last 5 years I had to work for 3 different employers since they keep going bankrupt!  he hehe hehehe ... and I don’t enjoy driving myself nuts looking for a job again and again and again since as I am get older my patience is running thinner.  ;D
I have just checked the price for Mercedes-Benz S-Class S65 AMG Sedan and it is around $170,000 and I wonder how many of those engineers who have left messages in this forum, claim to make a good living drive this car?!!! ;)

Any ways, my questions are simple and straight forward as I have set my mind and heart to join the IP field.  I would very much appreciate any insight on the following questions;

It appears in Canada I can join an Intellectual Property firm as a technical consultant and become a patent attorney after a twelve-month mentorship training program as well as to complete the qualifying exam.

1.Does such a program exist in USA?
2.Can I obtain a similar position in USA if I become a patent attorney in Canada?

Considering these two countries have entirely different systems and becoming a Canadian patent attorney doesn’t do much in becoming a USA patent attorney; which of the following options would be the best?

1.Join the IP firm as a technical consultant and attend law school at evenings?
2.Start attending law school full time and get LLB or JD and forget about a full-time professional job for awhile?
3.What are the differences between LLB and JD?

If I am off the track entirely then please accept my humble apology. Your information to get me started in the right path is greatly appreciated.

I would like to leave my email address in case you feel shy to share your information in public. My email address:  

babak_khoramdin@hotmail.com

Allow me to take this opportunity to thank you in advance for your time and help.

Babak

Title: Re: need your advise to become a patent attorney!
Post by jimbob on Nov 18th, 2005, 5:43pm
Are you nuts!!!

12 months to become a patent attorney in Canada. It will take at least 3 years in the US.

Title: Re: need your advise to become a patent attorney!
Post by Isaac Clark on Nov 18th, 2005, 6:58pm
I think the OP is referring to the requirement for an apprenticeship before
taking the exam.  Rather than comparing the 12 months with the length of time required to get a law degree compare the 12 months apprenticeship with 0 months in the US.

The LLBs as given by Canadian law schools are pretty much the same level of education as JDs in the US.  In other countries the LLB is a first college degree.
In fact US law schools used to give LLB but switched the name of the degree to JD for prestige
purposes.  Some Canadian institutions have mulled over doing the same thing.

One obstacle to becoming a patent attorney in the US is that you have to become licensed in some state.  A few states
will allow a foreign educated attorney to take the bar exam, so you'd have to seek licensing in one of those states.
You can practice before the USPTO as a patent agent without taking a state
bar exam or being admitted to a state bar.

Title: Re: need your advise to become a patent attorney!
Post by Ray on Nov 18th, 2005, 9:37pm
:-/ In US, you don't need a law degree to practice before patent office.  You can practice as a patent agent. However, patent attorneys here created an impression that patent agents can not work as good as patent attorneys.  As a result, you are expected to go to law school, get a law degree, and become a patent attorey.

It is true that patent law is very complex.  Having a law degree helps a lot!

In Europe and other countries, you are called patent attorney even with out law degree.  I am not sure how the system works in Europe.  

With respect to Benz cars, many lawyers in US do have them.  In US, lawyer profession is generally high paying and scientist/engineer profession is generally low paying.  I don't know why!  

If you are a smart scientist/engineer, you can come up with inventions that would make $$$$.  We can help you and bill you.




Title: Re: need your advise to become a patent attorney!
Post by sk686 on Nov 19th, 2005, 3:36pm
I am a US citizen with an ABET accredited BEEE degree from the US, and several years of professional IT experience.

I am currently doing my LLB degree full time in Australia. I always wanted to become a patent lawyer, but high tuition rates in the US discouraged me. As an Australian resident and having a magna cum laude (high honors) in my BEEE, I was able to secure a government supported (HECS) place in the LLB program here in Australia. As a result the tuition is very minimal compared to the US.

Based on my research, LLB degrees from Australia, UK, Canada and New Zealand are directly recognized by several major states in the US, to sit their Bar exams. For example, New York and California. You can gain admission to several other States through reciprocal agreements once you gain admission to any US State Bar. Graduates of LLB programs from India, and some other countries, need to complete an additional LLM to be eligible to sit for the State bars of these States.

In Australia, and I think the same is true for Canada and Europe, you need to have a technical degree and pass a set of exams to become a Patent and/or Trademark Attorney. The exams can be substituted for University offered Master degrees in Intellectual Property Law, that cover the same subjects tested on the exams. Admission as a lawyer is not required in Australia to become a Patent and/or Trademark Attorney. However, most law firms prefer you have a law degree and admission as a lawyer. They even mention that in their ads.

My plans are to get my LLB, and a Masters in Intellectual Property Law from Australia, and then practise patent law either here (in Australia) or in the US. All that depends on what offers I get and what the pay is. Of course, I have to take and pass the USPTO patent bar exam and a State bar exam.

I think experience gained in Patent Law (both in prosecution and/or litigation) in Australia or Canada, will not go in vain in the US. As I think, they follow the same basics and in many cases, the same procedures.

The only obstacle I can think of is, some Patent Law jobs in the US specifically ask for ABA accredited JDs.

Comments are welcome!

Title: Re: need your advise to become a patent attorney!
Post by LJP on Nov 21st, 2005, 10:00am

on 11/19/05 at 15:36:58, sk686 wrote:
In Australia, and I think the same is true for Canada and Europe, you need to have a technical degree and pass a set of exams to become a Patent and/or Trademark Attorney. The exams can be substituted for University offered Master degrees in Intellectual Property Law, that cover the same subjects tested on the exams.



In Canada you do not need to have a degree to write the patent agent test. :o   The only requirement is that you have worked in the area of patent law and practice.

Additionally, the only way to become a patent agent in Canada is to pass the test administered by the Patent office.

Title: Re: need your advise to become a patent attorney!
Post by sk686 on Nov 21st, 2005, 8:54pm
I forgot to mention that in Australia, in addition to meeting the technical degree requirement, and either passing 9 topic exams or completing an Accredited course of study covering those topics, you also need to have at least 1 year experience in Patent Law, before being eligible to register as a Patent Attorney.

The 1 year experience requirement does not apply to those who want to register as a Trade Marks Attorney.

Details can be found here:

http://www.psb.gov.au/patreg.htm

http://www.psb.gov.au/tmreg.htm

Similar to Patent Agents in the US, Patent Attorneys in Australia can prosecute patents. But to represent clients in IP litigation, they need to have law degrees and be admitted to practice.

Also similar to the US, lawyers do not have to be registered as Patent Attorneys in Australia to do IP litigation. In practice, most lawyers involved in IP litigation in Australia, are not registered as Patent Attorneys.

But a number of registered Patent Attorneys in Australia are admitted as lawyers (Solicitors and Barristers) as well, and do both prosecution and litigation work. This is similar to US Patent Attorneys (who are registered with the USPTO and admitted to a State Bar).

Title: Re: need your advise to become a patent attorney!
Post by . on Dec 22nd, 2005, 10:37pm
Nice deal.  Wish I knew about the deals in Oz.

What you need is a bar admission to a state and admission to the USPTO to say you are a patent lawyer.

The way to do it is:

Come back to the US, do a one year LLM and take state exam.  Most palces requires US citizienship, NY does not.  Thus, most foreigners take the NY bar exam.  Take the PTO bar.  Presto.  Instant patent lawyer.  No US JD required.




on 11/19/05 at 15:36:58, sk686 wrote:
I am a US citizen with an ABET accredited BEEE degree from the US, and several years of professional IT experience.

I am currently doing my LLB degree full time in Australia. I always wanted to become a patent lawyer, but high tuition rates in the US discouraged me. As an Australian resident and having a magna cum laude (high honors) in my BEEE, I was able to secure a government supported (HECS) place in the LLB program here in Australia. As a result the tuition is very minimal compared to the US.

Based on my research, LLB degrees from Australia, UK, Canada and New Zealand are directly recognized by several major states in the US, to sit their Bar exams. For example, New York and California. You can gain admission to several other States through reciprocal agreements once you gain admission to any US State Bar. Graduates of LLB programs from India, and some other countries, need to complete an additional LLM to be eligible to sit for the State bars of these States.

In Australia, and I think the same is true for Canada and Europe, you need to have a technical degree and pass a set of exams to become a Patent and/or Trademark Attorney. The exams can be substituted for University offered Master degrees in Intellectual Property Law, that cover the same subjects tested on the exams. Admission as a lawyer is not required in Australia to become a Patent and/or Trademark Attorney. However, most law firms prefer you have a law degree and admission as a lawyer. They even mention that in their ads.

My plans are to get my LLB, and a Masters in Intellectual Property Law from Australia, and then practise patent law either here (in Australia) or in the US. All that depends on what offers I get and what the pay is. Of course, I have to take and pass the USPTO patent bar exam and a State bar exam.

I think experience gained in Patent Law (both in prosecution and/or litigation) in Australia or Canada, will not go in vain in the US. As I think, they follow the same basics and in many cases, the same procedures.

The only obstacle I can think of is, some Patent Law jobs in the US specifically ask for ABA accredited JDs.

Comments are welcome!


Title: Re: need your advise to become a patent attorney!
Post by franlorin on Dec 23rd, 2005, 8:55am

on 11/18/05 at 12:59:58, babak_khoramdin wrote:
It appears in Canada I can join an Intellectual Property firm as a technical consultant and become a patent attorney after a twelve-month mentorship training program as well as to complete the qualifying exam.

1.Does such a program exist in USA?
2.Can I obtain a similar position in USA if I become a patent attorney in Canada?


Babak, you may consider a distance-learning law course (i.e., online) offered by some California Law Schools to obtain a law degree in that state - you will need to eventually pass the bar exam in that state, of course - then, if you also pass the Patent Agent Exam offered by the USPTO, and you become registered, you can become a "patent attorney" - it will still take a few years, though

Fran Lorin
www.patent.0catch.com

Title: Re: need your advise to become a patent attorney!
Post by PiP on Dec 23rd, 2005, 9:38am
As per usual, Issac Clark's answer was excellent.

I think you should attend law school via a night program in the USA.  4 stressful years and you are done!  

I don't think there is any immense sense of security for attorneys as the focus becomes hours billed, etc.  But the paychecks are bigger and there is a lot of freedom with what you can do with the JD.

Title: Re: need your advise to become a patent attorney!
Post by Isaac on Dec 23rd, 2005, 9:42am

on 12/22/05 at 22:37:48, . wrote:
Nice deal.  Wish I knew about the deals in Oz.

What you need is a bar admission to a state and admission to the USPTO to say you are a patent lawyer.

The way to do it is:

Come back to the US, do a one year LLM and take state exam.  Most palces requires US citizienship, NY does not.  Thus, most foreigners take the NY bar exam.  Take the PTO bar.  Presto.  Instant patent lawyer.  No US JD required.


No state requires US citizenship to take the bar exam.  The Supreme Court has held that it is unconsitutional for states to have such a requirement.

Most states do require a JD/LLB from an ABA approved law school.  This is the obstacle faced by foreign educationed bar candidates.

It is additionally the case that the federal government can and does place limitations on foreigners being able to gain registration to the patent bar.  Non citizens have to have a suitable immigration status to take the patent bar.   If the immigration status does not allow permanent residency, the foreign applicant can only get a limited recognition to practice for an employer.   I don't believe the limited recognition allows you to call yourself a patent agent or a patent attorney.



Title: Re: need your advise to become a patent attorney!
Post by Reza Shamzi on Dec 23rd, 2005, 11:04am
<<I have just checked the price for Mercedes-Benz S-Class S65 AMG Sedan and it is around $170,000 and I wonder how many of those engineers who have left messages in this forum, claim to make a good living drive this car>>

Typical Persian.  It's all about the money to impress other Persians.  

Title: Re: need your advise to become a patent attorney!
Post by Wiscagent on Dec 23rd, 2005, 12:05pm
I have a car with almost 170,000 miles on it.  It starts every morning, even in sub-zero weather.

Is that better or worse than costing $170,000?   ;)

Title: Re: need your advise to become a patent attorney!
Post by Isaac on Dec 23rd, 2005, 12:23pm
I have a car that has about the 170K on it and is just about 15 years old.  Given that it's primary function is to sit in the "Park & Ride" lot and not get broken into while I'm at work, I don't see a $170k car serving quite as well.

Title: Re: need your advise to become a patent attorney!
Post by franlorin on Dec 27th, 2005, 8:27am
I have no car at all - public transportation gets me where I need to go, or, if necessary, a rental car

cars are really not that essential as personal possessions - depending on where you choose to live, of course

Title: Re: need your advise to become a patent attorney!
Post by sk686 on Dec 27th, 2005, 10:56pm

on 12/22/05 at 22:37:48, . wrote:
Nice deal.  Wish I knew about the deals in Oz.

What you need is a bar admission to a state and admission to the USPTO to say you are a patent lawyer.

The way to do it is:

Come back to the US, do a one year LLM and take state exam.  Most palces requires US citizienship, NY does not.  Thus, most foreigners take the NY bar exam.  Take the PTO bar.  Presto.  Instant patent lawyer.  No US JD required.


You do not need a US LLM to take the State Bar Exam if you have a 3-year LLB degree from Australia, New Zealand, Canada or UK. These degrees are fully accepted by the State Bar admission authorities that allow foreign law degree holders admission.

LLB degree holders from the Indian sub-continent and most other countries do need an additional US LLM to sit for the Bar exams of those States. It's best to contact the particular State one is interested in, directly.

Title: Re: need your advise to become a patent attorney!
Post by Isaac on Dec 28th, 2005, 4:12pm
The District of Columbia is an example of a jurisdiction where anyone with a law degree from a non ABA approved jurisdiction, including one from Australia, Canada, etc could qualify by obtaining an LLM from an a school with an ABA approved JD program.  Having a foreign LLB from a country with English common law  does not work in DC the way it does in NY.


Title: Re: need your advise to become a patent attorney!
Post by RJ on Dec 28th, 2005, 6:45pm
Iguess, you can get correspondence LL.B from Universities in U.K. or India.  In many countries, LL.B is a first degree.  All you need is a high school diploma to join these LL.Bs.

After your correspondence LL.B, you can join LL.M in U.S.  You don't need to take LSAT to get into LL.M in U.S.  If you get good numbers in your correspondence LL.B, you can even get into a top US law school.

I believe, it takes three years to get LL.B by mail (after high school?!) and then one year LL.M in US.  It is possible to get 125K law firm job when you are just 21 yrs old.

It is probably easier to get a job with LL.M from a top U.S law school rather than JD from tier 2 U.S law school (I am not sure!)

The question is whether you can compete with JDs in your law career! Law career is not a joke!
 

Title: Re: need your advise to become a patent attorney!
Post by sk686 on Dec 28th, 2005, 10:03pm

on 12/28/05 at 16:12:55, Isaac wrote:
The District of Columbia is an example of a jurisdiction where anyone with a law degree from a non ABA approved jurisdiction, including one from Australia, Canada, etc could qualify by obtaining an LLM from an a school with an ABA approved JD program.  Having a foreign LLB from a country with English common law  does not work in DC the way it does in NY.




True. But if you are a member in good standing of any other State bar for 5 years, then DC waives the exam, and you can directly get admitted to the DC bar. The same goes for States like Massachusetts, Michigan, Ohio, Vermont, Washington and Wisconsin. For some of these States like Washington, 3 years may be enough to waive the bar exam and get admitted to their jurisdiction.

Most foreign lawyers take the NY or California bar exams. Although the California bar exam is longer and some say harder, some lawyers have no choice but to take it, as that's probably the only jurisdiction that allows correspondence degrees for admission (although after some hurdles). From what I remember, New York does not allow correspondence degrees for admission.

The good thing is Patent law is Federal Law. So, admission to any State Bar and the USPTO will suffice to start working as a Patent Attorney.

There is a number of Patent Attorneys in DC law firms that are only admitted to NY or California, and the USPTO. These same attorneys can waive into the DC bar, should they find the need to, after 5 years.

So, if someone is holding a 3-year LLB degree (not by correspondence) from Australia, Canada, New Zealand or UK, and do not have the extra money or time to put into an LLM (which is not cheap), there are some good options available.

Note that English Common Law is practised in the Indian subcontinent, and some other countries as well, but their LLB degrees do not get the same recognition (LLM waiver from some States) as the above mentioned countries do. So, their lawyers have no choice but to invest the additional time and money in a US LLM, even to take the NY bar.

I am in no way against doing an LLM, as I myself plan to do one here in Australia (which by the way, has one of the best Intellectual Property LLMs in the world at the University of Melbourne). But not needing to do a US LLM to become a US Patent Attorney definitely makes it easier for me. As I do not have to worry about investing the additional time or money in a US LLM.



Title: Re: need your advise to become a patent attorney!
Post by Isaac on Dec 29th, 2005, 6:13am
I think you are 100% correct sk686.   If getting admitted to CA or NY gets you where you need to be, then the route you describe will work.   For many, but not all patent attorneys, being licensed in NY or CA only is not a huge obstacle.

I'll just add that a US IP LLM would not be very helpful in getting admitted to the DC bar.  DC requires 26 hours of bar topics course work, so what's needed in DC is one of those LLMs geared especially for international students.

One caveat about waiving in after practicing for X years.  The rules in DC and Mass are fairly liberal concerning waiving in.  They only require being licensed for some period of time.  However some states like Michigan only count time practicing in the jurisdiction in which you are licensed.  So if you have a CA license and are practicing patent law in NY, you may not be able to waive into Michigan even after practicing for the required time.


Title: Re: need your advise to become a patent attorney!
Post by IPRLVR on Jan 2nd, 2006, 6:06pm
Actually, with regards to the Federal Practice issue. most firms are getting very strict.  When I joined my present firm, I had to get admitted to the DC bar within three months.  The line between practice of law in a State and Federal patent law is just too thin.  For instance, an assignment is a contract - arguably state law.

Title: Re: need your advise to become a patent attorney!
Post by Isaac on Jan 2nd, 2006, 8:37pm
I don't know what the extent of that trend is.  I still see associates at DC firms listed as "supervised by X" when the attorney is not licensed in DC.   It does strike me as an inflexible arrangement.  

Certainly at large firms attorney's may get involved in activities that are not strictly practice before the patent office and thus would require being licensed in the state being practiced in.

But you picked an interesting example.   Very often the assignment that gets recorded at the patent office is wholly a boilerplate document reciting some consideration and the fact of the transfer.  The document is used simply for the purpose of recording the assignment at the PTO, while the details of the actual agreement is memorialized elsewhere (such as in the employment contract or other separate agreement).   Without getting into the details, I'd suggest that at least arguably, a non attorney to practice before the PTO can record such a document when the transfer is uncontested following the precedent in Sperry v. Florida.  



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