by Steven Oppenheimer
[Editor’s note: This article was originally published in 2008 in Oppenheimer Communications in six parts. Later, it was published with permission by Harrison Turner of the STC East Bay chapter in two parts: Part 1 and Part 2. I have received permission from Harrison and Steve, to republish this on our site. Thank you both! —Cynthia Lockley]
Steven is currently working as a Registered Patent Agent, USPTO Reg. # 57,418, in Washington D.C. His personal patents site is Oppenheimer Patents
After working more than fifteen years as a freelance technical writer, I discovered another career option that draws heavily on my technical writing background and potentially offers significantly better remuneration.
The purpose of this article is to help technical writers, engineers, scientists (physical, chemical, and biological sciences), and medical professionals decide if they want to explore this option.
What Is a Patent Agent?
Let’s start by defining patent and patent agent.
A patent is a legal document that describes a new invention. It characterizes those aspects of the invention that are "new" or "inventive." A patent has several parts, but the crucial parts are the detailed discussion of the invention (sometimes informally called "the disclosure") and the claims.
- The disclosure gives a description of the invention in sufficient detail that someone who is well versed in the field could build the invention based on the disclosure.
- The claims are a section of the patent that, through specific, structured legal language and conventions, precisely indicates the aspects of the technology that the inventor asserts are original, and that should therefore be protected by law as a unique invention.
In the United States, inventors are legally permitted to draft patent applications for their own inventions. Most inventors, however, recognize that an effective patent requires specialized training. As such, they turn to patent attorneys or patent agents, who are licensed to draft, file, and prosecute patents on behalf of inventors.
Drafting a patent application entails gathering necessary information from the inventors and writing the patent application. Patent prosecution entails a legal dance between the patent applicant and the United States Patent and Trademark Office (USPTO). The USPTO typically initially rejects all or most of the claims in a patent application. The typical reason is a prior public disclosure, in the form of a prior patent or other publication that the patent examiner considers to anticipate the claimed invention. In other words, patent examiners argue that someone else got there first. The patent applicants-typically represented by their attorney or agent-may then either amend the patent claims or present factual arguments that the claims are not actually anticipated by prior inventions. Sometimes the attorney/agent does a combination of both, amending some claims while trying to argue around other rejections. This dance can go through one or more rounds, and sometimes goes through administrative appeals within the USPTO.
Both patent agents and patent attorneys are licensed to fully represent inventors in all respects before the USPTO. From the standpoint of patent prosecution, there is no practical difference between a patent agent and a patent attorney. However, a patent attorney can represent an inventor in legal proceedings, which may take place in courts beyond the jurisdiction of the USPTO. Attorneys can also advise inventors about contractual and licensing issues and other legal matters that are beyond the strict scope of patent filing and prosecution. Still, there is a lot of work to be done just in the realm of patent filing and prosecution- more than enough to keep a patent agent very busy.
A patent agent, under the supervision of a licensed patent attorney, may also engage in "opinion" work, giving legal advice to clients about whether their inventions violate a patent claim of another patent (usually from another company or inventor) or whether a competing product violates one of their patents.
How To Become a Patent Agent
Drafting and prosecuting patent applications is not exactly the same as technical writing, but there is significant overlap in the skills. Certainly, it is crucial to be able to work with subject-matter experts (such as engineers or biologists) to gather technical information and to document the information in clear language. Drafting the patent claims also involves legal skills that technical writers must learn.
The United States has strict qualifying limits for patent agents. Although a law degree is not required, you must take a licensing exam administered by the USPTO. To qualify for the exam, you must have significant technical training in a field such as electrical engineering, mechanical engineering, chemistry, biology, physics, or medicine. Studies in mathematics are not acceptable, but computer science is. (A complete list of the allowed technical backgrounds is on the USPTO Web site.)
As such, the patent agent field is wide open to technical writers with the necessary academic training and to engineers, scientists, and medical professionals who want to make a switch and who enjoy working with the written word.
At a minimum, you must have an undergraduate degree or the equivalent in an appropriate field. My college degree was for a self-designed program of study; however, I provided the USPTO with documentation showing that I had essentially completed all coursework for a physics major. That was enough to qualify for the test. For all requirements for the test, go to http://www.uspto.gov/web/offices/dcom/olia/oed/examregist.htm and click the "General Requirements Bulletin" link.
The test consists of one hundred multiple choice questions. (Ninety questions are actually graded, and the other ten are "questions under development.") Studying for the test is an art form. In essence, the licensing test is not technical. If you qualified to take the test, it is assumed that you know something about technology or science. Instead, it is a test on law and administrative issues related to patents. It is very detailed, and the pass rate is not high. In other words, you really need to study for it.
Everything you need to know about patent law and regulations is in a book titled Manual of Patent Examining Procedure (MPEP), which you can download from the USPTO Web site. Unfortunately, it is about 3,000 pages long (really), and it is hard to know exactly what to study. When I took the test, I was able to study old tests, which you can also download from the USPTO Web site at http://www.uspto.gov/web/offices/dcom/olia/oed/pastexams.htm
In 2005, the USPTO switched to an electronic testing system. It no longer publishes recent test questions, and the existing tests (2003 and earlier) become progressively more out of date as the patent law and regulations evolve over time. However, I would not completely ignore those old tests. Although the questions and answers may become dated over time, the types of questions still reflect, at least in a broad sense, the kinds of issues likely to be raised in the future.
You can enroll in patent prep courses or you can mail order them. They are not cheap (expect to spend anywhere from $1,000 to $5,000), but the prep courses may help you pass the test if you are determined to make a career transition. For what it’s worth, I passed the test the first time by studying patent law books and old tests. Here is a link to a site for more advice about studying for the patent agent / attorney licensing exam:
http://www.intelproplaw.com/ (Go to the "forums" and find the discussions on patent careers.) [Editors’ Note: in 2013, that site couldn’t be found. You might try http://patentbarquestions.com/Key_Things_to_Know_for_the_Patent_Bar_Exam.] You can also get advice about patent law from discussion groups on Usenet. (See the newsgroup misc.int-prop.) Here is one site for course materials for the patent bar: http://www.patentpublishing.com/index.html [Editors’ Note: in 2013, that site is also dead. Try searching for study material in Amazon.com or Google.]
Career Opportunities as a Patent Agent
I did not immediately land work with a law firm after obtaining my license from the United States Patent and Trademark Office (USPTO). General-practice law firms and intellectual property boutiques seemed to be more interested in hiring recent law school graduates than experienced technical writers. I think the firms are simply not familiar with technical writers because few of us make the transition to patent work.
Patent Agents and Technical Specialists
That said, some patent law firms and general-practice law firms hire technical specialists (people with technical backgrounds) even if they are not licensed patent agents. Often, they are seeking people with advanced degrees , but some are open to candidates with a bachelor’s degree, especially if they also have technical writing experience. Some firms are also interested in people who have extensive experience as an engineer, scientist, or medical professional.
If you passed the patent bar before applying for work-that is, you are a patent agent instead of a technical specialist-you are likely to move ahead of other candidates who are seeking technical specialist jobs. On the other hand, even if you have not yet passed the patent bar, some firms may hire you as a technical specialist. The experience that you gain by working at a law firm can help you understand the legal and administrative issues that you will encounter on the USPTO test.
Experience is another issue. Many law firms want someone who is experienced in drafting claims and prosecuting the patent through the actual award. So, as with work in many fields, landing that first job may take persistence. (In my case, it took about six months from obtaining my license to receiving a job offer.) Once you have experience from that first job, more opportunities will open up.
So the bottom line is that some law firms (and some private corporations that draft their own patents in-house) are open to hiring patent agents or technical specialists. The income potential for licensed patent agents is very good. The salary for a starting position could be the same as that made by senior-level technical writers. A patent agent at two years can make as much as or more than a technical writer at 10 or 15 years. Because the position is licensed, it carries more cachet than nonlicensed technical writing positions.
From Patent Agent to Patent Attorney
If you do land a job with a law firm and decide to pursue a law degree, many firms will reduce your full-time work requirements while you attend law school. They may even help pay your tuition. So becoming a patent agent could allow you to transition from technical writer, scientist, engineer, or doctor to patent attorney. The transition would require a lot of work, but could lead to gratifying financial rewards.
The Washington, D.C. area is particularly fertile for patent work, because so much of patent work involves interaction with USPTO. (For example, it is convenient to be able to meet with patent examiners.) However, most large cities and major high-tech U.S. corridors have law firms that do patent work. Before deciding to pursue a career as a patent agent, you might want to investigate the career possibilities in your geographic area.
It is worth noting that you could become an independent patent agent. Companies typically require that you have experience before they send work your way. However, once you have the experience, you can probably set up shop as an independent consultant.
Working as a Patent Agent
I have been employed as a patent agent for close to two years [as of 2008]. In some respects, I am still learning the job. (There is a lot to learn!) Here are some things that I can share:
- Breaks and Pauses
If you work at a law firm, expect to juggle many projects for many clients at the same time. You will not work on one patent; you will work on 6 or 8 or possibly 20. The work tends to be stop-and-go. As a beginner, you will do some work on a project and have it reviewed. A client may send you preliminary information about an invention, you can start researching and writing, and then put the project on hold until you can interview the inventor or another subject-matter expert. After you draft the patent, it will probably be reviewed by a more experienced legal professional and by the client before final changes are put in place. Therefore, you can see the need to have multiple projects in the pipeline.
- Patent Prosecution
You can expect to be involved in patent prosecution; that is, you will reply to correspondence from the patent office. You determine whether rejections raised by the patent office are in fact valid. Based on your determination, you either revise the claims in your patent or argue the merits of the patent versus the prior references (prior inventions cited by the patent office).
Broadly speaking, the work calls upon the same kinds of writing skills, thinking skills, and people skills as technical writing. However, the writing itself is different. There are a host of legal requirements, both formal (things you must do in drafting a patent) and prudent (things that are not legally mandatory, but that make for a better, stronger patent application). You can expect to constantly encounter new technologies, and you will be called upon to grasp the essence of those technologies quickly.
Particularly challenging is the need to write more generally. As a technical writer, filling in the details was often crucial to clearly conveying an understanding of a technology. With patents, the goal is to define the invention clearly, but at the same time not to narrow the invention too much. The ideal patent "claims" the invention as broadly as possible. (The objective is to exclude competitors from gaining patents on inventions that are essentially or substantially the same, with only minor differences.)
Patent Examiner: A Related Path
The patent examiner’s job is to review patent applications and determine whether the applications meet the criteria for patentability (such as the invention being novel and not obvious). Patent examiners work for USPTO, which provides free training, so the job can provide the security typically associated with government employment. Moreover, by working at USPTO, you can automatically be licensed as a patent agent without taking the licensing exam. Some law firms may welcome your expertise, because you have worked "inside the system" and understand how USPTO operates.
At the time of Internet publication of this article (January 13, 2008), Steven Oppenheimer was a patent agent at a boutique law firm specializing in intellectual property. Mr. Oppenheimer specializes in electronics, software, mechanical, and business method patents. He may be reached at Steven@OPatent.com.
Notice is served that while Mr. Oppenheimer is employed as a patent agent at a law firm, and while he maintained a Web site for his (currently dormant) technical writing services, doing business as “Oppenheimer Communications” where this article was first published, there is no association between Oppenheimer Communications and the law firm. Nor is there any association between Oppenheimer Patents and the law firm. Further, the law firm is not responsible for the content of this article, and does not endorse any of the contents of this article.
This article is Copyright © 2008-2013 Steven C. Oppenheimer. All rights reserved. This article may not be reproduced or redistributed without the express written permission of the author.