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Author Topic: Career Advice: What are the essential skills I should pick up next?  (Read 4488 times)

kamilien1

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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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MYK

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Juggling is always a good one, and is often a hit at company parties.

Here's the thing, you write about wanting to learn to draft patents, but is this your long-term career path?  I'm getting the impression from what you wrote that you see it as just one thing you'd like to do.  It is a narrow skill, and there is never an end point where you finish learning it.  You can take that as your career, or you can get into more esoteric IP consulting niches.  To some extent, it helps to learn drafting and prosecution when you're looking at an IP career, but it isn't necessarily an essential step.  OTOH, getting a law degree helps when getting deeper into IP -- licensing, infringement, opinion letters, freedom-to-operate clearances, getting a handle on how copyright and trademark can also be used to secure IP, employment agreements, litigation. . . .  But anyone can be an "IP attorney", and so the competition is stiff.

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.

"learn how to draft a good patent" basically means going into patent drafting and prosecution.  You would need to find a law firm (or, rarely, a company) willing to hire you and mentor you in it.

Questions
So here are my big questions:
What would the "ideal" next job for me be (company/role)?
If you want to get into patent drafting and prosecution, then the "only" job is as a patent drafter/prosecutor.  You would need to find a law firm willing to hire you as a patent agent.  The job market is tough right now, and your degree is not a type that is in strong demand.

What skills should I absolutely pick up?
How long should I expect to be learning these skills for?
Patent drafting and prosectution.

Probably three years, minimum.
Is it possible/low-downside to do these jobs remotely or part time?
Yes, but usually only if you have already worked for someone for a while and they are willing to let you work from home (or wherever).

Should I pick up a masters in something more technical?
It wouldn't hurt, but it might not help.

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?
if by "branch off" you mean "work on your own", it's possible but difficult.  If you just mean work remotely, that is doable at some firms, but it really depends on how your boss feels about such things.
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"The life of a patent solicitor has always been a hard one."  Judge Giles Rich, Application of Ruschig, 379 F.2d 990.

Disclaimer: not only am I not a lawyer, I'm not your lawyer.  Therefore, this does not constitute legal advice.

kamilien1

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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
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NJ Patent1

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kamielien1:  It appears you have been making sufficient coin and having fun doing it.  Kudos!  I mean it.  It also appears to me that you are not 100% sure of just what you really want to do? 

I concur with all of MYK’s points – especially juggling (great life skill and potential source of weekend $$$ at kid’s parties) with one possible exception.  In my view, learning to draft a patent application is a career-long endeavor.  Been doing it for years and still learning; in this forum, Karen’s blogs, from case law, etc.  IMO the skills you should pick-up are legal analysis, legal argumentation, and legal writing – latter two go together – and IMO the learning never ends.  Claim drafting?  I learned here that there are law schools that teach such.  But I, and everybody I know (outside this forum) learned it as an “apprentice”.  Find a great master and apprentice yourself to her.  You have never drafted a patent application but will draft and “presumably” hand-off to outside counsel.  My thoughts and sympathy (and prayers?) are with outside counsel – maybe the client too.  Maybe I inappropriately underestimate you and you have in fact absorbed a lot reading lots of patents.  Rare, but can’t say 100% that it can’t happen.  Einsteins, Pavarottis, etc. do come along.   

Outside of corporate and law firms, working almost exclusively remotely is always a (remote) possibility.  Just need to be in the right place at right time in right situation.  A solid track record at prosecution, opinion drafting, strategy memos, whatever IMO being the likely prerequisite.  You have already demonstrated some “intellectual flexibility”.  A good thing IMO. 

As for finding "work arounds" to existing patents; back in day when I had belly-up-to-lab-bench we all did that, ignorant of nuances of claim construction of course.
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midwestengineer

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There are definitely good opportunities for remote work for law firms.  The firm I work for employs a substantial number of agents that telecommute from different states (a couple of attorneys also telecommute).  However, all were trained in firm offices before moving to remote locations.  This is similar to the USPTO flexible work location program.

IP work is service work.  If you're good at making clients happy, you will keep getting work and be compensated very well for your work just like any other service job.

IMO, drafting a good patent requires a deep understanding of the entire patent system and the goals of a client.  Apprenticing under an experienced practitioner is by far the best way to learn how to draft good patents.  The advice from the practitioner will save you an unbelievable amount of time when compared to learning through direct experience. 
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kamilien1

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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.



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kamilien1

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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.
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Tobmapsatonmi

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Hi kamilien1 - I don't think I've previously commented on any of your posts. 

But I do want to thank you for setting out your experiences here.  For one thing, it's frankly fascinating to read, but it's also I think very instructive for new people to learn different ways people have come at IP law and jobs relating to IP law.

Thanks much - please do continue to update us as you continue along your IP law related journey!
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Robert K S

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You can do online law school, but if you take a look at the bar passage rates for online law school students, I think you'll find it will not well prepare you to take the bar.  You will want to spend the money to take a BarBri course and you will want to take a full three months off work--that means no income for three full months--in order to study.  I think it would be optimistic to think you will pass the California bar--including the very difficult MBE standardized multiple choice exam--without doing this sustained, intensive prep work.  California is not the hardest bar exam, but there is a reason why it has such a low pass rate--they admit a lot of test-takers from online law schools.

Before you commit to paying for online law school, you might want to consider studying for and taking the LSAT and seeing if your score and undergraduate GPA can get you a full ride to a night program at a Tier 3 state-accredited law school.
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This post is made in the context of professional discussion of general patent law issues and nothing contained herein may be construed as legal advice.

MYK

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California runs its own state law school accreditation board;  as far as I heard, they're the only state that allows online law schools.  They also have brick-and-mortar schools whose diplomas are only valid in CA.

If you're absolutely certain that you won't ever want to leave, or that you'll at least be able to get licensed in other states based on reciprocity, then I guess the online schools might be worth it.  Otherwise, you should look into an ABA-accredited part-time school.  There are plenty of them in CA.  Downside is that they all seem to charge just as much as a T1 anywhere else;  IIRC Golden Gate was charging something like $65K/year (or maybe that was expected overall costs) back around 2010.
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"The life of a patent solicitor has always been a hard one."  Judge Giles Rich, Application of Ruschig, 379 F.2d 990.

Disclaimer: not only am I not a lawyer, I'm not your lawyer.  Therefore, this does not constitute legal advice.
 



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