Alternate Careers: Patent Agents and Intellectual Property Attorneys

Posted in Career Advice

Times are tough for many in the legal profession these days. However, the demand for patent experts including attorneys and patent agents is skyrocketing. Openings for patent attorneys account for more than 15 percent of law firm job openings while only 3 percent of lawyers in the US specialize in this area. The bottom line: it is a great time to be a patent attorney or agent in today’s tough economy.

Not surprisingly, many patent attorneys (and agents) usually have a background in science or engineering. And, because of the scarcity of qualified applicants many law firms are doubling their recruiting spending to meet the growing demand for specialists in intellectual property (IP) and patents.

One of the reasons for the growing demand is passage of the America Invents Act, the largest overhaul in theUSpatent system in the past 60 years. The legislation which changes how patents are reviewed and process is spurring competition between firms to higher IP specialist to ease the transition pain. At present, there are over 230 IP openings among more than 1400 lawyer positions nationwide. Many of the openings have been unfilled for over 90 days and more are added daily.

Currently, there are about 40,000 patent attorneys and agents registered with the US Patent and Trademark Office (USPTO). In order to register with the USPTO agents and lawyers are required to pass the patent bar examination. While registered patent agents have taken and passed the exam, they are not lawyers who are required to pass state bar examinations to become licensed attorneys. For those of you who may not know, you don’t have to go to law school to take the patent bar exam nor is a law degree required to take individual state bar exams (however, person who are not law school graduate are likely not to pass the state tests). Patent agents can prepare patents and prosecute cases with the USPTO but cannot litigate in court or draw up contracts. There are roughly 1.2 million licensed patent attorneys in theUSaccording to the American bar association.

The greatest demand for IP attorneys and agents is in information and computing technology and the life sciences. Persons with PhD degrees in the life sciences can sometimes find work at IP and patent law firms. Also, you may be able to find work at a patent examiner with the USPTO! PhD degree holders who have passed the patent bar are even more desirable. However a law degree plus a PhD degree will almost certainly guarantee you employment at most IP firms. That said, before you decide to go to law school, I high recommend that you talk with IP professionals or read a few dozen patent applications (they can all be found at www.uspto.org) in your spare time. If you find the reading interesting or manage to stay awake after reading the fifth application than patent law may be a good choice for you. If not, I suggest that you consider other alternate career options.

Until next time…

Good Luck and Good Job Hunting!!!!!!

 

Big Pharma and Biotech Assail US Patent Laws

Posted in Career Advice

Brand name pharmaceutical and biotechnology companies have been quietly spending millions to lobby Congress for changes in US patent law. Specifically, these companies want to overhaul the intellectual property rules dealing with the doctrine of “inequitable conduct”. When a company or individual engages in inequitable conduct, it means that the company or individual has misrepresented or concealed information with the intent to deceive the US Patent and Trademark Office (USPTO). In such cases, a federal judge has the legal authority to void the patent and declare that it is unenforceable. Not surprisingly, brand-name drug companies are lobbying Congress to eliminate or curtail inequitable conduct penalties. 

According to the New York Times, in the last 15 years the US Court of Appeals for the Federal Circuit (which handles appellate patent litigation) have ruled in the affirmative on 40 cases of inequitable conduct–14 of which involved pharmaceutical or healthcare companies. Similar rulings have been issued by federal district judges in an indeterminate number of cases that were not appealed (and never reached the Federal Circuit court). The article contends that some drug makers knowingly submitted false statements to the USPTO, inaccurately described experiments in patent applications or concealed information (usually prior art) that contradicted their claims. In one high profile case, the appeals court ruled that the Danish drug maker Novo Nordisk failed to disclose that it had not performed an experiment described in a patent application for human growth hormone. In another notable case, the court contends that Pharmacia (now Pfizer) used an “inaccurate and misleading” affidavit to win a patent for a new glaucoma drug.  Personally, I am aware of several instances in which companies willfully and knowingly failed to disclose prior art in patent applications that were ultimately approved.

Those of us in the biz know that patents are valuable commodities and that the financial stakes surrounding patent estates and intellectual properly are extremely high. A robust patent estate can either make or break a company. Nevertheless, in my opinion, if a company (or individual) cheats by falsifying, concealing or omitting pertinent information in a patent application, they ought to be penalized for it.  As one former USPTO commissioner, who served under George HW Bush puts it: “Patents can be very valuable. There are strong incentives to want to get them. Cheating occurs from time to time. The inequitable conduct doctrine says that if you cheated to get a patent, you should not be able to enforce it.”

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