Wherever I go I encounter individuals who are currently in law school, have recently graduated law school or are engineers or scientists looking to change careers and enter the profession as a patent agent. One of the most common questions I receive from these individuals is this: “Once I pass the patent bar exam, how do I learn to actually start practicing?” Like so many things in life, there is no substitute for experience.
Over the years I’ve advised many in various settings, and invariably as I speak with one person there will be others who begin eavesdropping. As a result, I thought I would put together a top 10 list of things that new patent practitioners should know as they prepare to embark on a career as a patent practitioner.
Without further ado, here is the list.
1. Patent Practitioner Training
For nearly 20 years I’ve taught a patent bar review course for PLI. Students have asked repeatedly what they should do next, and how to learn to practice. This is why John White and I designed Patent Practitioner Training 101. This course will provide new or recently new patent practitioners with all the tools necessary to hit the ground running. From interacting with clients to agreements, to handling money, to drafting applications, to writing patent claims and responding to Office Actions, this course covers it all.
We address everything a patent practitioner may need to do up to and including filing a Notice of Appeal at the United States Patent and Trademark Office (USPTO), including: obtaining clients, initial client intake, client agreements, handling money, opinion letters, patent searching, opinion letters, drafting patent applications, filing patent applications, responding to a restriction requirement, responding to a notice of omitted items, filing a general authorization, drafting and filing preliminary amendments, reporting office actions to a client, conducting examiner interviews, drafting and filing an amendments and responses, and options for keeping a case alive after a final rejection. At the end of the course each student will have dozens and dozens of examples.
2. How to Write a Patent Application
One of the most basic things any new patent practitioner needs to learn is how to draft a patent application. But writing a patent application is not as easy as many think.
PLI has a treatise titled How to Write a Patent Application, which is excellent. It is written for attorneys and patent agents, where Patent It Yourself is written for independent inventors. How to Write a Patent Application walks you through working with the inventor, doing patent searches, writing the specification, drafting claims and filing a patent application. I recommend this book for all newbies and have taught law school courses using this book as the text.
I also have a system that I call The Invent + Patent System™. It is also an excellent tool for learning how to write a patent application and I have used it for that purpose in law school patent drafting courses I’ve taught over the years. I also use this with my clients to collect information from them about their invention prior to even doing a patent search. This way I can get as much useful information from them as early in the process as possible. This leads to better patent searchers, fewer surprises, and a much higher quality patent application. Those who enroll in Patent Practitioner Training will receive 6 months access to The Invent + Patent System™.
3. National Association of Patent Practitioners
The National Association of Patent Practitioners (NAPP®) is a 501(c)(6) nonprofit trade association. The organization was founded by patent practitioners, mostly patent agents, who had an interest in forming an organization that is focused on procedure before the USPTO. NAPP supports its members by disseminating information via newsletter and its two e-mail discussion forums: the General Discussion Forum and the Patent Practice Forum™. The General Discussion Forum provides a forum for members to discuss a variety of issues from member-to-member referrals to Patent Law Reform. The Patent Practice Forum™ is focused strictly on patent practice issues and allows for an on-going daily discussion between members on issues related to practice before the USPTO, PCT Practice and Foreign patent practice. These discussion forums are extremely active, and members ask for and provide substantive advice on a daily basis. If you have a question someone in the organization will almost certainly be able to point you in the right direction.
It can be extremely difficult to find malpractice insurance for patent work, but NAPP has worked together with an Insurance company to create affordable malpractice insurance. Every patent agent, patent attorney or patent firm should join NAPP just for the insurance.
4. Finding a Job
There is no magic to finding your first job in the industry, but there are some things you can do that will put you in a position to be hired, whether full-time or part-time. First, you have to ask yourself what YOU bring to the table that is unique. If you qualify to take the patent bar exam chances are that you have some meaningful scientific background. Focus on those things that you know something about and do a patent search in order to find out which attorneys and which firms are operating in that space. Your resume will jump out far more if you target attorneys and firms that work in a space where you have some technical expertise. So, target those firms, and consider tailoring your resume for the job for which you are applying.
The way you get a job, and the way you attract clients, is through networking. There are numerous patent bar associations scattered across the country. Find one that is nearby that have regular meetings (typically monthly meetings) and join. I would not suggest that you arrive resume in hand, but certainly have business cards printed up so you can pass those out. Whenever you offer a business card the natural response is for the other person to offer you a card, so collect business cards and then follow up. Don’t expect to get a job but get to know people. You can then try and turn contacts into a job by gathering information. Perhaps ask some to review your resume and make suggestions or ask whether they know any firm or attorney that might be hiring in your area or in need of part-time assistance. The more you connect with those in the industry the more you learn.
6. Overflow Work
One way that many patent agents and solo patent attorneys pick up work is by being available to help other patent attorneys and larger firms with what is known in the industry as “overflow work.” An established patent attorney might find himself or herself overwhelmed with work several times a year. When your work pile gets too high you might need a little help getting through the work in a timely manner, but you might not have enough work to bring on an employee full-time. It is at least somewhat common in these circumstances to seek out others who might have some additional bandwidth to help you on a project by project basis. Perhaps create a first draft of a patent application, maybe go through a patent search and identify those references that are the most pertinent, perhaps create a first draft of a response to an Office Action, etc. In fact, some patent agents have their own clients but then receive a substantial amount of their work from a variety of other attorneys.
Networking and letting others know you are available to accept overflow work is a great way to get started when you are trying to establish your own practice.
7. Reading Patents and Files
One way you can learn about what goes on in a patent case is to read patents and then review file histories. As we all know, there is very little you cannot learn if you are willing to read and put in the time. Do a patent search to find some patents that you know something about from a technical standpoint and then read them. If you read enough patents, particularly well drafted patents, you will start to see patterns. When you find some patents that you think seem particularly well written go to Public PAIR and find the file history. Read the rejections given by the patent examiner and read the Amendments filed by the applicant’s attorney or agent. You might want to save some of the patents and responses that you find particularly interesting so that you can create your own file of examples.
8. Patent Searching
If you are going to do your own patent searching you will want to become familiar with the United States Patent Office patent search page. There is also an excellent Help Section on the Patent Office website to educate inventors on how to use the online search features. There is also another excellent (and free) site that you should use when searching – Free Patents Online. Whenever I search use both the USPTO and Free Patents Online. Perhaps the best thing about Free Patents Online is that they provide copies of the actual PDF documents, which contain all the images. Using the images on the USPTO website is cumbersome to say the least.
Google also offers patent search functionality with Google Patent Search, which is lightning fast (unlike the USPTO online database) but does not have that many search fields. Additionally, the most recent patents are not available on Google. What this means is you should not rely only on Google, but you really must use Google. The Google database covers patents that are issued all the way back to US Patent No. 1. This scope is much broader than either Free Patents or the USPTO. So, while you might not find everything, you really need to check yourself using the Google database.
If you do want to do your own patent searching you should really be sure to read Patent Searching 101 and Patent Searching 102. Both articles give more advanced tips. Most patent attorneys will use the services of a patent search firm, such as Planet Patent.
9. Client Trust Accounts — Accepting a Retainer
One thing that virtually every patent attorney and patent agent learn is that if you do not get the money from the client up front you are not likely to get paid without expending large amounts of time chasing clients for payment. At the end of the day you will also simply not be able to collect everything you are owed because clients will sometimes simply refuse to pay, particularly if you opined that their invention is not patentable. It is a sad reality, but the last person in line to be paid always seems to be the lawyer.
This is why most require payment in advance for the services to be rendered. What is critically important to understand, however, is that you MUST have a separate account that you use ONLY for the purpose of holding client money that has not yet been earned. This is called a Client Trust Account. You ABSOLUTELY CANNOT co-mingle business funds with unearned funds and you MUST have a separate account. For more information on accepting a retainer see Patent Practice 101: Representation Agreements and Client Trust Accounts.
10. Client Agreements
The minute a client contacts you to seek your advice or potentially hire you the attorney-client privilege (or agent-client privilege) attaches and everything you learn must be kept confidential. But what if you do not accept the case? You still must keep information confidential.
One particular problem arises, however, when the individual believes you have accepted the case. If the prospective client thinks you represent them then you do, regardless of whether you actually entered into a representation agreement or not. This is one of the many reasons why you want to make sure that everyone understands that representation will not be accepted or undertaken unless and until a written representation agreement has been entered into.
You will want a written agreement with everyone you represent that spells out the scope of representation. For example, if you are going to do a patent search and provide a written opinion you want to define that clearly so that it is understood that no further representation (i.e., the filing of an application) will be undertaken absent a further agreement and further payment.
For more information on client agreements see Patent Practice 101: Representation Agreements and Client Trust Accounts.