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[Transman]

I passed Patent bar early this year but am still working as engineer because I couldn't find a patent agent job.
One of my friends is currently working for a small law firm in South Korea and asking if I can work on a part time basis(10 or 15 hrs per week) while maitaining my current employment. I think it could be a good working experience and be helpful later finding a full time job later.
Is it legal to work as patent agent on a part time basis while keeping a full time day job as engineer?
I would appreciate your advice. Thanks.

[Robert K S]

Well, first of all, people don't give out "legal advice" on this forum.  If you want real legal advice, consult a licensed attorney in your area.

But we do generally discuss legal issues, and there is no federal prohibition on representing inventors as a registered patent agent in addition to whatever other work one might do.

However, it is typical for employers to include "no moonlighting" clauses in their employees' employment agreements.  Your employer doesn't want you working days for him and spending evenings working for your employer's competitor.  Your employment agreement's "no moonlighting" clause, if you have one, may prohibit you from working for someone else as a patent agent in addition to the engineering duties you have for your employer.

Check your employment agreement, and if there's any question, consult your attorney.

[MYK]

Do keep in mind that you'll want to get malpractice insurance if you decide to go ahead with it, and possibly set up a corporate entity of some sort.  (Having a corporate entity doesn't shield you from malpractice, though -- that hits you personally.)  You'll want to adjust your prices accordingly.

If you have zero experience whatsoever in patent prosecution, though, personally, I'd suggest staying away from the deal.  A minor mistake could drive you into bankruptcy.  It really depends on what, exactly, they want you to do for them.  Acting as a U.S.-based correspondence address, ok.  Responding to office actions, if you've had some training or they're willing to watch over you, maybe.  Drafting new applications and claims, run away very fast unless they're willing to do significant oversight and training.

[klaviernista]

However, it is typical for employers to include "no moonlighting" clauses in their employees' employment agreements.  Your employer doesn't want you working days for him and spending evenings working for your employer's competitor.  Your employment agreement's "no moonlighting" clause, if you have one, may prohibit you from working for someone else as a patent agent in addition to the engineering duties you have for your employer.

To flesh this point out a little bit, it is common for an employment agreement to include a "no moonlighting" clause.  But those clauses are generally prohibit two types of moonlighting activity: 1)  activity that would support a competitor of the employer (e.g., IBM engineer working as a patent agent for AMD) and 2) activity that would interfere wiht or hinder the emplopyee's performance of his job functions (e.g., employee's side business requires meetings during the normal business hours of employee's full time employer).

Of course, employment agreements do vary, and you may be subject to more specific provisions.  But is there a blanket prohibition against moonlighting as a patent agent (or other employee)?  No.*

By way of example, I am presently employed full time as an in-house attorney for a small engineering firm.  At night, I do some pro bono patent/IP work for a local legal aide organization.  And one night a week, I teach patent prosecution at a (relatively) local university.  I requested and received written permission from my employer before engaging in either side gig - primarily to avoid any issues conflict of interest issues).  I also make anyone that I do patent work for aware of my primary employment, again for the potential onflict of interest issue(most states require the consent of both parties in the event of a conflict of interest).

*:  Important exception: There ARE prohibitions against moonlighting as a patent agent/attorney if you are employed by the USPTO.