Does the USPTO like me? Y/N

April 1, 2009 2:12 PM

Should I take the patent bar?

I just figured out that I'm qualified to sit for the patent bar. That's pretty cool, but would it actually be useful?

Here's the deal. I'm an attorney admitted to practice in 2 states in the Pacific Northwest, but I don't actually want to practice law.

For the past few years, I've been working as a paralegal and taking as many biology, chemistry, and math classes as possible, with an eye toward getting a Ph.D in molecular and cellular bio. The grad school thing is going to happen soon. There's a small chance I'll be going this fall and there's a nearly 100% chance that I'll be a grad student as of fall '10.

Stipends for grad students, as I'm sure y'all know, are not the most generous things on earth, so it would be really nice to have some kind of extremely part-time, supplemental income stream while I'm working toward my Ph.D. Years ago, when I was fresh out of law school and pounding the pavement looking for entry-level lawyer jobs, I was told by recruiters and HR types that there was a lot of part-time and temporary contract work out there for patent attorneys, even if they didn't have experience or sterling academic credentials. This, however, was before the dot-com bubble burst.

Since that time, I've not talked to a lot of recruiters or HR types, but I have heard a many, many (non-IP) attorneys gushing at length about the wonders of patent bar membership. I hear that work is plentiful, that contract assignments are easy to find as mushrooms after a spring rain, and that if you're not interested in prestige, partnership, or ladder-climbing, you can essentially work as much or as little as you want. Basically, folks around here seem to believe that once the USPTO gives you the nod, Fritz Garland Lanham himself visits you in spectral form to issue you your own private unicorn. It sounds way, way, way, too good to be true.

Application and prep for the patent bar exam would cost somewhere in the neighborhood of $1500.00, and I'd have to devote several dozen hours to studying that, all other things being equal, I'd rather spend learning biochemistry. The investment of time and energy would be worth it, however, if it would afford me a reasonable chance of getting the following:

(1) Part-time work (averaging 15 hours a week or less) at a pay rate of $55/hr or more; or
(2) Extremely limited duration contracts (in the 3 week range) of more-or-less full-time work, a few times a year.

I should also add that, back in law school, I loved studying IP law. I didn't pursue it then because I didn't have the scientific chops for it. Now, apparently, I do. I am 99.99993% sure that I don't want to be a career patent attorney, but doing a little of it on the side sounds like it could be a lot of fun.

So what do you think, mefi IP law types? Is there really a patent law fairy?

posted by palmcorder_yajna to law & government (10 comments total)

Some of the answers to this previous post may be useful.
posted by chrisamiller at 2:15 PM on April 1

The link is borked, chrisamiller, but I think I know the question you meant.

My situation is a little different, because I'd be a patent attorney rather than a patent agent.

Thanks, though!
posted by palmcorder_yajna at 2:17 PM on April 1

it would be really nice to have some kind of extremely part-time, supplemental income stream while I'm working toward my Ph.D.

No, it wouldn't. You aren't going to have time. If you want to have extra money, make it before you start the PhD. I have no knowledge or opinion on whether you should do this to make some more money before or after the PhD, but during? No way.
posted by grouse at 2:26 PM on April 1

You might want to check up on whether you'll even be allowed to work. Some schools prohibit outside employment while you're in their program.
posted by motorcycles are jets at 2:34 PM on April 1

Part-time work, especially if it's not related to your thesis topic, is a bad idea during a PhD program. While you may be able to work during the summer (and I suspect for mol/cell bio, you'll be expected to research during the summer as well), working during the year will probably be disallowed by your grad school funding and will also significantly impede your academic progress.
posted by bsdfish at 2:39 PM on April 1

The employment situation for patent attorneys remains pretty rosy, although I don't believe quite as rosy as you have claimed, especially part time work with no experience. I don't think you will find much of that. Then of course there is the very crushing workload of your Ph.D. program.
posted by caddis at 2:47 PM on April 1

I hear that work is plentiful, that contract assignments are easy to find as mushrooms after a spring rain, and that if you're not interested in prestige, partnership, or ladder-climbing, you can essentially work as much or as little as you want.

I was a patent attorney for a year (I'm now doing in-house IP) and it's news to me that contract positions are so plentiful in the field. I'm sure some exist, and I was never actively looking for contract work, but consider me skeptical. I am also fairly sure any such position would have a requirement like "at least 3 years of prosecution experience with an established firm." You simply cannot learn how to be a competent patent prosecutor on 15 hours a week, especially while working on your Ph.D. It takes most people a few years of full-time, on-the-job learning (at like 1800 hours a year) to get to the point where they can confidently churn this stuff out with minimal or no supervision. Just my 2 cents.
posted by naju at 2:49 PM on April 1

Yeah-- I kind of figured it wasn't quite the sunshine-'n'-puppies proposition that it'd been made out to be.

I just had to ask-- I mean, when I tell folks (from the general bar) that I'm qualified to take the patent bar, they make it sound like not sitting for it is the equivalent of turning down free money, despite the Ph.D plans.

Oh well-- glad I asked Mefi before blowing a grand and a half!
posted by palmcorder_yajna at 3:00 PM on April 1

I can't speak to the patent attorney side of things but as a former bio grad student that currently works at a major research university, I can agree with all the people who say that you won't have time to do this as a grad student.

More precisely, while you could probably make time to do it as a grad student, it would probably be prohibited by your program and even if it wasn't most PhD adviser would really frown on something like that. Most PhD students work 60+ hours per week and 80 hours a week is not uncommon and advisers want to see you really focused on your thesis work. Taking off 3 weeks a few times a year to do contract work is just not possible.

In response to bsdfish, in mol/cell bio programs, you are absolutely expected to work in the summer - the academic calendar year doesn't really matter.
posted by pombe at 3:05 PM on April 1

What grouse said: the chances of having the time to do outside work as a phd student are very low. (I'm a regular lawyer turned phd student, no patent bar membership. Grad school is really, really time-consuming. More time-consuming than the practice of law in many cases.)
posted by paultopia at 11:20 PM on April 1