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[joeschmoe69]

why would anyone want to be a patent attorney?

So you want to be a lawyer instead of an agent.  Why?  What advantages do you have?  Becoming a partner many years later if you are LUCKY?  

need work from a law firm, call one of their patent attorneys and talk to them and ask them if they have any work available.  that is the cool thing about being a patent agent, you can have a full time engineering job and pawn work off of lawyers.  And if you do a good job, you will get more steady work, just as if you were in the firm without ever being in one and keeping your full-time full-income job.  


The preferential option though is to say screw 'em and take away their business.  Market yourself as a patent agent and explain to your potential customers that there is no "practical" difference between the two as passing the bar in a STATE has nothing to do with practicing in front of the FEDERAL patent office.  And you can charge a lower price and undercut them.  Get your buddy engineers together, and you got a firm with far more technical know-how than most patent attorneys, split up that cut.  Remember, many times the firms still have to hire consulting engineers because a patent attorney is not thorough in all fields.  So you get some of your co-workers together and start a powerful firm.  get a hot website.  What law firm can get free engineering consultation?  You can from your friends.  

In the end, it all depends on how agressive you are at marketing yourself and your skills.  Are you a people person, become an agent.  not, become a lawyer, but without that skill set you will still suck at it, it will just be easier entering the field.  it is like owning a small business or starting a private law practice.  But if some of you want to waste money going to law school to acquire my same skill set, that is fine, ill just keep my engineering job making that full pay plus agent pay plus increasing my experience while you spend those 3 years make diddly.  good luck.    

[Isaac]

why would anyone want to be a patent attorney?

So you want to be a lawyer instead of an agent.  Why?  What advantages do you have?  Becoming a partner many years later if you are LUCKY?  

That would be one consideration.  Another might be the opportunity to be involved in patent work other than that performed before the patent office (opinion work and other litigation related work).    As an anecdote, one patent agent told me that during lean times, the attorneys in his firm were be able to sustain themselves in part on work that as an agent he could not do.

And you can charge a lower price and undercut them.  Get your buddy engineers together, and you got a firm with far more technical know-how than most patent attorneys, split up that cut.  

I'm assuming you are referring to your buddy engineers who are patent practitioners.   Otherwise you cannot "partner up" with them to offer patent services.

I'm at a loss for how the expertise issue differentiates between patent agents and patent attorneys in any particular case.  Patent attorneys in general differ from patent agents in general only in that the former has additional legal qualifications.  A given patent agent may have more technical know-how than a given patent attorney.   Maybe as a class patent agents average more years of engineering experience than patent attorneys.   But in a particular case and for a particular matter who knows?

In the end, it all depends on how agressive you are at marketing yourself and your skills.  Are you a people person, become an agent.  not, become a lawyer, but without that skill set you will still suck at it, it will just be easier entering the field.  

I respectfully disagree.

[joeschmoe69]

ok then, explain to me any functional difference between a patent attorney or agent.  What can a patent attorney, that just wasted 3 years in college, do that a patent agent cannot?  If a patent attorney fails the patent exam, can he still practice in patents?  NO, same as an agent.  the only difference i see is being registered before the state bar.  whoopity, since again, patents are done at the federal office.  

The agents not having work and lawyers having?  That has nothing to do with anything, simply the person on a case by case basis.  Some patent agents will have more work than lawyers in lean times.  If you are doing work besides patents in lean times, that has nothing to do with patents.  Anyways, what will an engineering patent agent do in lean times?  continue with his regular job.  much worry?  not.  

As for easier entry, i meant it is typically easier just to find a job in a firm then to market yourself as a patent agent or starting your own firm.  Just as it would be generally easier to join a firm instead of going into private practice.

and yes, you can partner up with your buddies without them being patent practitioners.  they can act as engineering consultants at free or much-reduced costs.  you do not have to be a patent practitioner to work out technical aspects of an invention.  But the ones that arent, get  them to take the test with you.  if you have a chemical engineer friend, an EE, and ME, etc and you are all patent agents, you have a powerful firm there, that will attract customers simply based on the technical powerhouse.  A law firm would have to incur additional costs to hire consultants in the fields that the patent attorney was not specialized in whereas your buddies or firm simply help you keep costs lower and profits higher, in the end, undercutting the law firms.

So again, if you feel the extreme need to waste your money or just have to have that paper that says graduate of Harvard Law, spend it on three years of law school.  better yet, pay $35,000 a year and go to a top private.  I'd prefer you just give the money to me.  while you are losing money, i am earning.  investment for the future? ya right, read along.  Or maybe you just want to become a lawyer because of their GREAT reputation in public, lol.  If you are going to a top law school, you will see that patent law is NOT where the money is at and there are other fields in litigation that will make you rich much faster.  With regards to patents, there is nothing in law school that you cannot learn yourself.  Except this time, unlike in udergrad school, that piece of paper helps you very little, compared to the costs incurred.  i liken it to getting a PHD in engineering, maybe some educational pleasure, but very little cost benefit compared to a kid that works while you study.  In engineering, experience is the most important and you cannot gain that behind books.  Good Luck.

[IntoVA]

That "little piece of paper" allows you into the court room, and allows you to give legal advice.  That is worth $$$, allows you to work in-house for companies assisting in patent work, not to mention becoming a partner with a reasonably-sized firm where you can really pull down the $$.

The comparison is more like a mechanics license versus an engineering degree - if working in a shop for the rest of your life is all you want to do, the engineering degree is probably overkill.  But if you want to work in a shop just a bit, and also do more design/analysis work, you need the full degree.

I want to be *able* to do the patent stuff, but there's no way I want to do that for the rest of my life - as with anything, you learn a skill, and then you advance further in your career to where you can tell other people what to do (i.e. you move from programmer to IT Director to CIO).

[Isaac]

I'm not sure that JoeSchmoe is doing anything other than stirring things up.   I do occasionally see web sites by attorneys who feel the need to "dis" agents and vice versa.   I don't believe such trashing of other practitioners is the least bit productive.  

I'll address one item.  Yes. an agent can work with non employees as consultants and employees, but the arrangement cannot be a partnership or a fee sharing arrangement without running afoul of  37 CFR 10.49 and 10.48.

§ 10.49 Forming a partnership with a non-practitioner.

A practitioner shall not form a partnership with a non­practitioner if any of the activities of the partnership consist of the practice of patent, trademark, or other law before the Office.

§ 10.48 Sharing legal fees.

A practitioner or a firm of practitioners shall not share legal fees with a non-practitioner except that:

(a) An agreement by a practitioner with the practitioner's firm, partner, or associate may provide for the payment of money, over a reasonable period of time after the practitioner's death, to the practitioner's estate or to one or more specified persons.

(b) A practitioner who undertakes to complete unfinished legal business of a deceased practitioner may pay to the estate of the deceased practitioner that proportion of the total compensation which fairly represents the services rendered by the deceased practitioner.

(c) A practitioner or firm of practitioners may include non-practitioner employees in a compensation or retirement plan, even though the plan is based in whole or in part on a profit-sharing arrangement, providing such plan does not circumvent another Disciplinary Rule.

[eric stasik]

joeschmoe69,

The only similarity between patent agents and attorneys is that they both can represent applicants before the U.S. Patent and Trademark Office. Other than drafting and prosecution, the two jobs have essentially nothing in common.

A U.S. patent lawyer is an attorney at law. His or her expertise is in law, reading cases, writing opinions, performing discovery, making arguments, etc. Lawyer work.

A European patent agent is more agent than attorney, but is not an attorney at law. In general, a freshly minted European patent attorney is better qualified as an agent than a freshly minted U.S. patent attorney (or agent,) but with some years of experience there is little difference. In certain jurisdictions, a European patent attorney may do a bit more lawyer work than a U.S.patent agent, but European patent attorneys are not attorneys at law.

A U.S. patent agent isn't an attorney at law and - thankfully - does not do lawyer work. As an engineer (who is also a patent agent) I would be bored to death. For me - and everyone is different - it's trivial mental labor, like doing SoDuKu, and I couldn't be bothered with it. I prefer other intellectual challenges. Of course, one has to know a bit about patent law so some bother is necessary, but my personal interests are more towards the business aspects of patents.

Despite my personal tastes, I know a number of patent attorneys who very much seem to like the boring work I think they do.

The choice between agent and attorney depends on who you are and what sort of work appeals to you.

As IntoVA pointed out, lawyering has the additional benefit that when the economy tanks and companies stop filing applications, the generally get into suing each other. Working as a patent attorney - and being able to do both - means your work is more steady.

/Eric Stasik

[Career Patent Agent]

Joe's post seems to be a naive rationalization toward justifying his lack of intention to pursue graduate education in law or engineering. I'm not sure it deserves all this response. But here I am with my two cents.

I'm pursuing a career as an agent. Each time I hear or read of a patent attorney bored with writing and prosecuting patent applications then I'm a little more assured of my choice. "Step aside my friend, and let a patent agent do his work," is my response to that popular concern of attorneys.

I have, however, worked with large and small clients and see just how close at hand are the practice limits of a patent agent. The client needs to discuss the effect of a non-disclosure agreement ... the client has a potential licensing agreement but doesn't understand all the terms ... the client is getting sued ... the client is aware of an infringer ... it goes on and on and on as most who frequent this website likely already know well. I doubt Joe Schmoe has actually ever done any patent work.

I'm glad to see that most messages posted here are wrought with mutual respect. I think of patent agents as being somewhat like black-smiths of olde. I just wanna make the swords and the helmets. Somebody else can do all the bloody fighting (lawsuits, etc.).

I do read about court decisions and try to stay educated about changes in laws and regulations. I want to do my job well and my job is intertwined with that of attorneys. I'd like to think that in time (I've been doing patent work for five years) I'll work at a level of quality at very reasonable price. There is no need for friction between agents and attorneys.

Maybe one day you'll use a patent I wrote and kick some infringer's butt. I won't likely be there putting on the big show in the court room ... that's your job.

A Patent Agent

[SciGuy]

So you want to be a lawyer instead of an agent.  Why?  What advantages do you have?

Speaking from the perspective of a scientist at a biotech company, I think one large advantage of being an attorney is that they can do more things...and are thus more likely to get my business.  I've had the same attorney draft patents, negotiate licenses, evaluate the validity of issued patents, etc.  I would never ask an agent to draft a patent because soon as some legal issue arose I'd have to bring in an attorney and educate them on the patent field I'm in...too inefficient.  Its better for me to just have on guy that can do it all and knows my portfolio and knows me personally.  If he is overloaded and needs to pass some of my work off to an agent, so be it.  At least that work passes back through him for any inaccuracies and amendment prior to it reaching my desk.  Just my 0.02

[Career Patent Agent]

Ironically, SciGuy's field (biotech) is where the greatest concentration of career patent agents seem to be found. I'll wager a guess that his company is not large and does not file dozens or more patent applications each year. If a company pursues a large on-going patent application endeavor then ultimately no one practitioner can meet their needs. This is where practice groups within law firms can help. A practice group with agents and attorneys can cover all the bases and if the group is managed well the interface with the client cousel or representative is seamless.

As an agent, I write patent applications (far from biotech fields) for at least one large company that sends dozens of invention disclosures to the firm for which I work. I interact primarily with the inventors and am often told that they appreciate my ability to understand their technologies (I hold a PhD in physics). In-house attorneys with that client don't contact me with legal matters outside of writing and prosecuting patent applications. Such a model isn't for every client.

Once again, I'm please at remarks about patent prosecuting on this page. Other activities around patent work have been characterized as more challenging. I'm one smart cookie and I bring my efforts to bear in quality writing. I'd prefer that all who think patent prosecution is grunt work leave this challenging field to professionals like myself. If you sigh with boredom as you view invention disclosures and write claims then you should move on to other areas of IP work or beyond. If you think embracing technologies and writing applications in diverse fields is boring or unchallenging ... maybe you're not serving clients as well as their money deserves or as well as I could.

Patent agents, of course, are only a piece of the IP puzzle. As for inaccuracies and amendments to my work (SciGuy) but for an attorney's review ... if your presumption is that the work of agents is manifestly wrought with error, then do please stick to your current working business model.

Patent Agent

[SciGuy]

Ironically, SciGuy's field (biotech) is where the greatest concentration of career patent agents seem to be found. I'll wager a guess that his company is not large and does not file dozens or more patent applications each year.

You are correct Sir...I'm with a small company that files only a dozen or so apps a year.  We have several attorneys who work on different subgroups of our patents.

Also, in no way do I have a "presumption...that the work of agents is manifestly wrought with error."  Quite the contrary is true.  I often have conferences with both the attorney overseeing our patents and the agent who did at least some of the actual drafting present...and consider advice from them equally.

However, at least in my opinion, the advantage of have an attorney as the "point man" is that he sees the big picture of our fledgling little group of patents b/c he has dealt with legal matters other than the prosecution of those patents (licenses, etc.).  Problems have arisen in the past and he caught them only because he dealt with issues that only a atty is qualified to do...nuff said.

I, like you, "think embracing technologies and writing applications in diverse fields" are exciting and it is for exactly for these reasons that I'm studying to become an agent (and why I joined this board) prior to law school.

[joeschmoe69]

i never said you should not pursue higher education, if that fulfills you.  Then again, i know many people with multiple advanced degrees that make jack squat.  I also notice many of these people feel arrogantly educated and somehow owed money.  I guess they cant come to grips when they get treated and used like a dog in the business world.  myself, i prefer to be both rich and educated.  You have a Phd.  Oh my, whoopity.  I know idiots with Phds.  There is nothing you cannot learn on your own through books and study.  So why did you get those papers, better jobs?  well, look again buddy, because you are not coming out on top for what you are putting in.  Now, let me make some clarifications.

I never said you have to form LEGAL partnerships if you are using engineers as consultants.  next, read this line again.  

"A practitioner or firm of practitioners may include non-practitioner employees in a compensation or retirement plan, even though the plan is based in whole or in part on a profit-sharing arrangement, providing such plan does not circumvent another Disciplinary Rule."

Did you read that... A practitioner or firm of practitioners may include non-practitioner employees in a compensation or retirement plan...what do you think a compensation plan is?  Read carefully before quoting legal material as if you know it.

Finally, who wants to do all that liscencing bull?  If you read my original statements again, i said to become a patent agent to form a firm of engineers or with engineering friends as consultants, possibly of multiple disciplines, or keep your full time job and do patent agent work as plus income.  if you need legal advice, consult it out.  When you are rolling over $100k as an engineer alone, oh wait, i guess that is not some of you with your Phds, think about how much surplus income you can add just by doing a little extra work as a patent agent.  At least if you are agressive at beating out lawyers and law firms, which i enjoy, it is mucho dinero, haha.  I dont find the extra work difficult.

And yes, you are correct, a lawyer can do more.  But nothing more that concerns patents in almost all cases.  They can practice before the same federal agency as me.  So they can do a little more legal work for a lot of extra liability and headache.  good for them.  i can consult my legal work out on the cheap with no headache.  Also, did you notice many patent applicants want experienced engineers to look at their inventions?  How do you gain that experience with 3 years in law school?  Go straight to law school after undergrad and see how many people want your patent skills.  you might draft contracts but that is about it.  like another guy commented, if you become a lawyer it means you want to be a partner or broaden into other legal fields, like real estate or contract law.   if that is your thing, go for it.  if you only want to do patents, you are wasting your time.  im just giving you advice from a perspective that knows how to make cash.  but again, there are kids with no college education that can do that so it doesnt matter how many degrees you have there.  good luck.

[Pokin' Fun]

Joe says "I know idiots with Phds."

Joe seems like the kind of guy that would know lots of idiots.

[joeschmoe69]

for the last guy, i am sure you are one of them.  

ill try to make this quick cause im busy.  that is the side that some engineers have trouble with, the business side.  when it comes to money, it doesnt matter how educated you are.  if you want to attract customers you need to market to customers.  get a website, get your name out in the tech field, put out ads, get in the yellow pages, whatever it takes to market.  And of course, there is competition in the field, namely law firms.  some of these fools want to be friends with the competition.  you think any millionares became millionares because they shared their money?  Im not saying everyone has to jump in this sort of role, you can make a smaller salary and be happy with it.  but if you want to make a large salary, you have to take money out of the pocket of others and put it in yours.  Now you dont have to be unethical or dishonest about that, and i am not.  Of course, I find many lawyers to be entirely dishonest and unethical so you would be at a disadvantage by being ethical.      

Undercut them, attract customers away from them, do whatever business practices necessary to drop their income.  trust me, they are trying to do the same to you.    

And of course, a group is always going to be stronger than an individual.  if you want to be strong, find engineers, preferably in diverse fields.  set up an arrangement for them to work for your newly formed firmed as consultants or find good partners.  Advertise that varied and strong expertise!  The beauty is, and explain to them, that nobody has to quit their jobs.  

If you are looking just for some additional work, use those lawyers.  call them and ask them for work.  they will rape you with their commission, unless you let them know you dont screw around like that.

As far as pay, i find fixed contracts work best because the customers know how much they are saving by coming to you and most want a general price range.  you might be able to make more money on billable hours but there is the tradeoff of applicants thinking they will ending up paying you more.  Most of this stuff is common sense.  I think some engineers have trouble in this field cause they are too used to a structured engineer life.  You got to think out of the box and use your well-tuned logic to destroy the competition.  most of this stuff is common sense or simple business but it works very effectively when applied properly.  the problem IS most give up too easy at the first few rejections.  heck, if you have to resort to it, figure out who these lawyers are getting work from and steal their customers.  it might seem absurd but it works.  Or email and call companies that you suspect file large numbers of patents.  even when they have in-house attorneys, they sometimes become overwhelmed.  Just get used to rejection and keep going forward.  

Finally, despite what they say on this board, I find lawyers have a VERY bad reputation in public and people have a tendency to feel suspicious when they work with them.  It is not me, you could ask middle schoolers what they think of lawyers in America and get the same answer.  So over the years, they have dug their own hole and people are quickly willing to turn to a group of honest and hardworking engineer/patent agents in a second.  Especially after you explain to them the lacking expertise of patent lawyers.  Anyways, good luck and get out there.  May the best man win.    

[Pokin' Fun]

Ooh ... aah ... so wise.
Joe say ... undercut competition Daniel-san ...
Wax on, Wax off.
No need for education ... that just clutter mind ... a few personal empowerment pamphlets found at bus station will do ... ah ... destroy competition Daniel-san ... in through the nose ... out through the mouth ... training complete ... you black-belt now!

[Isaac]

I disagree with joeschmoe69's conclusion and tone, but if you skip past the lawyer bashing and a few misstatements of law, I think he does raise a point worth considering.

For a practitioner who plans to be self employed, and who intends to make his living representing clients before the patent office, a law degree and a state license might be relevant only as a tool for attracting clients.  I know patent attorneys and patent agents who make a good living doing exactly that.    Law school can be a very expensive and demanding proposition.  It is not for every potential practitioner.

OTOH, there is no question in my mind that for me attending law school was a good financial investment that was paid off only a short time after graduation.