Law Firm to USPTO Examiner and Back Again.

[newhart123]

I've worked in pat pros for about 5 years and I'm not liking it too much. My firm is poorly organized, I'm always stressed, and constantly having to file things super fast with little time given to draft/research (drafting "under the gun").

Recently, the USPTO is putting out job ads for Examiner positions. It would be a serious pay-cut for me, but I find myself still considering.

Ideally, at some point, I'd like to go in-house for a firm that has technology I like (circuits, optics, computer architecture...anything not software really).

If I become a USPTO Examiner am I "stuck" in that position? For example, if I examine patents for 5 years does will law firms or in-house firms consider me a competitive applicant for jobs? Or would I pretty much be stuck in the government line of work.

If I could Examine patents for 5-10 years then possibly transition back into private pros work, I may consider the PTO job (even with the large pay cut).

[ThomasPaine]

This has all been covered before, but ICYMI, here goes:

"If I become a USPTO Examiner am I 'stuck' in that position?"

Not necessarily.  But you're going to have difficulty getting out if you want to get out.  And that level of difficulty will increase with the amount of time you stay at the PTO.  And at some point the "quality" of place (e.g. firm or in-house) that you will be able to go to will diminish to the point where going there would be worse than staying at the PTO. 

"For example, if I examine patents for 5 years does will law firms or in-house firms consider me a competitive applicant for jobs?"

Five years?  If you stayed 5 years no firm worth working for would hire you (why would they when they've got their own home grown, or poached lateral, associates that didn't throw in the towel and go to the PTO?) and I would hazard to say no in-house gig worth going to would be available.  If the in-house folks were doing the recruiting themselves your resume would get immediately circular filed, and no head-hunter with any self-respect whatsoever would even considering presenting you as a viable candidate.  BTW, how do you plan to answer the question, "Why did you leave private practice after 5 years to go to the PTO, and why have you been there for the past 5 years?" You better have a darn good one up your sleeve, because it's 100% certain you're going to be asked.

"Or would I pretty much be stuck in the government line of work."

It's been said many times on this site, being "stuck" at the PTO getting paid GS-14 money to churn out form paragraph OA's and game the count system ain't the worst existence in the world.  In fact, it's pretty easy, and it gives you plenty of free time to spend with your family, on your hobbies, etc.  Don't think of it as being "stuck" so much as being "comfortable."  What's wrong with being comfortable?

[ThomasPaine]

"Ideally, at some point, I'd like to go in-house for a firm that has technology I like (circuits, optics, computer architecture...anything not software really)."

If that is your ideal situation, or what you think would be your ideal situation, then you need to get off your butt and start doing everything you can to get in-house.  ASAFP.  In-house jobs don't fall out of the sky into your lap anymore the way they did in the early years of the last decade.  (I'm speaking metaphorically, of course.  There are some very literal folks on this cite unfortunately.)  You can pretty much expect that looking for an in-house job will be a second full time job in addition to your firm duties.  You've been warned.

BTW, don't think in-house is sitting by the pool sipping daquiries (sp?).  All of the sh!t you complained about your current firm, and even more, and even worse, can be found in-house.  The big difference is that you don't have to bill your time for it.  Or try to bill your time for it.   

[khazzah]

I've worked in pat pros for about 5 years and I'm not liking it too much. My firm is poorly organized, I'm always stressed, and constantly having to file things super fast with little time given to draft/research (drafting "under the gun").

Recently, the USPTO is putting out job ads for Examiner positions. It would be a serious pay-cut for me, but I find myself still considering.

Ideally, at some point, I'd like to go in-house for a firm that has technology I like (circuits, optics, computer architecture...anything not software really).

If your goal is to go inhouse, what's your rationale for becoming an Examiner now? Why not try for in-house now?

If you're not ready for in-house now, identify what skills and competencies you're missing, work on that. If not at your current firm, somewhere else. But an Examiner position at the PTO is probably not that "somewhere else."

[Tobmapsatonmi]

newhart, listen to what TP and khazzah are saying.  If you want to go in-house, start looking and working on it now.  Don't run back to the PTO.  Other than really small companies who don't know what they want, firm-to-PTO-to-trying for in-house is a loser strategy.

Also, pay attention to comments like this: 

"BTW, don't think in-house is sitting by the pool sipping daiquiris.  All of the sh!t you complained about your current firm, and even more, and even worse, can be found in-house. "

[Itoen]

It's kind of odd that you've been working in a firm doing patent prosecution for 5 years and don't already know the answer to your question.  Would you hire a patent examiner for your job or an in-house position?

[ipupWEALLpFORip]

Getting an in-house gig is like getting your first job: The first one is tough, but possibilities open up after you have in-house experience. It really can take years to find your first in-house job.

In-house roles include taking over external patent attorney work (there's been quite an increase of these roles in the last few years), management of said work, along with licensing, litigation, invention harvesting etc...

Before going back to the PTO, why not look for other firm jobs as well as in-house gigs. I've never worked under the conditions you described, but I did switch from an OK law firm to a very good firm and was much happier after the change. I stuck around for 4 years, and then went in-house, and, again, really enjoy the change of pace 6 months in.

Best of luck to you.

[steelie]

Ideally, at some point, I'd like to go in-house for a firm that has technology I like (circuits, optics, computer architecture...anything not software really).

FYI, if you decide to be an examiner, you may want to work in pure software as they get significantly more time to do the job than EE-type units.

I have heard software examiners complains to their supervisors of not getting enough time, and the supervisor's response was "at least you aren't in the electrical arts".

[Tobmapsatonmi]

It's kind of odd that you've been working in a firm doing patent prosecution for 5 years and don't already know the answer to your question.  Would you hire a patent examiner for your job or an in-house position?

Guess it depends.  Many places bury the associates and don't let them have much contact with clients, especially decision makers at client corps.  I could see someone grinding away even after 5 years and not knowing if the sun came up from day-to-day, let alone what clients think about hiring what types of backgrounds for in-house positions...

[NJ Patent1]

Newheart:  "I've worked in pat pros for about 5 years and I'm not liking it too much. My firm is poorly organized, I'm always stressed, and constantly having to file things super fast with little time given to draft/research (drafting "under the gun")".  No "hoteling" at most law firms and corporations, although working from home a day or two a week may be possible.  Based on my (limited stint) in-house experience, you have to be there when needed.  I often describe that in-house experience as "running a walk-in IP law clinic"; and the VP + GC was a near daily patient.  Of course that was huge international chem/pharma company.

"If I become a USPTO Examiner am I "stuck" in that position? For example, if I examine patents for 5 years [or 10?, big difference] will law firms or in-house firms consider me a competitive applicant for jobs? Or would I pretty much be stuck in the government line of work."  Law firm-to PTO-and now want out of PTO?  To be ruthlessly blunt, I've done on campus and lateral screening interviews for a known boutique and, just personally, I wouldn't have touched that scenario with a ten foot pole (I valued MY job, unless you walked on water would have never presented to the committee, just sent a polite kiss-off). Too many other options on the desk.  Of course, you might get lucky with a growing small company wanting to take the plunge and hire an in-house patent attorney.  Every "rule" made to be broken.  I "bent" a few myself but confess "serendipity" played a big part. Never say never.

But for Pete's sake!  As noted above, why not go in-house now?  Lateral-out?  Skills need developing?  People who don't grow, shrink.  Why do I participate in this this forum and interact with "extended (virtual) colleagues"?  But if after 5 yrs of prep and prosc you don't have the minimum skills down, IMO you likely never will.  That disorganized firm might take you back.

"If I could Examine patents for 5-10 years then possibly transition back into private pros work, ..."  Hang-out a shingle?

I appreciate such decisions are not easy ones, each option has "negatives".  Best of luck, NJP1

[ThomasPaine]

"Many places bury the associates and don't let them have much contact with clients, especially decision makers at client corps.  I could see someone grinding away even after 5 years and not knowing if the sun came up from day-to-day, let alone what clients think about hiring what types of backgrounds for in-house positions..."

If OP is the type of associate who's been shoved in a corner for 5 years by the firm and never made any effort to get out of it, then I'd change my answer and say that patent examining may be perfect for OP.  But I wouldn't change my answer that if OP goes to patent examining, OP is gonna have to stay "comfortable" as a patent examiner.