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[UVAgal4]

Hi everyone.
I am wondering whether anyone can give an idea as to the job prospects for an EPA with several years of experience, who decided to move to the US and continue to work in IP. Currently, the EP laws do not allow an EPA having a place of business outside of the EU to actively practice before the EPO (which is silly because many things are now done online, but there you have it.)

Thus, would US firms be interested in hiring such a person, even though he or she could not do things directly before the EPO, such as filing applications and responses to Office Actions.

I don't suppose an EPA who has not passed the US bar could be made partner?
Thanks.

[virus_guy]

I'm not very knowledgeable of EP laws, but I always thought that European patent attorneys were more the equivalent of patent agents in the US, i.e. someone with a science or engineering degree who has passed the patent bar, but did not go to law school. Someone please correct me if I'm completely wrong.

I'm sure there is a place for someone like an EPA in a US law firm to work on EPO cases sent over by foreign associates. This person could potentially take the US patent bar and work on US cases as well. Unless I'm completely wrong (see above), I don't think an EPA could be made a partner in a US law firm if the EPA is not also barred in some state.

[UVAgal4]

Thanks for your reply.

For info:
While EPAs don't need a law degree, they must pass the European Qualifying Examination, which is much harder than the USPTO Registration exam, and have worked under another EPA for at least three years prior to taking the exam. They cannot argue infringement/invalidation cases before a national court, unless also a national IP attorney.

[virus_guy]

For info:
While EPAs don't need a law degree, they must pass the European Qualifying Examination, which is much harder than the USPTO Registration exam, and have worked under another EPA for at least three years prior to taking the exam. They cannot argue infringement/invalidation cases before a national court, unless also a national IP attorney.

Thank you for the information. I learn something everyday in this field. The USPTO exam should be a piece of cake then.

Going back to your partner question, I still think it will be unlikely for an EPA to be made a partner in a US law firm. While I don't dispute that the path to become an EPA might be substantially tougher than becoming a US patent agent, I feel that the EPA in a US law firm doesn't have the same standing as a state-barred patent attorney and for all practical purposes would most likely be treated as a non-attorney, like a patent agent. Then the question becomes whether a non-attorney and an attorney can be partners in a US law firm. There has been similar talk on this forum about this issue regarding whether patents agents and attorneys can be partners. I think there are some mixed thoughts about the issue.

http://www.intelproplaw.com/ip_forum/index.php/topic,13059.msg61922.html#msg61922

 Just throwing stuff out there. Nothing against EPAs for sure.

[Oh, Crud]

Hi everyone.
I am wondering whether anyone can give an idea as to the job prospects for an EPA with several years of experience, who decided to move to the US and continue to work in IP. Currently, the EP laws do not allow an EPA having a place of business outside of the EU to actively practice before the EPO (which is silly because many things are now done online, but there you have it.)

Thus, would US firms be interested in hiring such a person, even though he or she could not do things directly before the EPO, such as filing applications and responses to Office Actions.

I don't suppose an EPA who has not passed the US bar could be made partner?
Thanks.

Hi UVAGal.  I think the virus_guy is correct that it's whether or not you are a registered attorney-at-law that determines whether you can be a partner in a US law firm.  Generally, US lawyers are forbidden from entering law partnerships with non-lawyers.  So while the USPTO exam is indeed a piece of cake, passing it won't help in terms of partnership.  Certainly it might help in terms of getting a law firm position as an agent (i.e., a US agent who also happens to be a qualified under EPC).

But I personally don't think being a US-based EPA would be useful to a US law firm.  As you already mention, if you're here, all you can do is act in an advisory capacity.  And then so they still have to pay an EU-based EPA to do any actual filings, oral arguments before the examining or opposition divisions, etc. But I could be very wrong about this, so just take it as "one dude's opinion" and keep checking.

On the other hand, where your EPA status may be valuable is in a US in-house patent department of a large corporation.  So if you're considering heading back from France, don't forget to look at that angle.  And you may want to pay particular attention to US based in-house departments of EU companies.  Eriksson, Nokia, etc.  These companies will be accustomed to thinking of EPAs as "patent attorneys", whereas the patent depts of US-based companies are filled with US patent lawyers who tend to think of anyone not an attorney-at-law as a second class citizen or even get bent out of shape about the term "attorney" being used for those who are not attorneys-at-law. (Unfortunately I'm serious about this last point, having experience of a number of multinational companies.)

[virus_guy]

On the other hand, where your EPA status may be valuable is in a US in-house patent department of a large corporation.  So if you're considering heading back from France, don't forget to look at that angle.  And you may want to pay particular attention to US based in-house departments of EU companies.  Eriksson, Nokia, etc.  These companies will be accustomed to thinking of EPAs as "patent attorneys", whereas the patent depts of US-based companies are filled with US patent lawyers who tend to think of anyone not an attorney-at-law as a second class citizen or even get bent out of shape about the term "attorney" being used for those who are not attorneys-at-law. (Unfortunately I'm serious about this last point, having experience of a number of multinational companies.)

I think ohcrud is onto something here. My boss, who is a US patent attorney, consistently uses air quotes around "attorney" when he refers to our european associates who are EPAs. ohcrud is definitely not exaggerating this point that some US patent lawyers really do get bent out of shape when people who are not in fact attorneys-at-law refer to themselves as attorneys. I work in a law firm, so I don't think this mentality is limited to in-house departments.

[UVAgal4]

I think ohcrud is onto something here. My boss, who is a US patent attorney, consistently uses air quotes around "attorney" when he refers to our european associates who are EPAs. ohcrud is definitely not exaggerating this point that some US patent lawyers really do get bent out of shape when people who are not in fact attorneys-at-law refer to themselves as attorneys. I work in a law firm, so I don't think this mentality is limited to in-house departments.

Oh good grief. They need to get over their superiority complex.

While I agree that it is easier to pass the qualifying exam than to pass the bar exam, if an EPA calls him or herself an attorney, it's because its the official title. It's not like a patent engineer with one year of experience saying they are an attorney.

And besides, coming from outside of Europe, you have no other choice- you have to pass by an EPA, like it or not.

[virus_guy]

Oh good grief. They need to get over their superiority complex.

While I agree that it is easier to pass the qualifying exam than to pass the bar exam, if an EPA calls him or herself an attorney, it's because its the official title. It's not like a patent engineer with one year of experience saying they are an attorney.

And besides, coming from outside of Europe, you have no other choice- you have to pass by an EPA, like it or not.

I'm one of those second class citizens that ohcrud mentioned in an earlier post, so I definitely agree with you.

Yes, that's true, you can't change an official title, so tough cookies for people like my soon-not-to-be boss.

[ny23]

Currently, the EP laws do not allow an EPA having a place of business outside of the EU to actively practice before the EPO (which is silly because many things are now done online, but there you have it.)

This is true, of course, though I once worked at a US general practice firm that had an office in London.  The Houston office had an EPA who officially worked in the London office, but really he spent most of his time in Houston.

I know that some US firms have hired or tried to hire EPAs for their US locations; Knobbe Martens has done this; Ladas and Perry was looking for an EPA a year or two ago for a California office.

I also know an EPA who is a partner at a mid-size boutique in Oregon, though he is also a US attorney-at-law.  I don't know how much EP work he does.

[Evil In House Counsel]

On the other hand, where your EPA status may be valuable is in a US in-house patent department of a large corporation.  So if you're considering heading back from France, don't forget to look at that angle.  And you may want to pay particular attention to US based in-house departments of EU companies.  Eriksson, Nokia, etc.  These companies will be accustomed to thinking of EPAs as "patent attorneys", whereas the patent depts of US-based companies are filled with US patent lawyers who tend to think of anyone not an attorney-at-law as a second class citizen or even get bent out of shape about the term "attorney" being used for those who are not attorneys-at-law. (Unfortunately I'm serious about this last point, having experience of a number of multinational companies.)

My company has some EPA's in our patent department. They are on the same pay scale as US patent attorneys and aren't treated any differently.

I think ohcrud is onto something here. My boss, who is a US patent attorney, consistently uses air quotes around "attorney" when he refers to our european associates who are EPAs. ohcrud is definitely not exaggerating this point that some US patent lawyers really do get bent out of shape when people who are not in fact attorneys-at-law refer to themselves as attorneys. I work in a law firm, so I don't think this mentality is limited to in-house departments.