Intellectual Property Forum The Intellectual Property Forum

Please login or register.

Login with username, password and session length
Advanced search  

News:

We are looking for moderators.  Message the admin if interested.

Author Topic: Moving to USA with patent prosecution experience  (Read 661 times)

dududeedee

  • Newbie
  • *
  • Posts: 3
    • View Profile

Thanks in advance to anyone who could help out with this: I may be moving with my partner to the USA from Southeast Asia this year and am curious about the prospect of finding a job in patent prosecution or relevant fields. I have a B.Eng in Biochemical Engineering, a grad cert in IP law and about 11 years experience in patent prosecution. From the brief search I've done online, it seems that job seekers are looking for CS/EE backgrounds, which I don't have. I intend to do the registration exam once I become a permanent resident (though it's not clear how long this would take...) What are my chances?
Logged

Tobmapsatonmi

  • Lead Member
  • *****
  • Posts: 995
    • View Profile
Re: Moving to USA with patent prosecution experience
« Reply #1 on: 02-07-18 at 12:35 pm »

Not sure about Biochem demand.  Certainly lower than CS/EE as you've already found.

With 11 years experience you should know who the major players are in the field, do your current clients and/or their competitors routinely patent in the US?  If so, start searching their recent patents and pubs at the USPTO databases.  Find out which firms are doing their prosecution, and once you get here target them billing yourself as an experience tech spec (technology specialist) who will become an agent once residency is established and you get the patbar out of the way.

Just thinking out loud here, but if you wanted to become a lawyer, is there any chance you could use your grad cert in conjunction with a US LLM to become barred in the state you'd be moving to?
Logged

MYK

  • Lead Member
  • *****
  • Posts: 4163
    • View Profile
Re: Moving to USA with patent prosecution experience
« Reply #2 on: 02-07-18 at 12:51 pm »

Depending on what language(s) you are fluent in (other than English), that might be a plus to a firm.
Logged
"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.

dududeedee

  • Newbie
  • *
  • Posts: 3
    • View Profile
Re: Moving to USA with patent prosecution experience
« Reply #3 on: 02-08-18 at 03:55 am »


With 11 years experience you should know who the major players are in the field, do your current clients and/or their competitors routinely patent in the US?  If so, start searching their recent patents and pubs at the USPTO databases.  Find out which firms are doing their prosecution, and once you get here target them billing yourself as an experience tech spec (technology specialist) who will become an agent once residency is established and you get the patbar out of the way.

Just thinking out loud here, but if you wanted to become a lawyer, is there any chance you could use your grad cert in conjunction with a US LLM to become barred in the state you'd be moving to?

That can be a really good idea as almost 100% of our work is incoming than outgoing so I have a list of the firms. One worry though is that all this while I had not really prosecuted anything specific from my field but a myriad of apps from mechanical, downstream to sciences, could be good to show that I'm versatile or bad because I don't have any of those apps under my name.

As for becoming a lawyer, it seems that US LLM programs require first degree in law. Don't think I could get an exemption from that requirement using the grad cert (GCIP). I actually toyed with the idea of part-time LLB as a possible venture into academia (because I enjoy doing research). But law schools here (Singapore) admits full time students only. Online/DL programs on the other hand seem iffy.

If the move doesn't happen this year, I could possibly get masters in IP management. But I don't know how helpful that would be. I'd really appreciate any further comments on this. 
Logged

dududeedee

  • Newbie
  • *
  • Posts: 3
    • View Profile
Re: Moving to USA with patent prosecution experience
« Reply #4 on: 02-08-18 at 03:57 am »

Depending on what language(s) you are fluent in (other than English), that might be a plus to a firm.

Sadly I don't know any Mandarin. 
Logged

smgsmc

  • Lead Member
  • *****
  • Posts: 2458
    • View Profile
Re: Moving to USA with patent prosecution experience
« Reply #5 on: 02-08-18 at 08:57 am »

Depending on what language(s) you are fluent in (other than English), that might be a plus to a firm.

Sadly I don't know any Mandarin.
What about Japanese or Korean?  There are firms in the US seeking practitioners fluent in these languages as well as Mandarin.

You said you've done prosecution in a variety of fields.  What about semiconductor wafer and device processing and fabrication?  There are major plants in Singapore, Malaysia, Indonesia, and Taiwan.  US semiconductor companies file for patent protection in those countries.  So if you are familiar with patent prosecution over there, that could help get your foot in the door of a US firm that does business over there.  Otherwise, as Tob mentioned, find out the US firms handling US applications for clients based in your part of the world.
Logged
 



Footer

www.intelproplaw.com

Terms of Use
Feel free to contact us:
Sorry, spam is killing us.

iKnight Technologies Inc.

www.intelproplaw.com

Page created in 5.114 seconds with 20 queries.