Would being a patent agent be bad for working as an IP expert witness?
May 5, 2010 11:48 AM Subscribe
I am an academic and have an advanced degree in science and I am interested in doing work as an expert witness in intellectual property litigation. Would being a registered patent agent help or hurt me in pursing work in this area?
Last year I worked as a consulting witness on a patent case in my academic area. It was very interesting, and beyond the extra money I learned a lot about patents that I had never been exposed to before. It made me realize two things.
First, that there are many research ideas that I pursued in the past that could have been patented but which I didn't, just because I didn't know about the patent process.
Second, that working with lawyers on the IP case was enjoyable, and that as an academic I had a better understanding of the technical issues than the other experts I saw did. I think that I could do good work in the area in the future.
In an attempt to capitalize on these realizations, it occurred to me that I could study for and take the patent bar. I would learn about what was patentable, how to write patents, and afterward I could file my own patents on my work. At the same time, learning about patents and the process would better provide me the language to work with attorneys.
In talking about this idea with other academics who do IP work, I was told that being a patent agent would kill my chances of being hired as an expert witness, as it would degrade my credibility as being separate from the IP world and would open me up to additional questions during deposition and in court.
What I would like to know, hopefully from those who work in the IP litigation area, is this true? Would you be hesitant to hire an expert witness for their technical expertise if they were also a patent agent? If the other side did, would you be happy as it made discrediting them easier? And if this isn't the right place to ask this question, where is?
Last year I worked as a consulting witness on a patent case in my academic area. It was very interesting, and beyond the extra money I learned a lot about patents that I had never been exposed to before. It made me realize two things.
First, that there are many research ideas that I pursued in the past that could have been patented but which I didn't, just because I didn't know about the patent process.
Second, that working with lawyers on the IP case was enjoyable, and that as an academic I had a better understanding of the technical issues than the other experts I saw did. I think that I could do good work in the area in the future.
In an attempt to capitalize on these realizations, it occurred to me that I could study for and take the patent bar. I would learn about what was patentable, how to write patents, and afterward I could file my own patents on my work. At the same time, learning about patents and the process would better provide me the language to work with attorneys.
In talking about this idea with other academics who do IP work, I was told that being a patent agent would kill my chances of being hired as an expert witness, as it would degrade my credibility as being separate from the IP world and would open me up to additional questions during deposition and in court.
What I would like to know, hopefully from those who work in the IP litigation area, is this true? Would you be hesitant to hire an expert witness for their technical expertise if they were also a patent agent? If the other side did, would you be happy as it made discrediting them easier? And if this isn't the right place to ask this question, where is?
I don't know about it "killing your changes"--I'm not an IP litigator--but I can say that it's probably irrelevant. Lawyers don't need to hire experts on the law. That's our job. We hire experts about stuff we don't know, i.e. the subject matter of your advanced degree. The only reason to take the patent bar is to be a patent agent, and I really can't see being a patent agent helping you land any expert witness gigs.
But craven_morhead is right: being an expert witness, especially more than once in a blue moon, is generally done by people towards the end of their careers who have a hell of a lot of experience but not a lot of... energy. Getting paid $4000 for a half-day of testimony is a pretty sweet gig, but you need years of experience before most juries are willing to credit your testimony enough to give your side what it wants.
Ultimately, the right place to ask these questions is in an IP litigator's office. If you don't know any, check your phone book or Martindale and look one up. Offer to buy him lunch and pick his brain. Who knows, you may wind up with your first gig. But if nothing else, you can feel him out about how to get started in this potentially lucrative field.
posted by valkyryn at 12:03 PM on May 5, 2010
But craven_morhead is right: being an expert witness, especially more than once in a blue moon, is generally done by people towards the end of their careers who have a hell of a lot of experience but not a lot of... energy. Getting paid $4000 for a half-day of testimony is a pretty sweet gig, but you need years of experience before most juries are willing to credit your testimony enough to give your side what it wants.
Ultimately, the right place to ask these questions is in an IP litigator's office. If you don't know any, check your phone book or Martindale and look one up. Offer to buy him lunch and pick his brain. Who knows, you may wind up with your first gig. But if nothing else, you can feel him out about how to get started in this potentially lucrative field.
posted by valkyryn at 12:03 PM on May 5, 2010
Response by poster: Either dig them up online, or find their ads (often found in publications that cater to attorneys) and see if many have this combination of experience.
I tried that, and though some people who advertise as experts do have patent agent experience, it is not common. Then again, being a patent agent isn't, so I don't know if it is coincidence or not.
Serving as a hired-gun expert witness is often done late in one's career, though it sounds like you already recognize this.
I am getting to the appropriate point in my career where it is worth making the effort.
Ultimately, the right place to ask these questions is in an IP litigator's office. If you don't know any, check your phone book or Martindale and look one up. Offer to buy him lunch and pick his brain.
Any IP litigators in the DC area want lunch? :) I have asked the lawyers I worked with, but didn't receive a definitive answer and am hoping for a wider response.
posted by procrastination at 1:38 PM on May 5, 2010
I tried that, and though some people who advertise as experts do have patent agent experience, it is not common. Then again, being a patent agent isn't, so I don't know if it is coincidence or not.
Serving as a hired-gun expert witness is often done late in one's career, though it sounds like you already recognize this.
I am getting to the appropriate point in my career where it is worth making the effort.
Ultimately, the right place to ask these questions is in an IP litigator's office. If you don't know any, check your phone book or Martindale and look one up. Offer to buy him lunch and pick his brain.
Any IP litigators in the DC area want lunch? :) I have asked the lawyers I worked with, but didn't receive a definitive answer and am hoping for a wider response.
posted by procrastination at 1:38 PM on May 5, 2010
Any IP litigators in the DC area want lunch?
On the 11th there's a major IP law symposium at George Washington University. If you're sociable and bold you could hang out there and ask some people. I'll be there, but I don't know if any of the litigators I know will be or else I'd offer to introduce you.
More directly, though, my sense is that it will not help much. Some time ago patent litigants used to routinely call up IP law experts (e.g., patent attorneys, former patent office directors, etc) to pontificate on whether a patent was valid or not, but that practice has largely been done away with. See, e.g., Sundance v. DeMonte Fabricating, 550 F.3d 1356 (Fed.Cir. 2008). As an expert witness you will mostly only be asked about the claimed invention and the allegedly infringing product, not about the ultimate questions of validity or infringement or whether proper patent prosecution procedure was followed.
Furthermore, patent agents are only able to represent clients before the Patent Office. They cannot litigate and have no particular training in litigation. Therefore, becoming a patent agent will not teach you anything about litigation strategy, how to present yourself on the witness stand, etc.
In the end, I think it will be a costly and time-consuming endeavor (courses for the patent bar start at about $1000 and it's worth taking one; the pass rate is abysmal), and I don't think it will make you a more valuable expert witness on or off the stand. That is just my opinion, however, and you should probably still ask some experienced litigators what they look for in an expert witness.
posted by jedicus at 3:30 PM on May 5, 2010
On the 11th there's a major IP law symposium at George Washington University. If you're sociable and bold you could hang out there and ask some people. I'll be there, but I don't know if any of the litigators I know will be or else I'd offer to introduce you.
More directly, though, my sense is that it will not help much. Some time ago patent litigants used to routinely call up IP law experts (e.g., patent attorneys, former patent office directors, etc) to pontificate on whether a patent was valid or not, but that practice has largely been done away with. See, e.g., Sundance v. DeMonte Fabricating, 550 F.3d 1356 (Fed.Cir. 2008). As an expert witness you will mostly only be asked about the claimed invention and the allegedly infringing product, not about the ultimate questions of validity or infringement or whether proper patent prosecution procedure was followed.
Furthermore, patent agents are only able to represent clients before the Patent Office. They cannot litigate and have no particular training in litigation. Therefore, becoming a patent agent will not teach you anything about litigation strategy, how to present yourself on the witness stand, etc.
In the end, I think it will be a costly and time-consuming endeavor (courses for the patent bar start at about $1000 and it's worth taking one; the pass rate is abysmal), and I don't think it will make you a more valuable expert witness on or off the stand. That is just my opinion, however, and you should probably still ask some experienced litigators what they look for in an expert witness.
posted by jedicus at 3:30 PM on May 5, 2010
In virtually all areas of endeavor, the best expert witnesses are the ones who don't have much time to do it because they are busy working in their fields. Those who do a volume of expert consulting work, and little else, very often do not have much credibility in front of a judge or jury.
posted by megatherium at 4:49 PM on May 5, 2010
posted by megatherium at 4:49 PM on May 5, 2010
Response by poster: jedicus, thanks for the answer. I wouldn't expect the patent agent qualification to help, but instead want to be able to write my own patents for my work. I am more wondering if there is some reason that it would hurt, as other witnesses have suggested.
megatherium, absolutely. I would only do it from time to time and over summers and such. I have no desire for it to be my main employment by any means.
posted by procrastination at 5:13 PM on May 5, 2010
megatherium, absolutely. I would only do it from time to time and over summers and such. I have no desire for it to be my main employment by any means.
posted by procrastination at 5:13 PM on May 5, 2010
I wouldn't expect the patent agent qualification to help, but instead want to be able to write my own patents for my work.
I don't want to rain on your parade, and obviously I don't know the particulars of your employment arrangement, but the work of most academics is owned by the institution for which they work, and so the institution has the right to decide whom to employ to prosecute any patent applications that might arise from the work. I would be surprised if your institution would allow you to handle your own patent prosecution rather than hiring an outside attorney or agent.
For one thing, the institution would probably want someone with more experience. For another, it would probably want someone with malpractice insurance (which also isn't cheap; ~$2-6k/year depending on the particulars and how long you've been working).
posted by jedicus at 5:27 PM on May 5, 2010
I don't want to rain on your parade, and obviously I don't know the particulars of your employment arrangement, but the work of most academics is owned by the institution for which they work, and so the institution has the right to decide whom to employ to prosecute any patent applications that might arise from the work. I would be surprised if your institution would allow you to handle your own patent prosecution rather than hiring an outside attorney or agent.
For one thing, the institution would probably want someone with more experience. For another, it would probably want someone with malpractice insurance (which also isn't cheap; ~$2-6k/year depending on the particulars and how long you've been working).
posted by jedicus at 5:27 PM on May 5, 2010
Response by poster: I would be surprised if your institution would allow you to handle your own patent prosecution
You are right about this, in part. My contract specifies that I retain rights to things that I invent on my own time and equipment. I have time off over the summers to pursue my own ideas. For those, I would be wanting to potentially file patents on my behalf.
For work that I do under my academic contract, the university retains rights. However, if there is something they do not see as commercially viable and to not want to pursue a patent for, they can release the rights to me, in which case I could file.
But, yes, I am sure they wouldn't want me to file on the University's behalf. But I could save them some money by doing an initial draft and having that reviewed by the attorneys they hire.
posted by procrastination at 6:05 PM on May 5, 2010
You are right about this, in part. My contract specifies that I retain rights to things that I invent on my own time and equipment. I have time off over the summers to pursue my own ideas. For those, I would be wanting to potentially file patents on my behalf.
For work that I do under my academic contract, the university retains rights. However, if there is something they do not see as commercially viable and to not want to pursue a patent for, they can release the rights to me, in which case I could file.
But, yes, I am sure they wouldn't want me to file on the University's behalf. But I could save them some money by doing an initial draft and having that reviewed by the attorneys they hire.
posted by procrastination at 6:05 PM on May 5, 2010
Again, your value as an expert witness is your knowledge of facts, not law. The patent agent qualification is all about law. The vast majority of IP litigators are also patent agents, so there isn't a ton of added value to getting it from the perspective of making yourself attractive as an expert witness.
posted by valkyryn at 3:21 AM on May 6, 2010
posted by valkyryn at 3:21 AM on May 6, 2010
Response by poster: Again, your value as an expert witness is your knowledge of facts, not law.
Yes, I understand that. I think my question should be rephrased. Perhaps:
"Would being a patent agent somehow count against my knowledge of facts if I were serving as an expert witness?"
I get that it won't help, and that isn't why I want to do it. What I want to know is if it will hurt.
posted by procrastination at 7:04 AM on May 6, 2010
Yes, I understand that. I think my question should be rephrased. Perhaps:
"Would being a patent agent somehow count against my knowledge of facts if I were serving as an expert witness?"
I get that it won't help, and that isn't why I want to do it. What I want to know is if it will hurt.
posted by procrastination at 7:04 AM on May 6, 2010
This thread is closed to new comments.
When you're doing this, not the amount of practical experience that most of these experts have. Serving as a hired-gun expert witness is often done late in one's career, though it sounds like you already recognize this.
posted by craven_morhead at 11:53 AM on May 5, 2010