What Advice Do You Have if I Want to Be a Patent Agent?

Question:

I am just finishing up a Ph.D. program, and I think I want to be a patent agent. What advice do you have?

Answer:

I see a ton of resumes from candidates who have recently finished up with their Ph.D. and/or postdoctoral research, and have decided that for the next step in their career, they want to become a patent agent (or sometimes technical specialist/technical advisor) at a law firm.

Being a patent agent can be an interesting, fulfilling, and generally well-paying career route, but breaking into the law firm world as a patent agent is extremely difficult.

For one, there is a lot of competition. As I mentioned above, I see a ton of resumes for would-be patent agents, the vast majority of whom have done little-to-no actual patent prosecution work. They may hold patents of their own, have written scholarly articles, published research papers, presented at conferences, etc. These are great accomplishments in their own right, but at the end of the day, law firms simply do not see them as equivalent to or substitutes for actual patent-drafting experience.

So the very first thing you should look to do if you are at all considering eventually moving into patent practice at a law firm is to get whatever direct patent-drafting experience you can find, whether it is your own personal patents, taking the lead on drafting a patent application for a development in your lab, assisting at a law school's patent clinic, or becoming USPTO licensed and finding applicants whose patents you can draft to be submitted, even if you eventually have them reviewed by or work in conjunction with a more seasoned patent agent or attorney.

I cannot emphasize enough that actual patent drafting experience is the very first and most important question law firms ask me as a recruiter when I submit a patent agent candidate to them. Unlike a university, law firms are very much a pure business, and when they spend the money to recruit and hire candidates, they are looking for a very quick return on their investment in terms of a capable employee who can do the firm's client work with little to no additional training or supervision.

Many firms are very picky about the type of patent drafting experience you have as well. In the patent law world, you may have drafted dozens of patent applications for software, but a particular firm's clients may be primarily hardware technology companies, and thus the hiring partner who services those clients may turn down an otherwise very qualified applicant with a computer technology background simply because they are looking for a more specific and direct "fit" with their client needs.

When researching potential firms, and especially if you have a "dream" firm in mind, it is important to look at the attorney profiles, representative matters, and other information on the firm's website so that you can tailor your resume, cover letter, and interview answers (should you get to that stage) to the firm's client base. It is not surprising that hiring partners will favor a candidate who both knows their business and will help make their lives easier and their practices more profitable.

There are very few firms who hire patent agent candidates who do not already have prior patent drafting experience, so it absolutely bears repeating that the best thing you can do for your career if you desire to become a patent agent is to seek out every opportunity possible to draft all or part of as many patent applications as you can to build your experience. Ideally you will be drafting patent applications in technology areas related to your degree, as law firms are also very picky about the particular degree a candidate has (i.e., I have seen firms turn down an exceptional patent agent candidate with a Physics degree who had extensive patent drafting experience in the electronics sector, simply because the partners were looking exclusively for a patent agent with an Electrical Engineering degree - it was what the firm's clients wanted in a patent agent doing their work, so that is of course what the partners wanted as well).

Secondly, you should become registered with the USPTO. This is a formal requirement for most law firms for their patent agents and technical specialists, and is a de facto requirement in the job market generally. Taking and passing the Patent Bar exam by no means will guarantee you a job at a law firm, but it will make you much more marketable as a candidate. Even if you already have significant patent drafting experience, becoming USPTO registered is still important because would-be clients of law firms like to see those kinds of credentials, and so firms who are concerned about attracting and retaining clients (i.e., every single law firm in existence), will want you to have that credential as part of your profile.

Finally, you should be prepared to be geographically flexible, ideally willing to relocate wherever the work is, and especially at the early stages of your career, wherever you can gain the best experience that will open up other opportunities down the road. Now, this may not always be possible given other life constraints (i.e., family ties to an area, a spouse has a job they cannot leave, etc.), but the patent law world is often so specific that there will be few-to-no patent agent positions for particular science or technology backgrounds in a given city depending on whether that city has enough clients who require patent law services that would support a medium-to-large size firm (or sometimes even a patent boutique).Even in a city as large as Los Angeles, there are relatively few patent agent positions when compared with Silicon Valley, simply because the technology sector client base is so different (although that is thankfully beginning to change with the rise of "Silicon Beach" and the relocation or expansion of many start-ups and established technology companies to the Southern California area).

Simply put, if you really want to do a particular kind of work, and you are facing intense competition from the dozens of other Ph.D.'s in your field (and there are literally dozens - we see resumes from newly-minted Ph.D.'s all the time for patent agent listings), you will likely have to be willing to make other sacrifices in terms of location, lifestyle, etc., for the opportunity to break into the world of patent law.

Looking for work as a patent agent? Check out the patent agent listings on BCG Attorney Search.

Summary: I am just finishing up a Ph.D. program, and I think I want to be a patent agent. What advice do you have?