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[a.cross]

Hello all,

I've been reading this forum for the last 48 hours and have found a wealth of information, but I would love some direct input for the IPL community.

I am a week away from handing in my finished doctoral dissertation on optoelectronics in the field of electrical engineering and I'm interested in transitioning to patent law after seven years of research (2 for my masters and 5+ for my doctorate). However, I have found it difficult figuring out how to get a foothold.

I have searched for "technical specialist" positions, but they have been far and few between. Is this the correct term to search for? I feel many places use different job titles for this position. I am focusing on the East Coast (NY, BOS, DC).

I hope to receive my copy of the PLI Patent Bar Review Course in the mail next week. I expect the very earliest date I could reasonably take the exam is the very end of March, otherwise I will have to wait until the updated exam (4/11) in which I suspect will be more difficult as my prep material is based on the older MPEP. My question is: Do my job prospects greatly increase once I pass the patent bar? I do not wish to be unemployed any longer than I have to (at the ripe old age of 30 now with a baby on the way).

Ideally I was thinking of being hired at a firm that would encourage me to become patent agent and offer some accommodations towards part-time law school (whether paying all/partial tuition or at least reduced hours). Is this unreasonable in this economy?

Finally any suggestions regarding what a research scientist with no patent experience should focus on in his resume would be greatly appreciated. Thanks for any help.

[MYK]

The changes from E8R4 to E8R8 aren't that big, and can be found very easily in the "blue pages" of the MPEP.  Just go to the USPTO website, find where they hide the older MPEP versions (and the current one, of course), and download the "blue pages" files for each transition.

For one of the revisions (looks like it was E8R6-->E8R7), a substantial number of the changes was to change "OIPE" to "OPAP" everywhere in the text, because they renamed the Office of Initial Patent Examination to the Office of Patent Application Processing.  (Yay.  Why bother.  Next week, all Patent Examiners will be called Patent Application Examiners in the interest of accuracy.  E8R9 inbound.)

The biggest changes will be due to two recent Supreme Court decisions, Bilksi and KSR.  You'll be able to figure them out fairly easily.

I don't think it's realistic to prepare for the exam in less than a month, even assuming your application to take the exam has been processed already.

Congratulations on getting your dissertation finished, BTW, and good luck on your defense.

[khazzah]

I have searched for "technical specialist" positions, but they have been far and few between. Is this the correct term to search for?

Search for "patent agent" also. Some employers use "tech spec" to refer to someone who does not have a registration number. Corporations sometimes use the term "patent engineer" -- though I don't think I've ever heard a law firm use this term.

[smgsmc]

Before you go the IP route, you should ponder long and hard why you don't want to do R&D. Is it because you are feeling drained after your PhD work and are burnt out?  Is it because you are totally ticked off at your advisor?  Is it because you haven't been able to find a job in R&D and think there may be more prospects in IP?

Or has your PhD work gone smoothly, you are peaceful, happy, and rational, and you have come to the realization you don't want to pursue an engineering career? 

[smgsmc]

If you haven't already checked the job post on this site, you should.  A post that's a good fit for you just popped up on 3/4.  However it's in Si Valley, not the East Coast.

[Physgeek]

Here you go. Many of these firms hire tech specialists. Go to their websites, do some research, see what you think of the jobs. Even if they are not "hiring" on their websites, it is acceptable in the legal world to send them an inquiry letter, resume, copies of your publications, writing samples, etc.

http://ipwatchdog.com/2010/03/09/iptoday-ranks-top-patent-law-firms/id=9588/

"Without further ado, the Top 25 according to IPToday are:

Oblon, Spivak, McClelland, Maier & Neustadt, L.L.P.
Sughrue Mion, PLLC
Birch, Stewart, Kolasch & Birch, LLP
Oliff & Berridge, PLC
Harness, Dickey & Pierce PLC
Fitzpatrick, Cella, Harper & Scinto
Fish & Richardson
Townsend and Townsend and Crew LLP
Blakely Sokoloff Taylor & Zafman LLP
Nixon & Vanderhye P.C.
McDermott Will & Emery LLP
Foley & Lardner LLP
Cantor Colburn LLP
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Knobbe Martens Olson & Bear LLP
Brinks Hofer Gilson & Lione
Wilson Sonsini Goodrich & Rosati, P.C.
Staas & Halsey LLP
Wenderoth, Lind & Ponack, L.L.P.
Buchanan Ingersoll & Rooney PC
Schwegman, Lundberg & Woessner, P.A.
Merchant & Gould
Kenyon & Kenyon LLP and Workman Nydegger, P.C.
Baker Botts L.L.P."