Examiner seeking advice for becoming an agent

[two banks of four]

For me it's the hoteling and the pension. I'm close to 15 years as an examiner.

The calculation is (average high three years pay * years *1.1%) if retiring at 62 or older.

At present max (160,0000 * 42 * 1.1%) = $73,920 per year for the rest of your life.

When you factor that in, does the common patent agent or patent attorney pay even come close to what an examiner makes?

I agree with you that this really offsets the perceived salary difference if you are willing to make a career out of it. Let's look a little more closely.

I can quibble with your numbers a little (max GS-14 is more likely as GS-15 jobs are limited, so take the final salary at GS-14 step 10. Also anything more than 40 years is probably unusual...) but they are close enough to what I calculated. A GS-14 step 10 retiring at age 62 after 40 years would get around $67,000/year or $5,500/month.

To buy a non-COLA annuity at age 62 paying out that much costs about $1-1.3M today. A COLA obviously adds value, though it is difficult to say how much and quotes on such products are much harder to come by. Let's say for the sake of argument the pension would cost $1.5M to replace, and for this comparison we have to assume a pension from the government is equivalent to an insurance company product.

Can an attorney make so much more than an examiner that they will save an extra $1.5M by retirement? Of course they can, things like partnerships and stock options aren't available to an examiner and there is no salary cap (big law starts above an examiner's max and doubles it fairly quickly). But these things aren't available to most attorneys either, and the attorney will likely have to work many more hours to achieve this. Many would say the attorney's work is more interesting and fulfilling but it is likely more stressful, though these depend on the person. There are tradeoffs.

To be fair, that $1.2M in premium for the annuity is the present value if one were to retire now (or the future expected value for 30 years down the road).  If you assume growth rate of 6.5% for the previous 30 years, that would be about a contribution of $14,000 per annum toward the premium of the annuity.  Since this will need to come from out of pocket contributions (presumably one has maxed out the tax deferrable 401k contribution) it's about $22k pre tax per year.  That's the delta in pay needed for the outside position to be comparable to a position at the Office, and this assumes that there's no volatility involved on the outside. 

Health care in retirement is nothing to sneeze at either. And working just 40 hours a week at my house is awesome.

Good point.  Just realized that retirees can obtain FEHB benefit while paying reduced premiums.  Outlook for medicare is less than sanguine.

Of course the analysis will differ for those who will end up with fewer years in government, and there is a very real possibility that these benefits could be largely reduced in the next year.

That's the main uncertainty for positions at the Office, especially if the contribution to FERS goes up to 7% of income.  That'll eat an additional $9k per year, shrinking the $22k delta by about half.

[two banks of four]

I find a balance by doing the best job I can in the time allowed. I don't think most of Madison thinks they can get all three of quality/speed/cost despite what seems to come out from there at times. You'll have to do the same thing on the outside.  If anything, it's potentially worse. It's called "realization" on the outside.  You're constrained by prosecution budgets.  Being on the outside does not mean unlimited time.  Often, it means less time and writing time off. Plus, your client expects good quality and fast. The partners will cater to the client because they pay the bills.  At least at the PTO, the client can't go to another patent office.

Like fewyearsin, I made the choice to go from a good career as an attorney: T14 school, clerkship, biglaw, and in house, to the PTO.  The patent office strikes the right work/life balance for me.  Only you can decide what's the right balance for you.

Thanks for taking the time to share your views. 

The ideal situation would involve me getting a law degree and stay within the PTO doing something else.  In the best case, day-dreaming scenario, going to PTAB would be grand.  However, setting aside the fact that they don't really hire people from the inside anymore, who knows if it may even need people 5-7 years from now if its authority to conduct post grant hearings is stripped.

In addition to the same negatives you have now, you'll also have the negative of greatly increased work hours. For the vast majority of patent prosecutors, billing 1800 hours works out to far more than M-F, 9-5.

What would be a reasonable estimate of actual time spent for 1800 billable hours?  Assuming 20-25% of time goes to overhead/admin issues, that works out to 45-48hr/week for a 50 weeks of work per year.

While I stick by my "far more than" statement, your mileage may vary. Being in the office 9 hours a day M-F is not uncommon.

Time spent in the office really depends on a number of factors, some of which are unknowable before you start work, and some of which are beyond your control.

Here are some factors:
- billable or billed: all firms care about billed, but some care only about billed
- client budget: high budgets gives more time to spend on the matter before time is cut
- non-billable tasks: time entry, bill review, secretary issues, firm committees, client development, professional development; these tasks tend to grow with seniority/responsibility
- personality: some people are extremely focused (work straight though with no lunch, no office chit chat and no personal business); some people can focus for a stretch but need regular down time; some people have trouble focusing at all and find it's late afternoon with little accomplished

Thanks for clarifying.  I think it's vital to learn about the less-than-optimal scenarios.  Had I known more about the negative aspects of graduate school research, I'd most likely have taken another career path.  "Horror stories" need to be told.

Out of curiosity, I've heard that some places require 2000 (and sometime more) hours for associates in prosecution.  How common are these type of firms?  If 1800 is already 50-55 hrs, 2000+ boggles the mind as it would be 60 hrs or more for prosecution work (as opposed to M&A)

[fewyearsin]

Re: the value of the annuity for examiners (and federal employees in general):
I've always estimated i at about 10% of pay.  It looks like others give it more of 15%.  Either way, it's not really as big a deal as seeing WOW, 1.5 MILLION DOLLARS!!!  And not many people work from age 20 to age 62 at the PTO.  My threshold for going back to the private sector is that I'd need to make 30%-50% more, depending on location.  And I might not make that right away, but it needs to be attainable within a couple years.

Re: the PTAB:
I've tried.  I have pretty good credentials for an Examiner, having worked at firms people know are good.  There last hiring sprees have been almost solely focused on getting current practitioners.  I don't know if they will go back to hiring examiners with JD.  I do know that some of the people from the outside are experiencing culture shock and probably paycheck shock.  I've heard rumors that many plan to leave, but haven't seen that materialize.  Who knows.

Re: billables of 2000+
Smaller botiques that focus on prosecution will have "reasonable" requirements, usually ending up with an expectation that you collect 3x your salary, which is ~1600-1800 hours.  Which is your 9 hour days.  Biglaw will require 2000+ hours.  Not just that, they will look down on you even if you hit 2000 hours because, like you appear aware, the litigation and other groups will be billing 2400 or 2600+ hours, so they are way more profitable to you.  My recommendation is to avoid biglaw if you want to do prosecution.

[lazyexaminer]

Re: the value of the annuity for examiners (and federal employees in general):
I've always estimated i at about 10% of pay.  It looks like others give it more of 15%.  Either way, it's not really as big a deal as seeing WOW, 1.5 MILLION DOLLARS!!!  And not many people work from age 20 to age 62 at the PTO.  My threshold for going back to the private sector is that I'd need to make 30%-50% more, depending on location.  And I might not make that right away, but it needs to be attainable within a couple years.

Re: the PTAB:
I've tried.  I have pretty good credentials for an Examiner, having worked at firms people know are good.  There last hiring sprees have been almost solely focused on getting current practitioners.  I don't know if they will go back to hiring examiners with JD.  I do know that some of the people from the outside are experiencing culture shock and probably paycheck shock.  I've heard rumors that many plan to leave, but haven't seen that materialize.  Who knows.

Re: billables of 2000+
Smaller botiques that focus on prosecution will have "reasonable" requirements, usually ending up with an expectation that you collect 3x your salary, which is ~1600-1800 hours.  Which is your 9 hour days.  Biglaw will require 2000+ hours.  Not just that, they will look down on you even if you hit 2000 hours because, like you appear aware, the litigation and other groups will be billing 2400 or 2600+ hours, so they are way more profitable to you.  My recommendation is to avoid biglaw if you want to do prosecution.

Re pension
The generally accepted rule of thumb is that you can safely take 4% of your portfolio per year for 30 years. Obviously an annuity is not money in the bank since you can die any time, so you can't just value it at 25 times the income, but I've read 15x is reasonable. So I don't think it's crazy to value a $66,000 income stream at a million dollars, or 15 times the income, for example. This is somewhat mental accounting, but also that's money you don't have to take out of your other accounts.

Not many people work from 20-62 at the PTO, for sure, so $66k is not the norm. I started at 21 so I have that option and it factors into my personal decisions, but I agree one can't factor that in when giving advice and I didn't mean to imply that the values I gave were typical. So everyone who cares about such things really needs to value this in their own way. Giving it little value may be appropriate, especially with Congressional uncertainty. And as noted, any value should be compared to what you could save over your entire career.

Re PTAB I also tried and have impeccable credentials for an examiner who never left (which obviously is not what they've wanted lately), so I think if the OP is interested in that he/she is going to have to leave. Though sometimes from what I hear I think it was a blessing in disguise not to get it. If the OP is worried about speed vs quality, I have not heard good things about their production requirements.

[steelie]

And not many people work from age 20 to age 62 at the PTO. 

FERS only gives you credit for 40 years.

You can "sell" your sick time for an additional 2 years.

[Tobmapsatonmi]

Re PTAB ... sometimes from what I hear I think it was a blessing in disguise not to get it. If the OP is worried about speed vs quality, I have not heard good things about their production requirements.

That explains why my last 10 appeals have come back with pretty much nothing more than "reversed for the reasons set out in Appellant's brief".

[bluerogue]

Re PTAB ... sometimes from what I hear I think it was a blessing in disguise not to get it. If the OP is worried about speed vs quality, I have not heard good things about their production requirements.

PTAB has a flat goal that roughly amounts to seven written decisions a month regardless of complexity. That translates to about 2 opinions a week if you consider holidays and vacation. In the two and a half days the judges have to read the art, arguments, file history, and write an opinion. Then the judges have to present their analysis to two other judges who may disagree and have independently reviewed the record. This means the judges also have to review four other cases for which they are not the lead judge. I did a detail with PTAB and seriously wonder if it's better than being a primary.

[fewyearsin]

Re PTAB ... sometimes from what I hear I think it was a blessing in disguise not to get it. If the OP is worried about speed vs quality, I have not heard good things about their production requirements.

PTAB has a flat goal that roughly amounts to seven written decisions a month regardless of complexity. That translates to about 2 opinions a week if you consider holidays and vacation. In the two and a half days the judges have to read the art, arguments, file history, and write an opinion. Then the judges have to present their analysis to two other judges who may disagree and have independently reviewed the record. This means the judges also have to review four other cases for which they are not the lead judge. I did a detail with PTAB and seriously wonder if it's better than being a primary.

I've also done a Detail at the PTAB (a requirement, personally, if you want to work there, it is basically being a judge for 3 months and you can see if you might like it).  I did both AIA IPR and ex parte.  The AIA is interesting, but I liked the ex parte more.  The AIA is much less flexible with your work schedule, and that's a big thing for me right now.  The ex parte was, in my view, better than being a primary.  Yes, the production is similar, and there is also politics for your rating (ratings are partially based on what other judges say about you).  But the judges doing ex parte combines what I liked best about being an attorney and an examiner. You get the flexibility and government benefits of an examiner, with the intellectual challenge of being an attorney.  Also, you don't have the worst of both.  The worst part of examining is searching (which is most of the job).  Judges don't search.  They review the record on appeal and determine whether Applicant/Appellant has demonstrated reversible error by the Examiner.  That's it.  They weigh evidence, they don't have to collect evidence.  Which I loved about patent prosecution - the Examiner does the work and narrows the world down to 2 or 3 references, and all the attorney has to do is find a flaw with those references or amend over those references, not the whole world of prior art.

[bluerogue]

The AIA is interesting, but I liked the ex parte more.

Ha, I was exactly the opposite.  I liked the litigation aspects of AIA far more.    But, you're right about the flexibility.  And, likewise, it's a big deal for me right now too, so examining it is. 

[fewyearsin]

The AIA is interesting, but I liked the ex parte more.

Ha, I was exactly the opposite.  I liked the litigation aspects of AIA far more.    But, you're right about the flexibility.  And, likewise, it's a big deal for me right now too, so examining it is.

While we're on the topic, I always thought that a great solution for the possible problem of having the same panel (1) decide whether to institute and (2) make the final decision, would be to create a panel of Primary examiners to review petitions and decide whether to recommend institution to the Board.  Mostly because I would love to be on that panel of Primary examiners.  Then the Board could run the actual case and make the final decision, but there would no longer be the complaint that the same panel did both the instituting and deciding.

[lazyexaminer]

The AIA is interesting, but I liked the ex parte more.

Ha, I was exactly the opposite.  I liked the litigation aspects of AIA far more.    But, you're right about the flexibility.  And, likewise, it's a big deal for me right now too, so examining it is.

While we're on the topic, I always thought that a great solution for the possible problem of having the same panel (1) decide whether to institute and (2) make the final decision, would be to create a panel of Primary examiners to review petitions and decide whether to recommend institution to the Board.  Mostly because I would love to be on that panel of Primary examiners.  Then the Board could run the actual case and make the final decision, but there would no longer be the complaint that the same panel did both the instituting and deciding.

I have heard rumblings (I can't actually recall if from inside or outside the Office) that some think the CRU should do it. We have experience dealing with threshold questions like that, most commonly the SNQ but we also used the RLP standard at the end of the IP reexam era. I would welcome that work and happily dump reissues back to the TCs.