For people starting out in the patent field, virtually all job announcements require some patent prosecution experience. A typical requirement is, for example, at least 2 years of experience in prosecution. I get it. What employer wants to invest in training only to see a person slip away once they can finally do something useful. Rather, you’d like to on-board the person, get them working immediately and discover what gaps may exist from their past experience and work to fill them in. Great idea, except it is hard to pull off, especially with 1500 or so newbies entering the patent professional ranks each year.
Another issue is “mentoring”. Always promised and (almost) never delivered. The new generation of patent professionals seems to me to want more and regular feedback as to how they’re doing and encouragement as to next steps. All good in theory – but one size does not fit all, and time is always at a premium during the work day. After hours interaction is also hard to come by owing to the long days already recorded and the need for some work place/home place separation. So how do you handle the foregoing issues as an employer and/or how can you get a jump on these issues as a potential employee? Training? Internships?
Internships are a good idea if you have the time and inclination, and even better if, while in school, they can translate into credits toward a degree. While you might not be learning and doing the nitty gritty it takes to do the job you hope to have, you’ll at least be exposed to many of the issues typically encountered and learn from watching those responsible. A great opportunity for those who are either “patent curious” or “patent serious” is the externship program run each summer at the USPTO. My son did this externship as a Junior/Senior year transition as an aerospace engineering undergrad. He interned in the Design area, and then went back and became an Examiner in the utility area. He is now in law school and looks forward to joining the ranks of us in the near future. But, family aside, I recommend this to many prospective patent people as I speak at law schools across the country. The patent business is terrific, in my view, but not necessarily for everyone. This is especially true of being a USPTO Examiner. It is a job unlike any other. Hence, witnessing aspects of it first-hand provides a much better basis to make decisions going forward and gauging whether interest can likely become vocation.
Clerking of any sort at any patent related enterprise, public or private, is also an excellent first step for the same reasons as the USPTO externship mentioned above. Clerking introduces you to the vocabulary and process of law in context. You get to know, again, what is going on and even if you are not drafting work product, you interact and support those who are. And if, by the end, you do get to write a portion of a brief, decision, amendment, or application, so much the better.
All the foregoing works if you are proximate any of these opportunities. And, even if you can avail yourself of these things, they still do not equate to 2 years of experience. So, how about some training or classes or books. Sadly, most training you’d find helpful exists, if at all, internally, at most enterprises, and available CLE is either too specific, i.e., a single case study, or too generic and high level and geared to those with the experience already extant. Classes would be good, if available. But, in my experience the patent realm is a mile wide, i.e., there are a few of us spread all over, but only an inch deep. Hence, only a few loci exist where “classes” would make sense. Books are good, and PLI, where I have taught for 20+ years has a terrific IP library with many titles that should be at your elbow as they are at mine. Seriously, if your firm does not have a copy of every PLI IP title in their library, go talk to whomever is in charge of such things and “make it so!”
Gene Quinn and I have talked about this need gap as we have traveled and taught across the US for these past 18 years, and have long talked about a course to fill that gap for people getting started; and, also alleviate the concern for those hiring such newbies that they cannot “hit the ground running”. Our suggested solution is a 21 hour course that we call Patent Practice Training for Beginners. The course is delivered in 3 hours increments over six days during a two week period. All of the lectures are delivered “live” on the web — nothing is pre-recorded. Each day also includes a mentoring/question segment at the end of each session, which runs at least 30 minutes but frequently goes longer so every question gets answered. To a student they have all found these mentoring sessions extremely helpful, and although optional attendance has been 100%.
We’ve given the course, by now, a handful of times and received good feedback. It is sort of the Goldilocks solution: not too long or short, covers every USPTO issue, and provides examples and a review of every paper that can be filed. Students also get a significant discount on the two best PLI titles to get you started in prosecution.
In my estimation, this course solves two issues. One, the experience gap, which likely brings a confidence gap, and the mentoring gap. We provide web access to monthly mentoring sessions for the year after the course. When I left the USPTO as a former examiner in January 1987 and headed for Cushman, Darby and Cushman, the prior USPTO experience provided a huge confidence boost. Even if I had never written first hand, an amendment or application, I had seen many and had been on the other side of the prosecution equation. As for mentoring, there was none. But fellow Associates filled the gap (sort of – after hours – at the Hay Penny Lion pub downstairs), and whatever partner you did do work for, if you did well, would keep giving you work and, if you did poorly, or required too much feedback, …. the work stopped. Ah, good old sink or swim. So, if you swam well enough, often enough, you got a raise and were kept. If not…… But that was so 30 years ago, this is now.
It seems to me a firm would welcome the chance to buy neutral training that boosts experience and knowledge and doesn’t cut into the work day and eliminates their need to organize and staff and provide the same internally. If a person leaves at the end of two years, they are out some training costs, but have had productive work in the meantime.