Engineer transitioning to IP law -- guidance please!

Started by marko, 07-27-17 at 10:29 PM

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marko


  • BS in Chemical Engineering
  • MS in Engineering (niche degree; mix of mechanical, structural, chemical eng.)
  • ~10 years of engineering work experience, primarily oil + gas and consulting

As a casualty of oil+gas layoffs, I want to transition out of engineering and into a new industry.  All my research points to IP law as the best/most interesting path for me.  I've talked to a handful of tech specs, associates, and partners at large and mid-size IP firms, and the type of work (prosecution and strategy mainly) seems to be right up my alley.
Unfortunately, none of them seem to require technology specialists with my specific skill sets at the moment, and instead of waiting around for something to open up, I'm wondering if I just need to put myself through law school and jump to the associate level.  At the same time, I'm unsure whether doing this (from hopefully a top 15 LS) will ensure a solid job after graduation.  Thoughts?

I've read through a lot of threads on this forum, but I'd love to hear thoughts on the state of the current environment in the industry at the moment.  I'm a little wary of things being the way they were 10 years ago, where having a law degree meant being in tons of debt with barely a $40-50k job. 

Since I have zero patent experience and need to make myself more marketable, I've been thinking of doing the patent bar exam on my own or getting a head start on the LSAT.  Any thoughts on which one would be better?  Any advice on how to land a tech spec job vs pursuing law school on my own would be greatly appreciated as well!

Thanks!

midwestengineer

Quote from: marko on 07-27-17 at 10:29 PM

  • BS in Chemical Engineering
  • MS in Engineering (niche degree; mix of mechanical, structural, chemical eng.)
  • ~10 years of engineering work experience, primarily oil + gas and consulting

As a casualty of oil+gas layoffs, I want to transition out of engineering and into a new industry.  All my research points to IP law as the best/most interesting path for me.  I've talked to a handful of tech specs, associates, and partners at large and mid-size IP firms, and the type of work (prosecution and strategy mainly) seems to be right up my alley.
Unfortunately, none of them seem to require technology specialists with my specific skill sets at the moment, and instead of waiting around for something to open up, I'm wondering if I just need to put myself through law school and jump to the associate level.  At the same time, I'm unsure whether doing this (from hopefully a top 15 LS) will ensure a solid job after graduation.  Thoughts?

I've read through a lot of threads on this forum, but I'd love to hear thoughts on the state of the current environment in the industry at the moment.  I'm a little wary of things being the way they were 10 years ago, where having a law degree meant being in tons of debt with barely a $40-50k job. 

Since I have zero patent experience and need to make myself more marketable, I've been thinking of doing the patent bar exam on my own or getting a head start on the LSAT.  Any thoughts on which one would be better?  Any advice on how to land a tech spec job vs pursuing law school on my own would be greatly appreciated as well!

Thanks!

It will be very difficult for you to make the jump.  The demand for intellectual property services follow industry trends.  When an industry is down, demand for intellectual property services in that industry is down.  Right now, all of the major oil field services companies are slashing intellectual property services.  Accordingly, law firms that service major oil field service companies are not hiring because their customers are cutting budgets/projects.

marko

Quote
Quote from: midwestengineer on 07-27-17 at 11:16 PM
It will be very difficult for you to make the jump.  The demand for intellectual property services follow industry trends.  When an industry is down, demand for intellectual property services in that industry is down.  Right now, all of the major oil field services companies are slashing intellectual property services.  Accordingly, law firms that service major oil field service companies are not hiring because their customers are cutting budgets/projects.

Even though it would've made the most sense to do patent work for oil+gas technology applications, I am by no means married to that. 
I'm happy to move onto other chemical/mechanical engineering things.  Will that not be possible?

midwestengineer

Quote from: marko on 07-27-17 at 11:50 PM
Quote
Quote from: midwestengineer on 07-27-17 at 11:16 PM
It will be very difficult for you to make the jump.  The demand for intellectual property services follow industry trends.  When an industry is down, demand for intellectual property services in that industry is down.  Right now, all of the major oil field services companies are slashing intellectual property services.  Accordingly, law firms that service major oil field service companies are not hiring because their customers are cutting budgets/projects.

Even though it would've made the most sense to do patent work for oil+gas technology applications, I am by no means married to that. 
I'm happy to move onto other chemical/mechanical engineering things.  Will that not be possible?

It will be difficult.  Intellectual property work is much like consulting in that, at some level, you have to be sold to a potential client by a partner.  If your experience is primarily oil and gas, selling you to oil/gas clients will be straight forward.  In contrast, selling an oil/gas specialist to, for example, a consumer electronics company is difficult.

Additionally, the bar to entry into intellectual property work is quite high.  Firms view new highers with zero experience as very risky because of the high cost of training and, accordingly, do not pay well initially.  With your level of experience, I would expect that you would need to take a major (>50%) pay cut to even be in the running. 

For most people from industry, entry into the field is primarily through personal connections.  If you have them, you will have a chance.  Without personal connections, it will be very difficult.  This is especially true since you're trying to enter into a technical area that is already depressed to the oilfield downturn.

Lastly, I am surprised that you would be seriously considering trying to transition with zero patent experience.

marko

Will it be just as difficult after I get a law degree?  Or will a JD give me a lot more freedom and opportunity to move away from oil and gas?  I'm happy to work on chemical/mechanical/etc technologies.
And coming from oil and gas, I'm definitely expecting an initial pay cut; so I've made my peace with that.

Also, why such surprise that I'm trying to enter a new field?  I don't want to spend the rest of my life as an engineering drone, and this has been the most appealing career path.  I've talked to numerous people about it and done my research... it's not just a random selection. 
Any actual guidance on how I can move ahead without prior patent experience would be greatly appreciated.

Thanks.

trustme

You sound like me 13 years ago (same experience, same degree), and if I could go back and tell my old self some advice, this is what I'd say.

Unless you go to a really top law school (top 10 to 15), or go to a lower ranked school and get in the top 2-3%, you will probably have trouble finding a job that would justify the massive loans you'd need to make it worth it. I'm assuming you make at least $100K/year. Law schools are costing about $100K/year now, so your investment is on the order of $600K in lost wages & tuition. (I'm assuming you're not the rare bird that would get a full scholarship.)
Without discounting to NPV or without accounting for getting promoted in your current field, you would need to make a premium over your current salary of $20,000/year for the next 30 years, just to break even. Bear that in mind.

Well, OK, you say. I have looked at Biglaw associate salaries and they make, what, $180,000/year without bonuses. And once I wait 8 years and make partner, the 2 million I make a year will almost immediately justify it.

OK, let's take that argument. Assuming (a) you ace the LSAT and (b) your grades let you get into a top school, or (c) you get into a lower ranked school and work your way to the top*, you might be able to get a job at a biglaw firm. (Also, I assume that you will be able to find a large law firm willing to hire you at your age. I will be accused of grinding an axe here, but large law firms are loath to hire someone as old as you. And I don't see the kind of experience or undergrad degree that puts you at a competitive advantage.)

* - Remember that fall 1L grades act as a sorting system. If you don't do great in fall 1L grades, it's going to be very difficult to                               recover. Big law firms start the hiring process based on fall 1L grades. Also remember you're competing not against engineers anymore, but Philosophy and English majors. And everyone tries hard in law school. Competition is truly cutthroat at the lower ranked schools. Everyone thinks they're going to be in the top 10%.

Do you have any idea of the type of hours you're going to have to put in at Biglaw? 80-100 hour weeks are not uncommon. I am always getting emails from our outside counsel on weekends, holidays, late at night, etc. And most do not make it as partner. You have to fundamentally be able to bring your own business into the firm, and most fall by the wayside long before that.

Ok, so you say. I'm happy just to get a job at a smaller patent boutique. They make decent money. Maybe not as much as the big boys, but they can do well for themselves. This might be an option for you, but it's far less certain. Your degrees are not much in demand and job security is going to be an issue for you unless you have your own clients. And that $20,000 premium over what you could earn as an engineer is never going to go away. In lean years you might not take much home.

What I would suggest you do is try to work for the USPTO as an examiner. They make decent money and if you like the work and do well, you will find it easier to transition to a job as a patent agent at a law firm. Unfortunately, the PTO does not tend to hire lots of Chem Es. Have you thought about trying to move up in your current profession?

I mean honestly, for me it's not even close. Going to law school was the biggest mistake of my life. I really hope you go into this with your eyes open. (When I was applying I got told a lot of bad advice and relied on it.)

Tobmapsatonmi

QuoteWill it be just as difficult after I get a law degree?  Or will a JD give me a lot more freedom and opportunity to move away from oil and gas?   

Hi Marko.

The law degree won't help (in any way) the disconnect between your technical expertise and industry demand.  If there's still low demand for ChE patent prosecutors when you graduate law school, you're stuck with that fact.  And offhand I don't know what would happen to increase it.

A law degree from an elite school, though, may open other doors at larger law firms (patent litigation, transactional work, what-have-you).  And if there's any demand for ChE patent prosecution, generally speaking, at the larger IP-specific firms, of course you with an elite degree are more likely to get picked than you with a TTT degree.

There's also a fair bit of ageism in law.  Some argue it's less in IP than in general law, and maybe so, but it's still there.  I hate to encourage anyone to go to LS right now for a patent prosecution career, other than maybe EEs and CS/Comp-E types.  Even if you get a full ride, I would not encourage you to go this path unless you've dug into the law in general enough to know that you'd be satisfied doing something other than patent prosecution with your JD.

All that said, do get the patent bar out of the way and start floating yourself as a would-be patent agent.  Find out what sort of interest you draw.  If you get a job, great.  If you can't buy a job as a ChE prosecutor, though, think harder about what you expect LS to do for you and what you'd be happy doing with the JD, even if no one wants to employ you as a patent prosecutor.
Any/all disclaimers you see on this forum used by members more experienced and/or smarter than I, are hereby incorporated by reference as if fully set forth herein.

I'm doing well as of 08-09-18 @ 18:38 hours, and regret only not getting that 1000th post. Hope all are doing well indeed! Thanks!

Robert K S

I don't have the same concerns everyone else in the thread has.  Even with your less-than-ideal educational background and age, you can still make a good career of patent law if you have the passion.  This is the sentence that worries me most:

Quote from: marko on 07-27-17 at 10:29 PMAll my research points to IP law as the best/most interesting path for me.

A career path shouldn't be pursued because after doing some research it seems that it checks off an appropriate number of boxes.  You either have to love what you do, and pursue it with a passion, or, absent that, have a mentor who loves the work and instills that love in you, or at the very least is very good at it and can rub some of that off on you.

Do you love patent work?  Do you love figuring out what makes inventions unique?  Do you love arguing?  Are you good at writing and communicating?  Very fine points are often involved in patent law--are you thrilled about finding small distinctions and elaborating on them in a way that is expressive and persuasive?  If you don't love the idea of spending your life protecting inventions for inventors, then do you at least have a mentor who can nonetheless make you very good at it?

If you're not sure, you might consider passing the patent bar and working as a patent agent for a year or three before committing to law school.  In the scheme of things, 3-4 years is nothing, but $100-200k is not.
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.

Tobmapsatonmi

Quote from: Robert K S on 07-28-17 at 11:36 PM
I don't have the same concerns everyone else in the thread has.  Even with your less-than-ideal educational background and age, you can still make a good career of patent law if you have the passion. 


I'm not sure passion will pinch-hit for subject matter match.  I think you've mentioned at some point that you're in a mid-sized firm, so let's call it 30-40 agents/associates/partners for an average mid-sized firm.

How many of your agents, associates or partners are chemical engineers?  If any are, how many of them entered the patent field less than 10 years or so ago?
Any/all disclaimers you see on this forum used by members more experienced and/or smarter than I, are hereby incorporated by reference as if fully set forth herein.

I'm doing well as of 08-09-18 @ 18:38 hours, and regret only not getting that 1000th post. Hope all are doing well indeed! Thanks!

Robert K S

I went through our roster.  The answer is one, and the attorney completed J.D. in mid-'90s.  I agree that undergrad degree is the No. 1 factor in marketability as a patent attorney.  But there are alternatives to joining a law firm.  OP might find an in-house spot with some digging around.  While it may be difficult to find a position, and the search may require time in absence of connections and luck, it should not be impossible for someone who is dedicated, talented, willing to move, etc.
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.

midwestengineer

Quote from: marko on 07-28-17 at 08:55 PM
Will it be just as difficult after I get a law degree?  Or will a JD give me a lot more freedom and opportunity to move away from oil and gas?  I'm happy to work on chemical/mechanical/etc technologies.
And coming from oil and gas, I'm definitely expecting an initial pay cut; so I've made my peace with that.

Also, why such surprise that I'm trying to enter a new field?  I don't want to spend the rest of my life as an engineering drone, and this has been the most appealing career path.  I've talked to numerous people about it and done my research... it's not just a random selection. 
Any actual guidance on how I can move ahead without prior patent experience would be greatly appreciated.

Thanks.

Obtaining a law degree will not meaningfully improve your chances of transitioning.  It just comes down to industry demand.

Additionally, obtaining the law degree starts the business development clock.  It's up or out in less than 10 years.

If you don't have connections and you don't have a high demand technical degree, your best chance is mass mailing every firm you can find.  You will need to spread your net far and wide.

Lastly, if you think that being an engineering drone is bad, I think that you're going to be shocked once you become a patent prosecution drone. 

Tobmapsatonmi

Quote from: Robert K S on 07-29-17 at 12:46 AM
I went through our roster.  The answer is one, and the attorney completed J.D. in mid-'90s.  I agree that undergrad degree is the No. 1 factor in marketability as a patent attorney.  But there are alternatives to joining a law firm.  OP might find an in-house spot with some digging around.  While it may be difficult to find a position, and the search may require time in absence of connections and luck, it should not be impossible for someone who is dedicated, talented, willing to move, etc.


Hi RKS, thanks for digging into it and responding.  I agree it's not impossible, but think of it more as a situation of starting off with one foot in a concrete block. 

But who knows, in 3-4 years maybe something exciting will happen in the ChE-related fields and we'll find ourselves once again in relatively high demand.  Daniel Shipstone will invent his everlasting gobstopper of an energy storage unit and lots of companies will compete to make their own versions of the technology. 
Any/all disclaimers you see on this forum used by members more experienced and/or smarter than I, are hereby incorporated by reference as if fully set forth herein.

I'm doing well as of 08-09-18 @ 18:38 hours, and regret only not getting that 1000th post. Hope all are doing well indeed! Thanks!

fewyearsin

Here's a quick test - pretend that you have just graduated from law school.  Go online and try to find a job.  What is available?  What qualifications are they looking for?  If you struggle finding a job now, things will not change when you actually have a degree. 

The best advice I've seen on here is to take the patent bar and become an agent at a firm, if possible.  I've known a few people who went this route and quickly figured out that patent prosecution was not for them.  Because they went in as agents first (no law school), they didn't waste 3 years and $200,000.00 to find out.  Instead they got paid $80k/yr to figure it out.  If you survive as an agent for a couple years, many firms will pay for night law school (with some sort of requirement to stay at the firm for X years after graduation).

As many have noted, it is a risky career transition.  Not impossible, but not automatic.  Don't wait until your last year in law school to figure out what you're going to do.  Start now!  (which you kind of have by asking questions on this forum :)
This comment does not represent the opinion or position of the PTO or any law firm; is not legal advice; and represents only a few quick thoughts. I'm willing to learn, let me know if you think I'm wrong. Seek out the advice of a competent patent attorney for answers to specific questions.

smgsmc

(a) About 12 years ago, I was in a similar situation; but different field, different degrees, and different years of professional experience; and I was a newbie on this forum posting for advice on how to transition into an IP career.  I have a BS, MS, and PhD in Physics.  At the time, I had 20+ yrs experience in telcom R&D, including optoelectronic devices and wireless systems engineering.  My experience with patents was limited to that of being an inventor and working with patent attorneys.  The telcom industry as a whole was still in a death spiral stemming from the InterNet Bubble Burst of the early 2000's; my corp had instituted a weekly round-robin of layoffs; it had been going on for four years, with no end in sight ... time to clear out.  I was past the age at which law school would make financial sense, and I had no desire to go back to school at all.  I assessed several career options, and successfully made the transition to patent agent.

(b) I'll respectfully disagree with Robert.  Sure, ideally, you should base your career choice on your passion.  "Follow your passion!" ... that's what commencement speakers shout out to multitudes of fresh grads each spring, right?  And when you are young, have no strong financial constraints, and have the freedom to move around, perhaps passion should have the highest priority among the various factors affecting your career choice.  But as you grow older, have a family to support, and can't move around, passion needs to drop lower in priority; and making a more calculated decision on a career change is essential.  I've experienced at least three major job market upheavals, plus some minor downturns; and I've had at least three major career changes, plus some minor career shifts.  I started with a career I had a strong passion in; subsequent careers I had less and less passion in.  But, in each career, I was able to leverage my education and previous work experience; and I worked hard to succeed and excel, not merely get by.

I've never come across a kid who said, "When I grow up, I want to become a patent attorney."  To become a patent attorney, you need a bachelor's (or equivalent) in a suitable science or engineering degree.  I've never come across anyone who initially got a suitable degree with the express intent of later going on to law school to become a patent attorney [there have been posts in this forum from attorneys without a suitable degree who have considered returning to school to get a suitable degree in order to become a patent attorney].  Instead, typically someone gets a suitable degree with the express intent of pursuing a career in science or engineering.  Then, when, for whatever reason, his initial plan doesn't work out, he re-assesses his options, and heads off to law school to pursue a career as a patent attorney ... as Plan B. 

Judging from your first post, I would guess you are in your mid 30's (is this correct?), unless there are anomalies in your background.  If so, you are probably too old to put passion first, yet too young to put passion aside (i.e., you're too far away from retirement to be stuck in a job you dislike).  But you're young enough to defer the decision to enter law school. 

(c) Regardless of what the job market now is for patent attorneys with your background, who knows what the job market will be in > 3 yrs, should you go to law school?  I've seen job markets invert within 2 yrs.

(d) Tech specs generally have a PhD.  Remember, a patent attorney needs a suitable bachelor's degree to become a patent attorney in the first place.  He doesn't need to be an expert in the technology, but he does need to comprehend the technology.  For applications on advanced technology, in which the inventors have PhDs, a bachelor's degree may not be sufficient, and an advanced degree, often a PhD, may be called for.  Whether your degrees and work experience qualify you to work as a tech spec, I don't know.  But, at the very least, it would be a tough sell, since you'll be competing with fresh PhDs who have decided to pursue a career in patent law.

(e) Regardless of whether you are a rookie tech spec, a rookie patent agent, or a rookie patent attorney, it takes about the same amount of time for a mentor to train you in patent prosecution (prep and pros:  drafting of new applications and prosecution of filed applications).  If your technical background won't land you a slot as a tech spec or patent agent, adding a JD to your resume won't help much, unless you go to a highly prestigious law school.  Passing the patent bar to qualify for a patent agent position instead of a tech spec position would be a plus:  tech spec positions are generally found only at large firms, which generally have less flexible hiring policies than small law firms.  Passing the patent bar indicates to a small law firm that you are serious about a career shift to patent law; they don't want to take the risk that you'll scamper away once the technical job market in your field rebounds.

<<exceeded post length; to be cont'd below>>

smgsmc

<<cont'd from above>>

(f) Getting a position as an in-house patent attorney is real difficult.  Often experienced patent attorneys in large law firms get tired of the rat race and seek in-house positions for a better balance of work and personal life.  At the same time, depending on the phase of the moon, many companies have been cutting back on in-house staff [companies seem to oscillate between outsourcing work and bringing it back in-house].  Besides, with limited exceptions, in-house positions typically require patent attorneys with _ yrs law firm experience, so you're not likely to be hired directly from law school into an in-house position.  At one time, large corps did have programs in which scientists and engineers could transition to the IP dept; the corp would even foot the bill for part-time law school.  These programs, however, were generally limited to scientists and engineers who had been working for _ yrs with the company, not fresh hires.  These programs are also becoming rarer as large corps slash overhead and no longer cultivate long-term development of their employees.

(g) I agree with the advice to pass the patent bar and seek a position as a patent agent.  See if you can land a position at all, with your degrees and work experience.  If so, try it out for 3 yrs to see if you can stomach the life.  Then re-assess your options and decide whether you want to go to law school or not (some firms will pay, partially or totally, for part-time law school). 



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