Patent Careers for Technical Writers, Engineers, Scientists, and Medical Professionals - Part 2

by Steven Oppenheimer

Steven is currently working as a patent agent in Washington D.C.

After working more than fifteen years as a freelance technical writer, Steven Oppenheimer discovered another career that draws heavily on his technical writing background and has the potential to offer significantly better remuneration.

I did not immediately land work with a law firm after obtaining my license from the United States Patent and Trademark Office (USPTO). General-practice law firms and intellectual property boutiques seemed to be more interested in hiring recent law school graduates than experienced technical writers. I think the firms are simply not familiar with technical writers because few of us make the transition to patent work.

That said, some patent law firms and general-practice law firms hire technical specialists (people with technical backgrounds) even if they are not licensed patent agents. Often, they are seeking people with advanced degrees , but some are open to candidates with a bachelor's degree, especially if they also have technical writing experience. Some firms are also interested in people who have extensive experience as an engineer, scientist, or medical professional.

If you passed the patent bar before applying for work-that is, you are a patent agent instead of a technical specialist-you are likely to move ahead of other candidates who are seeking technical specialist jobs. On the other hand, even if you have not yet passed the patent bar, some firms may hire you as a technical specialist. The experience that you gain by working at a law firm can help you understand the legal and administrative issues that you will encounter on the USPTO test.

Experience is another issue. Many law firms want someone who is experienced in drafting claims and prosecuting the patent through the actual award. So, as with work in many fields, landing that first job may take persistence. (In my case, it took about six months from obtaining my license to receiving a job offer.) Once you have experience from that first job, more opportunities will open up.

So the bottom line is that some law firms (and some private corporations that draft their own patents in-house) are open to hiring patent agents or technical specialists. The income potential for licensed patent agents is very good. The salary for a starting position could be the same as that made by senior-level technical writers. A patent agent at two years can make as much as or more than a technical writer at 10 or 15 years. Because the position is licensed, it carries more cachet than nonlicensed technical writing positions.

If you do land a job with a law firm and decide to pursue a law degree, many firms will reduce your full-time work requirements while you attend law school. They may even help pay your tuition. So becoming a patent agent could allow you to transition from technical writer, scientist, engineer, or doctor to patent attorney. The transition would require a lot of work, but could lead to gratifying financial rewards.

The Washington, D.C. area is particularly fertile for patent work, because so much of patent work involves interaction with USPTO. (For example, it is convenient to be able to meet with patent examiners.) However, most large cities and major high-tech U.S. corridors have law firms that do patent work. Before deciding to pursue a career as a patent agent, you might want to investigate the career possibilities in your geographic area.

It is worth noting that you could become an independent patent agent. Companies typically require that you have experience before they send work your way. However, once you have the experience, you can probably set up shop as an independent consultant.

I have been employed as a patent agent for close to two years. In some respects, I am still learning the job. (There is a lot to learn!) Here are some things that I can share:

Breaks and Pauses

If you work at a law firm, expect to juggle many projects for many clients at the same time. You will not work on one patent; you will work on 6 or 8 or possibly 20. The work tends to be stop-and-go. As a beginner, you will do some work on a project and have it reviewed. A client may send you preliminary information about an invention, you can start researching and writing, and then put the project on hold until you can interview the inventor or another subject-matter expert. After you draft the patent, it will probably be reviewed by a more experienced legal professional and by the client before final changes are put in place. Therefore, you can see the need to have multiple projects in the pipeline.

Patent Prosecution

You can expect to be involved in patent prosecution; that is, you will reply to correspondence from the patent office. You determine whether rejections raised by the patent office are in fact valid. Based on your determination, you either revise the claims in your patent or argue the merits of the patent versus the prior references (prior inventions cited by the patent office).

Writing

Broadly speaking, the work calls upon the same kinds of writing skills, thinking skills, and people skills as technical writing. However, the writing itself is different. There are a host of legal requirements, both formal (things you must do in drafting a patent) and prudent (things that are not legally mandatory, but that make for a better, stronger patent application). You can expect to constantly encounter new technologies, and you will be called upon to grasp the essence of those technologies quickly.

Particularly challenging is the need to write more generally. As a technical writer, filling in the details was often crucial to clearly conveying an understanding of a technology. With patents, the goal is to define the invention clearly, but at the same time not to narrow the invention too much. The ideal patent "claims" the invention as broadly as possible. (The objective is to exclude competitors from gaining patents on inventions that are essentially or substantially the same, with only minor differences.)

The patent examiner's job is to review patent applications and determine whether the applications meet the criteria for patentability (such as the invention being novel and not obvious). Patent examiners work for USPTO, which provides free training, so the job can provide the security typically associated with government employment. Moreover, by working at USPTO, you can automatically be licensed as a patent agent without taking the licensing exam. Some law firms may welcome your expertise, because you have worked "inside the system" and understand how USPTO operates.

Legal Notices

At the time of Internet publication of this article (January 13, 2008), Steven Oppenheimer is a patent agent at a boutique law firm specializing in intellectual property. Mr. Oppenheimer specializes in electronics, software, mechanical, and business method patents. He may be reached at steveqdr@yahoo.com.

Notice is served that while Mr. Oppenheimer is employed as a patent agent at a law firm, and while he maintains a Web site for his (currently dormant) technical writing services, doing business as “Oppenheimer Communications”, there is no association between Oppenheimer Communications and the law firm. Further, the law firm is not responsible for the content of this article, and does not endorse any of the contents of this article.

This article is Copyright © 2008 Steven C. Oppenheimer. All rights reserved. This article may not be reproduced or redistributed without the express written permission of the author.