Conversations on careers for chemists in intellectual property - a series

I.  THE PATENT AGENT

Brian Treco, a member of the ACS Committee on Patents and Related Matters, talks to his fellow committee member, Le-Nhung Mcleland, Esq., a practicing Patent Attorney, about careers for chemists in intellectual property, specifically about what being a Patent Agent means. 

Brian:  I have been looking into possible careers in law and intellectual property, and I have heard about being a "Patent Agent."  What exactly is a Patent Agent?  

Nhung:  A U.S. patent agent is accredited by the U.S. Patent and Trademark Office (PTO) to represent inventors before the PTO.  The patent agent can prepare a patent application for an inventor, and file that application in the PTO.  The agent can also "prosecute" the application before the PTO.  That means he or she presents on behalf of the inventor arguments to show why an invention claimed in a patent application is patentable.  If necessary, the patent agent also helps the applicant modify the claims in the application to obtain their allowance.  If the PTO patent examiner persists in rejecting the claims of an application, the rejection may be appealed to the Board of Patent Appeals and Interferences, and the patent agent may represent the applicant before the Board, by presenting written arguments, and maybe even presenting oral arguments at a hearing before a panel of the Board.

Brian:  If a Patent Agent does that, what is the difference between a Patent Agent and a Patent Attorney?

Nhung:  The patent agent can represent an inventor only before the PTO.  The patent agent is not supposed to give legal advice outside the scope of representation before the PTO.  For example, a patent agent should not render advice on infringement of a patent.

Brian:  Do I need to go back to school to become a Patent Agent?

Nhung:  You do not need to go back to school.  However, you do need to study, either on your own, or by taking one of the "patent bar review" courses that are offered by different organizations.  Then, you would have to take and pass the "patent bar" exam given by the PTO.
  
Brian:  Why would some people choose to be Patent Agents, others choose to be Patent Attorneys?
  
Nhung:  It is really not simply a matter of choice, but a question of making the best of your circumstances, at the point where you stand in your career in chemistry.  In the "old days" many chemists went to law school part-time at night, while working full-time as a patent professional (in a law firm, in the patent department of a corporation, or as a patent examiner at the PTO.)  Often those patent professionals became qualified as patent agents before they became attorneys.  However, I think that recently more people are going directly from college, after receiving a bachelor's degree in science/engineering, to law school full-time, often with a focus on patent law.  I have seen also a number of chemists already working for a corporation who move into patent-related work, for example as a patent liaison, or a patent information specialist.  They become qualified patent agents and serve in a niche within the company, without the intention of becoming attorneys.

Brian:  I can see the advantages of being a Patent Attorney, but the fact that a candidate would not have to go to Law School to get into this field would be attractive to a lot of people.  How would you go about becoming a Patent Agent?
  
Nhung:  To become a patent agent, you have to apply to the PTO and take the examination for patent agent/attorney registration.  A candidate has to satisfy a set of minimum requirements before the PTO will allow that candidate to take the exam.  In particular, the candidate must have a minimum of 30 credit hours in a science.  As you might expect, the rules for registration are a little more complex than that.  If you want to know the full details of the rules, I would have to refer you to a 2004 Federal Register notice:

http://www.uspto.gov/web/offices/com/sol/notices/69fr35428.pdf

Brian:  You mentioned that there is an exam.  Is it difficult?  Do they disclose how many people pass vs. fail each year?  

Nhung:  It's hard for me to say whether the exam is difficult.  I took it so long ago, and the exams have changed over the years. The PTO Web site offers a quite a bit of information on the exam.  In particular, you can see previous exams and the model answers. You can also see statistics on previous exams.  The most recent statistics that I saw showed a pass rate of 56.4%, but as you can imagine, the pass rate has been fluctuating from year to year.  Since 2004, the exams are computer-administered, although you can still take a standard paper exam for a higher fee.

Brian: Computer-administered?  How does that work?

Nhung: It is rather an interesting system.  They ask you 100 multiple-choice questions, but only 90 of those are scored, and you have to get 70% of those correct to pass.  The other 10 questions are not scored but are used for beta testing.  If those administering the test are satisfied that the questions are appropriate, those questions could be used in future exams.  An electronic version of the Manual of Patent Examination Procedure (MPEP) is made available while you are taking the test, so it is a good idea to be comfortable navigating through the electronic version.   Of course, the Manual should be a constant reference source for you when you are studying to prepare for the test. 

Besides being cheaper, the computer exam can be taken on any business day, and in any state.  Some places will even allow you to take it on weekends.  That is a real advantage over the paper exam, which is only offered annually. 

Brian: Where could I find more about the test?

Nhung: I would start with the PTO’s Office of Enrollment and Discipline which administers the exam:
  
http://www.uspto.gov/web/offices/dcom/gcounsel/oed.htm
  
You can pretty much find anything you need to know about the exam there. 
 Brian:  How would you prepare for the exam?  Are there good self-study guides?  Are pre-exam courses offered anywhere?  Does the ACS offer such a course?
Nhung:  There is today a whole industry out there seeking to prepare you for taking and passing the exam.  However, the ACS does not currently offer such a course. If you search for "patent bar review" on the internet, you will see a large number of offerings.  I hesitate to give the names of any particular courses, as opinions will vary widely.  You can also find many books and manuals.  Excellent tools, and free as well, are copies of the old exams (with answers and explanations) that are posted on the PTO’s Office of Enrollment and Discipline Web site that I mentioned before. 
I think it is possible to pass the exam without taking a review course.  However, you would have to be very motivated to study on your own.  And most importantly, you need access to someone, like a person already working in the patent field, to help you when you have questions, sometimes of a rather minor nature, which may take you hours to figure out on your own.  In my case, I did not take any review course, and I was not even working in the patent field when I first took the exam.  That does not mean I did not prepare!
Brian:  Assuming that I do take and pass the exam, what then?  Where does a Patent Agent work?   
Nhung:  After you pass the exam, you still have some paperwork to complete at the PTO before you are officially registered as an agent and receive your PTO registration number.  I think that becoming a registered patent agent is not a ticket to a job in patent law, unless you have acquired some experience in patent work along the way.  The reason is that someone can pass the exam, and yet not be able to perform as a patent agent without on-the-job training.  Some patent agents work in law firms.  However, I think such jobs in a law firm tend to be dead end jobs, unless the person intends to go to law school and eventually qualify as an attorney.  On the other hand, I think patent agents can find satisfying careers in companies, in particular if they were already on a career path in the company and qualifying as a patent agent enhances their utility to the company.
Brian:  I read the ACS salary survey, but they do not have numbers for Patent Agents.  Is there any information about what Patent Agents might earn?
Nhung:  The AIPLA (American Intellectual Property Law Association) publishes the results of annual surveys of members.  However, they do not have statistics on salaries for patent agents.  For anecdotal reports; see this discussion:
http://www.intelproplaw.com/Forum/Forum.cgi?board=patent_career;action=display;num=1104873691
I cannot verify the information here, but see also this article from Salary Wizard: 
http://swz.salary.com/salarywizard/layouthtmls/swzl_compresult_national_RD14000088.html

Please remember that these salaries are so dependent on factors like prior technical education, experience and geography, that you will have to do your own research to see what you could reasonably expect. 
Brian:  Thank you very much, Nhung.  That is a lot of very helpful information for someone who is thinking about becoming a patent agent.  

Nhung:  It has been my pleasure.  Before we finish, I would like to call your attention to an article recently published in Chemical & Engineering News which you might find helpful as well: