Another experience question

[Examinerguy]

One of my co-workers is finishing his last year of law school while working at the PTO. He has been at the PTO for 5 years. This topic has probably been discussed about 14,000 times but nonetheless I thought I would ask it again.

If your firm was hiring and had two candidates to choose from:

Person A) Graduated from Harvard Law and has a Masters in Computer Engineering, no IP experience.
Person B) Graduated from George Mason Law and has a Bachelors in Computer Engineering with 5 years of experience at the PTO (he is a primary).

Which one assuming all else equal (GPAs, etc.) would you hire? Thanks.

[lhfan]

As an examiner, A looks a whole lot stronger to me.  Harvard and MS more than make up for a few years of PTO experience.

[Examinerguy]

Any attorney opinions?

Option B is a primary with 5 years experience. He isn't just a junior examiner who stuck around for 2 years.

I'm not an attorney, but I would trust that the examiner would have a larger chance of sticking around while being less of a sunk cost for the firm. The guy with no IP experience might hate it and quit after 6 months...the examiner knows at least most of the field. But obviously, I am more biased and would love to hear other opinions.

[Jim_W]

My hunch would be that the examiner is more likely to know exactly what the work consists of and to know what he is getting in to. I would expect him to be productive sooner and less likely to decide he doesn't like the taste of pie during the first round of the contest. With the Harvard guy, I guess it would depend what sort of experience he managed to accumulate before graduating. If he took the initiative to prepare himself for his career and you need an EE guy, he would obviously be a worthwhile candidate to look at.

I don't think that school names matter that much unless we're talking about major differences like Duke v FAMU or something similarly outrageous. But GM is not exactly a shit-tier law school. It's really solid and I don't think you'd be giving up much by taking a GM candidate over an HLS candidate. At least not on principle. 

[DogDayPM 9er9er9er]

Any attorney opinions?

Option B is a primary with 5 years experience. He isn't just a junior examiner who stuck around for 2 years.

I'm not an attorney, but I would trust that the examiner would have a larger chance of sticking around while being less of a sunk cost for the firm. The guy with no IP experience might hate it and quit after 6 months...the examiner knows at least most of the field. But obviously, I am more biased and would love to hear other opinions.

I agree with you except I don't know how to measure the value difference between BS/MS in your discipline.  For my answer I'll pretend it was ME or ChE (where as it relates to IP practice I don't see a huge difference between an MS v. BS) and in that case I have to completely disagree with lhfan.  I'd take a 5-year examiner from a decent school over an HLS grad with no IP grounding, and for the same reasons you and Jim_W have already mentioned. 

But I'll also mention a bias I've seen in hiring committees re examiners.  After about 8 - 10 years examining experience, there's a worry that they won't make good prosecutors/can't readily "switch" from anti-patent to pro-patent.  (Especially lately examiners are viewed as being or as having been forced by circumstances to become very "anti-patent", as I'm sure you've noted from comments here and over at Patently-O).

[UVAgal4]

I would go with B too.
Just because someone graduated from a school, doesn't mean they know how to write patents, how to deal with Office Actions, etc.
B would be much more quickly up to speed.

[bald & chained]

So I am an attorney in one of those big firms, so here goes. The answer depends on the position the person is seeking.  If you are talking about patent lit, then the Harvard guy will likely win hands down.  Most firms that do serious patent litigation are usually credential whores and substantial PTO experience is not that useful for litigation anyways.  Certain clerkships, on the other hand, are highly valued. If this is for a prosecution position, then again it would depend on the caliber of the firm. Large firms like to hire grads from top schools, while prosecution boutiques are less prestige-conscious and might prefer someone with patent experience, especially if there is a match in tecnology.  And you are right, this has been asked and answered many times over.

It is also important to look at the technical pedigree, which may offset a lower law school ranking - if the GMU guy went to Stanford, while the Harvard guy went to Devry, then the Harvard guy doesn't look so good in comparison anymore.

All other things being equal, I think my firm would usually pick the Harvard guy for the 1st year position rather than the GMU guy. Is that correct? I dunno, but we have lots more Harvard associates than GMU associates.  Btw, the same GPA in GMU and Harvard is what, like top 15% and bottom 15%, respectively? 

[Examinerguy]

All other things being equal, I think my firm would usually pick the Harvard guy for the 1st year position rather than the GMU guy. Is that correct? I dunno, but we have lots more Harvard associates than GMU associates.  Btw, the same GPA in GMU and Harvard is what, like top 15% and bottom 15%, respectively? 

I agree with you on the name status. However, there are tons of examiners who went to amazing law schools at the PTO (they prefer work-life balance over money). After awhile, they forget 90% of the stuff they learned in law school and replace it with USC 102,3,112,101, objections, random IDS knowledge, docket management, etc. etc. So although the Harvard guy might have learned a lot, he won't use any of it for prosecution purposes. In fact, often times I speak with attorneys who ask me for advice/procedural matters on how to prosecute.

Also, after looking at and reading thousands and thousands of applications I think examiners have a decent feel for, on average, how claims are written, which claims are successful and which are not. They also have one thing that I think is invaluable: the ability to know what the average examiner wants. Trust me, by the time one is a primary examiner they have talked ad nauseam with other examiners finding out what they look for; both in form and in emotional pride (unfortunately).

[Forrest Gump]

It seems like you want people to tell you what you want to hear.  If someone gives you their answer, why restate why you disagree?  You made your opinion clear in your first post, and now others are offering different opinions.



Anyway, I tend to agree with the general assessment.  For litigation, the Harvard guy wins hands down.  For prosecution, it will depend on the firm.  Small to medium-sized boutiques will likely take the Examiner first.  Prestige whores will obviously go with the Harvard snob.

[bald & chained]

All other things being equal, I think my firm would usually pick the Harvard guy for the 1st year position rather than the GMU guy. Is that correct? I dunno, but we have lots more Harvard associates than GMU associates.  Btw, the same GPA in GMU and Harvard is what, like top 15% and bottom 15%, respectively? 

I agree with you on the name status. However, there are tons of examiners who went to amazing law schools at the PTO (they prefer work-life balance over money). After awhile, they forget 90% of the stuff they learned in law school and replace it with USC 102,3,112,101, objections, random IDS knowledge, docket management, etc. etc. So although the Harvard guy might have learned a lot, he won't use any of it for prosecution purposes. In fact, often times I speak with attorneys who ask me for advice/procedural matters on how to prosecute.

Also, after looking at and reading thousands and thousands of applications I think examiners have a decent feel for, on average, how claims are written, which claims are successful and which are not. They also have one thing that I think is invaluable: the ability to know what the average examiner wants. Trust me, by the time one is a primary examiner they have talked ad nauseam with other examiners finding out what they look for; both in form and in emotional pride (unfortunately).

I suppose the whole point of this thread is to somehow make yourself feel better by pretending that Examiners are like cognac - the longer you are bottled up in the PTO, the better. But you, my friend, are extremely misinformed about ... pretty much everything.  First, I very much doubt that PTO has "tons" of examiners who went to "amazing" law schools, unless you define any of the DC-area law schools as "amazing."  We do have lots of schools that are pretty amazing in charging as much as Harvard, but providing far fewer recruiting opportunities, if you don't count GMU, which is a bit cheaper.  Second, you learn very little useful info in law school, whether it's Harvard or UDC.  I'd venture to say that grads of lower-ranked schools actually learn a bit more useful law, since these schools try to cram as much black-letter law into their students' brains as possible in hopes that the 65% bar passage rate will go up.  Finally, what you feel is a "successful" claim as an experienced Examiner is probably very different from what an attorney deems to be a successful clam. It's not that hard to get "a claim" allowed in the PTO, if it's very narrow, but that does not make a good claim for the patentee's purposes.  That's is why Examiners often require extensive retraining once they go to law firms.  

[DogDayPM 9er9er9er]

 First, I very much doubt that PTO has "tons" of examiners who went to "amazing" law schools...

I dunno - based on recent findings by the Surgeon General's office, it'd probably only take 15 or 20 to meet the goal.

[bald & chained]

 First, I very much doubt that PTO has "tons" of examiners who went to "amazing" law schools...

I dunno - based on recent findings by the Surgeon General's office, it'd probably only take 15 or 20 to meet the goal.

Hahaha! Good one!

[Examinerguy]

I suppose the whole point of this thread is to somehow make yourself feel better by pretending that Examiners are like cognac - the longer you are bottled up in the PTO, the better. But you, my friend, are extremely misinformed about ... pretty much everything.  First, I very much doubt that PTO has "tons" of examiners who went to "amazing" law schools, unless you define any of the DC-area law schools as "amazing."  We do have lots of schools that are pretty amazing in charging as much as Harvard, but providing far fewer recruiting opportunities, if you don't count GMU, which is a bit cheaper.  Second, you learn very little useful info in law school, whether it's Harvard or UDC.  I'd venture to say that grads of lower-ranked schools actually learn a bit more useful law, since these schools try to cram as much black-letter law into their students' brains as possible in hopes that the 65% bar passage rate will go up.  Finally, what you feel is a "successful" claim as an experienced Examiner is probably very different from what an attorney deems to be a successful clam. It's not that hard to get "a claim" allowed in the PTO, if it's very narrow, but that does not make a good claim for the patentee's purposes.  That's is why Examiners often require extensive retraining once they go to law firms.  

Not at all. In fact, I know very well that the longer one stays at the PTO, the less chance one has of getting a job anywhere else. And yes, I define amazing as Georgetown and George Washington...in fact, I think those are in the top 10 for IP.

[DogDayPM 9er9er9er]

And yes, I define amazing as Georgetown and George Washington...in fact, I think those are in the top 10 for IP.

Fine schools, yes, but does anyone in industry or firms pay attention to "IP specialty" type rankings?  (Serious question for anyone who's been involved in hiring).

[bald & chained]

And yes, I define amazing as Georgetown and George Washington...in fact, I think those are in the top 10 for IP.

Fine schools, yes, but does anyone in industry or firms pay attention to "IP specialty" type rankings?  (Serious question for anyone who's been involved in hiring).

Not really.  And I hear that both schools got reamed this year during OCI.  Harvard, Yale, and Stanford are probably the only ones that didn't get particularly hurt by the economy in terms of recruiting.