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Messages - kamilien1

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1
Hi All -- I want to update you on my IP journey. After living abroad for 4 years in Asia, I moved to the Bay Area in March 2016 and found a contract job as an IP manager at an electrical engineering-focused startup in the 80mm-120mm funding stage. It has been trial by fire here and has pushed me forward. I am drafting, aiding in prosecution, budgeting, doing freedom to operate searches, working with outside counsel, and helping out with IP strategy. I get a lot of exposure (I work with the CTO and CFO) and a lot of freedom to run a program. The major risk is that I have no solid IP mentor, so I attend conferences and read a lot of books/articles to do a sanity check. I'm still doing patent data analytics for another startup in the $150mm-$200mm funding stage. I set up an S Corp to save on taxes, and my hourly billing has been in the $50-70/hr range. I plan to increase it to $70-$100/hr in the coming year. While I haven't done any weekend birthday parties, my juggling has gotten me into the six-figure range with 50-70 hours per week of work, which isn't saying much in the Bay Area, however, it's the first step.

My next step is to go work at a major hardware company as an IP manager, where they pay in the $140k-$160k range, and I realized I need to reinvent myself. I wrapped up a data science certificate, which actually helped me land the job at the hardware company because they want me to also help out on patent analytics. I will apply for a part-time master in EE degree (2-4 years), and I'm thinking of a cheapo law degree to pass the bar exam. California has a strange rule where you can do an online law school for $30k in 3-4 years, and then you're allowed to take the bar. At this point in the game, I think that's the best move for sanity and for opportunities.

@MYK and @NJ Patent1 were right, there is a lot more to IP than what I had imagined, and drafting is one piece (albeit major) of the IP industry. I was worried that if I can't draft good patents, I can't do anything else. I now am drafting patents, and it is taking me a lot longer to do it well because I have outside counsel expensively teaching me tips and tricks through patent draft revisions.

My new 20-year goal is to either go down the lawyer path to open up new doors in big companies (or well-funded startups), or to use IP as a starting point in running my own engineering consulting company that designs and develops new technologies for startups. The next few years will help me decide which path is right for me. I'm throwing away half of my dream (the engineering side) to give IP a solid chance and to see if it's a great fit for me.

Satisfaction-wise, I have had a fantastic time working with a diverse group of passionate individuals. Everyone has different views of IP, what it should be, how they should manage IP, and what is a reasonable budget. I particularly enjoy the invention side of things, and also how to apply the inventions to building real-life products. I've been gravitating toward the strategy and engineering side of things, thus, I want to have some sort of insurance on the technical side, in case I find the law-only path to be not enough. I'm also aware that the best way to succeed is to focus on one thing at a time, so I'm focused exclusively on IP management for now.

I'll update you all again in a few years, after I have some experience to share from my time at the major hardware company.

2
Patent Agent/Lawyer Careers / Re: Patent Agent part time
« on: 07-15-16 at 07:04 pm »
You can be a technical writer, meaning, you draft everything except the claims...or maybe including the claims, provided you get training. The pay might be lower per patent, and it will take you 10-20 patents before you feel comfortable. My rule of thumb is 30 patents.

Some solo practitioners or small firms would love to talk to you, provided you are competent, dependable, independent, and not too expensive. They probably get 10k-15k per patent, so you'd get a slice of the pie. They would do the prosecution, so your job would be pretty much just drafting. Not a bad way to stay involved.

oh, and you wouldn't need to take the exam.

3
To add to that -- I attended the STEPP program in DC, and the patent examiners said they have a microsoft word-based mega-set of macros they use to generate office actions. So it's not a crazy idea for you to also build a few macros to semi-automate some of your response language (applicant respectfully ...)

4
@kmpatbar, nice job on the offer!

I haven't been to the other side, namely, big law firm, however, I've noticed the agents who I spoke to at big law firms are very sharp at drafting, and much more confident in their abilities. They are somewhat up to date with case law, and my take is their bosses are the attorneys, so they have to defer to the attorneys on some key issues. They also value their time and I don't see them too often.

I met a few solo practitioners, as well as in-house ones. It's a mixed bag. The solo practitioners work twice as hard, however, on their own clock, at home, in their boxers. The in-house ones as @smgsmc said: 5-years in-house before getting onboard. It could be the case that either you're sharp, the startup doesn't know any better, or the startup values someone with your specific technical skills and "good enough" drafting.

If your biggest concern is that the startup will go out of business, why even work at a startup? You know that most fail, right? Also, don't forget, in their eyes, if you have a technological know-how, you will be the difference between $100mm and $1bln in valuation, so they will want you as much as you might want the job. However, if there's already general patent counsel, I'm confused....is he part-time, attending to other matters, or already at drafting-capacity? Why do they feel the need to hire someone else? A startup usually has 1 or no IP people.

Point 3 is true -- I'm at a startup now, and I'm dealing with some docketing stuff. I also deal with the workflow, collecting the ideas, rating them, getting them vetted and checked off by a committee (and it's hard to get the committee's time!), and answering a lot of general IP questions to the engineers and business people. Unless it is clearly defined up front, you will be a "patent agent and" patent agent. Meaning, you'll do both the drafting+a bunch of other stuff, because, you know, it's a startup, and it's Silicon Valley. You should ask up front, and be prepared to get an answer that you find later to be wrong. The CEO is most likely interviewing you, and he may not have had IP experience before, or he might sound like he knows the scope of your job. Maybe with IP general counsel, if the guy is full-time, he might give you a good idea of how many drafts are expected, the actual tech areas, if there's a chance they will "pivot", etc.

So it's both lifestyle and job tasks that are different. Take the risk if you have an interest -- if you fail, you can always go back to a law firm, right? Those will be around for a hundred years...

5
Thanks all for your comments and input! It was all quite useful, realistic advice that has held to be true thus far. I consider drafting and prosecution as "one-of" the skills I hope to acquire in the future.

Here is an update on my current situation, in case anyone is crawling through and wants to know what one independent fellow is doing.

I passed the USPTO patent registration exam in March 2015. Then I began self-studying data science, and I kept my remote job of patent analyst for a high-tech materials startup. Since then, I've gone deeper into patent analysis, and have forgotten a lot of my MPEP material.

I had a few interviews for patent agent positions and one strong offer, however, all were in small towns that would take me far away from the people who I know today, so I did not take any job.

I started to tell my friends that I'm willing to draft applications for free, since I'm worth that much, and that it is for practice. Today, as I am writing, I'm submitting my first non-provisional application for a friend, and I have a second friend lined up. At work, the patent lawyer I work for said she is considering training me on drafting some of her applications, as I have expressed interest over the past two years and I'm 'finally catching up' in some key areas.

Thus far, I hope to find new clients to provide patent analytics services to, and to spend the next few years learning patent drafting and prosecution as "one-of" my services that I offer.




6
Patent Agent/Lawyer Careers / Re: Would like some advice
« on: 03-20-15 at 01:22 am »
Have you tried patentlyo.com/jobs? It has a nice little list that is updated regularly.

7
Thanks @MYK, I didn't even consider "what else is out there". I should think deeper and been more serious. You have a good point that drafting is just one thing that I'd like to do. I am coming from the background of I am ready to do something more focused and do it exceptionally well. I assumed that I should choose one skill and go for it full time -- drafting was the next logical step in my mind. It is still at the top of my list of skills to pick up, however, now I know that it should not be the only factor to consider when applying for my next job.

It sounds like in addition to drafting, I should also consider what other skills I should dive into and also how I would like to apply myself in the longer term. From my perspective, I've only done work in two IP roles and thus my "world of IP" may be limited in thinking -- patent mining and IP "strategy". The former is self-explanatory, and the latter is a mix of landscape analysis, freedom to operate analysis (clearly the unofficial kind), coming up with product design workarounds to infringement, and business strategy. I assumed that IP strategy work was for the "IP attorneys" and that I could not get into it (or not be seen as valuable enough to hire) without a law degree.

In summary, it sounds like:

1: drafting/prosecution is just one skill, and it can be a good one
2: search deeper into world of IP skills worth acquiring before applying for a job
3: a BS in bioengineering from a top school + USPTO registration + 3-5 years of IP background skills is not unique or in high demand, so be willing to to work hard in whatever IP role I find before getting a better role of my choosing

8
Hi all,

This is a great forum and I love reading the posts. I hope to be a contributor in due course.

I'm looking for advice on the fundamental skills that I should acquire in the next few years. Here's my background and thought process, in a nutshell.

Background:
2010 grad in bioengineering from an ivy league, worked in an unrelated sector (renewable energy/biz dev/product dev). I have been doing remote or part time work for the past 4 years, and so far it's been quite good for cash, experience, and my personality. My IP experience started in 2012, and I spent 2 years building an all-things-energy patent portfolio for a client. I now also have 1.5+ years of IP strategy experience for a startup. I would label these jobs as IP 'ancillary' services. They are useful for strategy and are good, payable skills in their own right, however, they don't teach me how to file and are probably of limited importance in terms of being hired by a company.

I'm at the point this year where I have some financial breathing room, and I decided that I want to go deeper on the tech side as well as learn how to file patents. IP has always been pure fun, and I want to do more. I feel confident that I can do a good IP landscape analysis as well as other "analyst" tasks. I helped review a few patent drafts as well.

Idea
I just passed the patent registration exam (yesterday!). I have no experience in prosecution. I think the next monumental step is to learn how to draft a good patent, and my current thinking is to dedicate the next 2-4 years to working in a job that allows me to do so.

Questions
So here are my big questions:
What would the "ideal" next job for me be (company/role)?
What skills should I absolutely pick up?
How long should I expect to be learning these skills for?
Is it possible/low-downside to do these jobs remotely or part time?
Should I pick up a masters in something more technical?

Current Job Apps
Right now, I am interviewing for in-house IP 'strategist' positions. The role is to help out on the biz strategy side as it relates to IP filing, take information disclosure forms from scientists, and presumably draft patents to hand off to outside council for filing. Is that the best first job after passing my registration exam? Is it better to find a law firm that will take me in and train me to draft 40+ applications in 2 years?

I plan on making a law firm and an in-house IP resume version, and mailing them out to both types of companies soon. I'm not tying myself down to any geography, nor do I mind if I work remotely, physically, or half-time. I've done all before and I love the flexibility for my lifestyle, however, I'm aware that it's rare to find such freedom. I'm hoping to find the best training possible, and I'm willing to put in the effort. What I don't know is what specific skills I should be chasing after.

Pipe Dream Ambitions
Lastly, and very much a dream -- is it reasonable to assume that after 3-5 years of doing this kind of work, I could potentially branch off and do this kind of work remotely and earn a decent living?

Advice and personal experience stories will be greatly appreciated.

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