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[prufrock69]

Hello Mr. Ivey...Mr. Auslander,

It seems like everyone comes here to get there career advice on IP career choices, and not to harp on the issue but I'd also like to ask a few questions as I'm also considering taking the plunge and hoping for the best.

I'm currently working in the Patent Office as an examiner (haven't run into any of your names yet ;-)), 2 years of engineering internships/co-ops and graduated this past August with a master's in computer engineering and obviously ran right into the proverbial wall that was the stagnant economy. I had no inclination of ever becoming a lawyer, but after joining the Patent Office (my only job offer) my interest was kindled, and after working here and checking this forum out, it is starting to gain some real momentum.

I've come to understand that being an examiner will not nearly be enough for me. As an engineer, I take great comfort in the process and the results. The writing and designing of code is a real stimulating force and the final product provides the satisfaction. Unfortunately, I've come to realize that this position will probably not provide that in the years to come. I was interested in one comment you made in that you mentioned you were basically a wellpaid technical writer. In essence being an examiner means I'm a technical writer also, just not well-paid. Does IP provide anything close to the engineering experience? I understand that there probably won't be any design or construction of ideas but will there be a big difference between what I'm doing now and a patent attorney?

I've read several of your posts concerning job experience and such, and I was just curious as to how important (and influential) my job experiences would help my gaining acceptance to law school, and then subsquently, a job. I understand that law school decisions are primarily affected by 2 things: grades and LSAT scores. Would my experience help at all or is that something that only firms have any interest?

Sorry for rambling on, but thanks very much for your time!

[M. Arthur Auslander]

Dear Prufrock69,
If you start with your objective you are on the right road. While there are regular routes that are followed there are exception.
I was never a patent apprentice. I also was the only one in my law school class that started out working for myself as a general lawyer.
My best friends were patent lawyers and suggested patents as a natural for me. They gave me books to study. The first time I took the exam I realized that the patent bar was not like the bar examination and required specialized effort, more than was require in the bar exam. I put in the extra effort and passed the patent bar.
I have enjoyed patent law for many years. Early in my career my friend who got the patent on the folded metal polarized electric plug, left his firm and joined me. We parted friends.
I took space with another old practicioner who was the author of the book on Chemical patents. The publisher knew me from my first partner and asked me to co author the book. I had to postumusly complete the publication.
You predjudice (sp?) yourself without a law degree.

M. Arthur Auslander
Auslander & Thomas-Intellectual Property Law Since 1909
3008 Johnson Ave., New York, NY 10463
7185430266, aus@auslander.com
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[JimIvey]

Dear Prufrock69,

I'll toss in a few thoughts....

I'd say that technical writing is half of the job.  The other half is legal writing which requires full attention at all times to the full legal impact of every word you choose (and, eventually, recognizing which words have no significant legal impact so you can write a little faster).

You might consider introducing yourself to a couple of attorneys at Austin-Hollands & Smith (http://www.ahs-iplaw.com/) -- You'll see I have some affiliation with the group.  Michael Smith and Ellis Ramirez are both former examiners which have made the jump to patent law.

Lastly, I have a good feeling about your chances -- based on very little information, of course.  Your post was generally well-written and properly capitalized and punctuated -- somewhat rare on the Internet for most people (and surprisingly rare in the Office Actions I get!).  Your attention to detail and good writing skills will serve you well in your quest for an IP career outside the PTO.

Good luck!

[eric stasik]

prufrock69,

It's a shame that qualified people like yourself don't see a future at the patent (and trademark) office.

You examiners perform a far more valuable and important service than you can imagine. It's too bad that there is such a long distance between the work you do and how the patents you grant are used in  business negotiations.

As a former director of patents and licensing at the Swedish Telecommunications giant LM Ericsson, I can tell you that the patents which are granted by the USPTO have enormous commercial significance. For a number of reasons, the patents granted by the EPO and the JPO simply do not carry the same weight. Patents granted by the USPTO play a vital role in building joint ventures, protecting product strategies and markets, and encouraging the proliferation of standards. You would probably be surprised how many business issues are touched by patents. The licensing that you read about in the papers is but the tip of the iceberg.

I would never want my own work to be subjected to the scrutiny of a dozen high paid litigators, and you would be pleased to know how well the work done by the USPTO holds up. You examiners do vital and important work which is not adequately compensated or recognized. I have a great amount of respect for examiners.

That being said, working as an examiner is not for everyone. I do not however agree with Mr. Auslander that you prejudice yourself without a law degree. It all depends on what you want to achieve.

His remark reminds me of a breakfast I had with a US patent attorney many years ago who informed me that without a law degree I would have "no future in this business." Three years later I was responsible for the international patent operations of the GSM Systems division of Ericsson Radio Systems.

My job was/is primarily business oriented. My main responsibility was to build the patent portfolio to support the business objectives. I decided what was filed, where, and why.

I studied on my own to be a US agent, but was never very interested in filing and prosecution. Although I enjoy writing, writing patents is a very special skill which does not suit my own style.

For me the action was always in the use of patents.

Of course having an in-depth knowledge of patent law is essential, but you can learn everything you need to know about patent law without subjecting yourself to torts, product liability, family law, employment law, and the many other subjects which occupy 3 years at a U.S. law school. I dare say that after 3 years of U.S. law school, you may know less about intellectual property law than you do now.

Everything you need to know about patents (and more) is in books. I never took a single class on patents, but have read and studied just about everything I could get my hands on. Patent law is not very complicated, using patents as business tools is far more challenging.

If you want to work as a U.S. attorney, doing U.S. attorney things, focusing on U.S. law, then by all means a U.S. law school is the only way to go. But "patents" is an international business and learning U.S. patent law has little value to you when dealing with the laws of other jurisdictions. German, Swedish, French, etc.  patent law are as different from each other as they are from U.S. law.  In many ways, my experience is that too much focus on U.S. law is something of a handicap when working internationally.

If you (as I) consider yourself more of an engineer than anything else, patent engineering is a very suitable career choice. More and more companies are beginning to understand the value of engineers who work with patents and I believe the job prospects for this type of work are very good indeed. One caution however, is that there are many companies and people with Mr. Auslander's prejudice towards non-attorneys so you may encounter difficulties.

It didn't stop me and it doesn't have to stop you. IP is an exploding area of business. Make your career what you want it to be, don't let anyone force you into a box.

Please feel free to contact me privately if you want to know more. My e-mail is available from my website http://www.patent08.com.

Cheers, and happy holidays,