Experiences in patent law

[patentman]

Hey all. I'm about ready to graduate from law school with a concentration in patent law. I have 5 years experience in IP law currently, 3 as an Examiner, 2 in a large IP firm. I'm trying to decide whether I should accept an offer from my firm to continue on as a full associate or to go back to the PTO. Basically the Firm offer would be more money, but a heck of a lot of work. The PTO job is less money and less work (though despite what some may say, its not an easy job if you do it correctly) and basically affords a bit better work life balance.

In view of the above, I would like to here from anyone with experience in IP law what their experiences were, either at the PTO or in a law firm. In Particular I would like to here from people who have had experience in both large and small IP firms.

Thanks in advance.

 

[jpthomas]

I'm graduating in May and currently work for a boutique patent firm. I really like the small firm environment, lots of interaction with partners and one on one feedback. It also exposes me to a broad range of technologies, as we have fewer attorneys around to do all the work.

Anyways, I've heard that Examiners are very overworked and underpaid. I can't imagine choosing to be an Examiner over an associate at any firm, big or small. Especially since you don't need a law degree to be an Examiner. Why spend all that money on law school?? As a matter of fact, a few of my classmates are former examiners who left the PTO so that they could make the jump to working for an IP firm.

Do you plan on doing prosecution or litigation? I'm personally going into prosecution, as it seems the hours are fewer and much more flexible.

Good luck.

 

[patentman]

Originally posted by: jpthomas
I'm graduating in May and currently work for a boutique patent firm. I really like the small firm environment, lots of interaction with partners and one on one feedback. It also exposes me to a broad range of technologies, as we have fewer attorneys around to do all the work.

Anyways, I've heard that Examiners are very overworked and underpaid. I can't imagine choosing to be an Examiner over an associate at any firm, big or small. Especially since you don't need a law degree to be an Examiner. Why spend all that money on law school?? As a matter of fact, a few of my classmates are former examiners who left the PTO so that they could make the jump to working for an IP firm.

Do you plan on doing prosecution or litigation? I'm personally going into prosecution, as it seems the hours are fewer and much more flexible.

Good luck.

Hey, thanks or the feedback. My experience with firm life (I'm in a very large and well known patent firm) has been a mixed bag. The pay is great, certainly, but I have serious quality of life issues. I work full time during the day and then go to school at night. For obvious reasons, working 18 hours a day sucks. I'm so burned out right now that I have difficulty concentrating on anything, be it work or school.

I do 100% patent prosecution right now. Because I am a student, my firm asks that I earn 1500 billables (not billed, just billable) per year. That amount of hours is actually very very reasonable for prosecution work. Problem is, once i graduate, the billable requirement goes up to 2000 hours per year. Every associate in my firm that does mainly prosecution works from 7am-7pm Mon-Fri. and some hours over the weekend in order to make hours. In essences, while I would not have school to deal with, all the hours I would gain back from not having to go to school would be translated into hours at the office, which to me is not an acceptable tradeoff right now, particularly because my wife and I want to have kid next year. FYI, most prosecution associates are about 80% efficient, meaning that for 10 hours in the office, they can bill 8. So, to bill 2000hours in a year, you will have to work ~2400. Thats 8 WEEKS worth of hours more than 99% of the people in the world work per year. Not only that, but my firm wants a minimum of 200 non-billable "firm" hours. So that means that at a minimum, I would be in theoffice or at a work related function 2600 hours out of the year. Thats f'ing insane if you ask me.

Further, it is impossible to get a break from this job! I can't tell you how many times I've received eamils from higher level associates at 2am, not to mention the calls I recieve from these associates while they are on "vacation." As an example, a 6th year associate called me the other day to check on the status of a notice of publication (a very very minor thing). Thing is, she was sick and on vacation in Jamaica. I simply hate the fact that I am unable to escape work.

Re: Examiners being overworked and underpaid. I'm telling you from experience that that is BullSh&t. Being an Examiner is 100% about efficiency and organization. When I was an examiner, I produced at 130% of my quota each year and had a less than 3% error rate. Funny thing was, I could make my quota is four days. Granted, there are some examiners who are in crappy tech areas and who are legitamely overworked. But a large percentage of Examiners are simply lazy, or to out it bluntly, stupid.
~~
As for being underpaid, I disagree. If I stayed at the PTO, I wouldbe making ~the same amount as I am now (which is over 6 figures), with infiitely less stress, 4 weeks actual vacation, 2.5 weeks of guaranteed sick leave, and 11 paid holidays per year. Not only that, but the PTO has the best flex schedule around. I used to work from 6am to 330pm 9 days out of a biweek with every other frisday off.

Granted, there are disadvantages to being an examiner. For one, boredom is a major factor. Having a law degree however, enables you to move around a lot more within the office.

As for why I woul spend so much money on law school and be an examiner? First, I go to the cheapest tier 1 law school in the nation. Thus, while others may come out with 120k in student loans, I'll have ~15k. Second, if I can take advantage of the PTO's hotelling program, I am going to milk that for all its worth and if it eventually goes away I will have a degree that will enable me to do something else, just about aywhere in the country. So its a backup plan, if nothing else.

 

[Aharami]

not familiar with patent law. what exactly does an examiner do? and how does that job differ from an associate's job?

 

[patentman]

Originally posted by: Aharami
not familiar with patent law. what exactly does an examiner do? and how does that job differ from an associate's job?

Examiners are government officials who work for the United States Patent and trademark office. Their primary functionis to examine patent applications submitted by applicants. Typically, an examiner examines applications that are drawn to a technology that is suited to their background. I.e., when I was an examiner, I examined applications mostly drawn towards magnetic media (hard drives, flash memory etc.; 100% of seagate's perpendicular hard drive line is protected by patents that I issued). The Examiner reads the application, which contains claims defining the scope of the invention. The examiner then searches the "prio art" (basically any published document) looking for evidence as to whether the claimed subject matter is anticipated by or obvious over one or more references. If the examiner determines that the invention is anticipated or obvious, they communicate the position of the USPTO in this regard in the form of an Office Action. The Office Action is sent to the applicant, who is given a certain amount of time to reply. When the applicant replies, the Examiner considers the applicants' arguments and/or amendments, reconsiders the application for patentability, and then either issues a final rejection or issues the application to allowance. Once allowed, the applicant may pay a fee to have the application published as a patent.

Patent attorneys involved with patent prosecution (as opposed to litigation) are basically the representatives of inventors before the patent office. They confer with clients, draft applications, respond to office actions, etc. on behalf of the client. The work is in many respects very similar to patent examiners, only attorneys do not have to search the prior art, and their functions are much less specialized. In sum, a patent attorney involved with prosecution does some things that are very simlar to a patent examiner, but also does a lot of other things (i.e., write patentability opinions) as well. I could go on an on, but I don;t have the time to write everything down.

 

[Indolent]

my roomate got a job at the patent office right after graduation (bs mechanical engineering). It sounds like he makes decend money. He made it sound like most people only work ther for 4 to 6 years while getting a law degree, then go into patent law. It seems like you would be taking a step backwards if you already have a law degree and go work at the patent office.

 

[patentman]

Originally posted by: Indolent
my roomate got a job at the patent office right after graduation (bs mechanical engineering). It sounds like he makes decend money. He made it sound like most people only work ther for 4 to 6 years while getting a law degree, then go into patent law. It seems like you would be taking a step backwards if you already have a law degree and go work at the patent office.

I guess you could view it that way, but I fail to see how trading a little money for guaratneed vacation and improved quality of life is a step backwards. Couple that with the fact that I actually WANT to see my family, and I think you have little to no point.

Also, most people at the PTO do not work their whiel getting a law degee. In fact, for any given year, MAYBE 80 examiners are in law school. When you consider that there are almost 3500 examiners currently, I would hardly say that constitutes "most" people at the PTO work there for 4-6 years while getting a law degree. Moreover, the average retention time at the pto is curently about 2.5 years. Most people find the job boring. I never did, I just made the mistake of thinking that life would be better in a law firm.

 

[ajayjuneja]

You could also try working for a boutique law firm, like the berkeley law and technology group...

 

[patentman]

Originally posted by: ajayjuneja
You could also try working for a boutique law firm, like the berkeley law and technology group...

techincally I already work for a "boutique" patent firm. It just happens to be the largest boutique patent firm in the nation. I've thought about going in-house somewhere, but I don;t think that would correct my QOL issues.

 

[sohcrates]

go work at a boutique. take advantage of your speciality in IP. don't go back to the pto. i know a lot of people who get law degrees and go back to the pto and everyone is like "what are you thinking???"

unless you come back and can work in a non-examining function (which a lot of lawyers with previous pto experience do) . but don't go back to being an examiner

 

[everman]

If you don't like working at the law firm then maybe try to seek out an in house position at a tech firm. You might find a firm that will work with your quality of life requirements, or if nothing else then you can go back to the uspto. I'd probably look at in house options before going back to the uspto though.

 

[Aharami]

ok it seems to me that you are willing to take the lower pay for better quality of life - more vacation, shorter work week, etc. Here's my take on this. I assume you're still young. You are taking about having a kid with your wife soon. If you become an associate, you will have to put in the long hours now. But in eventually you will gain seniority and will be the one calling back to the office to check on things from Jamaica. You mentioned something about being able to become an associate (join patent firm) later in life. While that is true since you have the law degree, the longer you put that off, the longer it will take for you to make those calls from Jamaica. When do you think you will have more family responsibilities? Within the next 5 years, or after that when your kid is in school, etc. IMO you will have less family responsibilities in the recent future, so milk that earn to your highest potential. That way you will become even more financially secure.
Then as your kids start getting older and actually need a father figure in their life, you can become an examiner so you can spend more time with your family.

I dont think i worded all that right, but I hope you get the gist of what im saying.

 

[axelfox]

dang, 2000/yr billable?!

 

[patentman]

Originally posted by: Aharami
ok it seems to me that you are willing to take the lower pay for better quality of life - more vacation, shorter work week, etc. Here's my take on this. I assume you're still young. You are taking about having a kid with your wife soon. If you become an associate, you will have to put in the long hours now. But in eventually you will gain seniority and will be the one calling back to the office to check on things from Jamaica. You mentioned something about being able to become an associate (join patent firm) later in life. While that is true since you have the law degree, the longer you put that off, the longer it will take for you to make those calls from Jamaica. When do you think you will have more family responsibilities? Within the next 5 years, or after that when your kid is in school, etc. IMO you will have less family responsibilities in the recent future, so milk that earn to your highest potential. That way you will become even more financially secure.
Then as your kids start getting older and actually need a father figure in their life, you can become an examiner so you can spend more time with your family.

I dont think i worded all that right, but I hope you get the gist of what im saying.

I generally understand what you are saying, but I thinkyou might have misunderstood what I was saying. Having to call the office while on "vacation" in Jamaica is NOT a good thing. Just think about it. Would you want to work while on vacation? If so, more power to you. I can't think of anything worse. It would be one thing if it happened once in a blue moon, but this happens all the time in my firm. From what I here from friends in the industry, life is not much better in other patent firms. Its either a) work in a big firm and be a slave (albeit a well paid one) to your job; b) work in a small firm, and get a little better QOL but deal with the relatrively high risk of the firm going under or not having enough work; c) work in-house somewhere, which isn't really an option until you have quite a bit of experience (most corps want 4th or 5th year associates or higher); d) work at the PTO; or e) find another job.

As for having a family and maximizing earning potential for them. Dude, I make over 6 figures now. My wife makes close to 6 figures and doesn;t plan to be a stay at home mom. I can definitely take a 10% pay cut for better QOL and some vacation time and stilll have kids. Even if I took a 30% pay cut my wife and I combined would still make more than 3.5 times the average household income. More money is nice, but there has to come a point in time where it is not worth the cost. You couldn't pay me 5 million dollars a year to keep my current schedule after I graduate from law school. Imagine seeing your wife for 20 minutes a day during the work week, 15 of which is on the train in the morning where you are so tired you can;t speak to one another; the other 5 being when you wake her up when you get into bed at 1230am. I LIVE that life right now, and trust me, it sucks. No amount of money in the world could make me do that after i graduate. Once thing I may have forgot to mention is that I never expected to make over 40-50k/year in my entire life with my degree. I make more than triple that now. Thus the fact that my firm wants to pay me more after I graduate is not really the incentive that it might be for other people.

Finally, I fundamentally disagree with your comment about working my butt off until my kids "actually need a father figure." Its scientifically proven that children form attachments with their fathers well before they are up and walking around. To put it simply, kids need time with daddy as much as they need time with mommy, even when they are babies. Simply because society now accepts single parents as being part of the "norm" will never change that fact.

I've actually considered going into a completely different area of the law that has a rep for better hours and QOL, e.g., trusts and estates, real estate transactions (title searching) etc. Its just a bit hard to jump completely out of what you have done for the past 5 years. Anyone have any experience in those areas?

 

[patentman]

Originally posted by: axelfox
dang, 2000/yr billable?!

Yep. At 80% efficiency, thats 2400hours at work to get 2000 billables, plus my firms wants 200+ non-billable firm related hours. Thats ~52 hours per week at work, which equates to ~10 hour day 5 days a week, not including lunch. If that doesn;t sound too bad to you, remember that is the MINIMUM number of hours my firm wants.

If you actually calculate out the dollars per hour, its more efficient for me to work at the PTO
i.e.

Say PTO pays me 100k and I take all vacation (4 weeks), sick leave (2.5 weeks), and holidays (1.6 weeks) off. That means I took 8.1 weeks off, so I have to work ~44 weeks out of the year for 40 hours/week = 1760 hours worked. That translates to ~$56.82/hour

Ok, say my firm will pay 135k for 2000 billables +200 firm citizenship hours. If it takes me 10 hours to earn 8 billables, I have to be at work for 2600hours. That translates to $51.92/hour

OK, why the hell would I want to work in a job that is higher stress, for a longer period of time, for LESS money per hour?

And don;t give me the "but eventually you will become partner" spiel. Becoming partner in a patent law firm is like winning a pie eating contest where the prize is more pie. Its not as though those people work the same number of hours as the associates. If anything, they work MORE. Heck, one of the partners in my firm billed 3300 hours last year. Moreover, I see what these people do on a daily basis. I have no idea how any of them stay married. Moreover, their kids are generally raised by nannies.

 

[patentman]

Originally posted by: sohcrates
go work at a boutique. take advantage of your speciality in IP. don't go back to the pto. i know a lot of people who get law degrees and go back to the pto and everyone is like "what are you thinking???"

unless you come back and can work in a non-examining function (which a lot of lawyers with previous pto experience do) . but don't go back to being an examiner

I already work at a boutique.

As for people asking what people are thinking when thhey go back to the PTO, I can tell you what they are thinking. They are thinking I can actually have a life outside of work if I work at the PTO AND make a more then decent living while doing so. Except insofar as you need it to live, life is not all about money for many (probably most) people.

 

[sohcrates]

Say PTO pays me 100k

going back as an examiner doubt the highest they could bring you back would be maybe gs-11? even at a gs-12, at that rate, you'll looking at a clean 2.5 years++ to get anywhere near 100K no?

 

[AgaBoogaBoo]

all I know is that patent attorney's make a ton

 

[patentman]

Originally posted by: sohcrates

Say PTO pays me 100k

going back as an examiner doubt the highest they could bring you back would be maybe gs-11? even at a gs-12, at that rate, you'll looking at a clean 2.5 years++ to get anywhere near 100K no?

I am a former government employee with over 5 years eperience, 3 at the pto, so I am eleigible for reinstatement. I left as a GS-12 step 3, so that is the minimum they could bring me back at. Currently, a 12-3 is paid 71.5k. In 2007 the PTO is offering a 9% raise, which brings the 12-3 salary to ~78k. Also have to take into account thr 5% matching for TSP, which brings total compensation for a 12-3 to ~81k total compensation in 2007).

Admittedly, it would be tough for me to take that kind of a pay cut. However, given my experience and education I have been informed by HR that they could deviate substantially upward within the GS-12 range. If they brought me back at a 12-7 or high (step 7= 80k in 2006, or 91.2~k in total 2007 compensation; step 10 is ~87k 2006, or 99.18 total compensation 2007). Also, i would become a GS-13 in late 2007 given that I left with 4 months experience at the GS12 level. If I was brought back at GS-12 step 7 or 10, my GS 13 salary would range from ~$96 to ~106k at the end of next year.

see http://usptocareers.gov/salaryrates.asp (note, calculations above for 2007 take into account 9% across the board pay raise and 5% matching for tsp, so multiply the 2006 figue by 1.14 to get the figures I got)


OH, I forgot tomention that the PTO's hotelling program might let me live in Maine, which is where most of my family is. FYI, Maines cost of living (housing) is ~45% less than Washington D.C. I can buy a 3000 square foot house in maine on 5 acres of land overlooking the ocean for the cost of an average townhouse in DC.

 

[patentman]

Originally posted by: AgaBoogaBoo
all I know is that patent attorney's make a ton

Yes they do, and they need it so they can pay everyone to do the stuff they don't have the time to do.

 

[snoopdoug1]

Originally posted by: patentman

Originally posted by: AgaBoogaBoo
all I know is that patent attorney's make a ton

Yes they do, and they need it so they can pay everyone to do the stuff they don't have the time to do.

like how much? I'm just curious.

 

[patentman]

Originally posted by: snoopdoug1

Originally posted by: patentman

Originally posted by: AgaBoogaBoo
all I know is that patent attorney's make a ton

Yes they do, and they need it so they can pay everyone to do the stuff they don't have the time to do.

like how much? I'm just curious.

Depending on the location, level of education, size of the firm and experience, first year patent associates make anywhere from 85-130k/year base. A 10% increase every year is not uncommon. Average base salary (not including bonuses) in my firm is 125k for 1st year associates, increasing 10k each year for three years, 15-20k thereafter.