As a patent agent, you are primarily responsible for drafting patent applications based on invention disclosures and interacting with the U.S. Patent and Trademark Office (USPTO) to help inventors obtain a patent for their inventions. You will also educate inventors to help them understand their options for filing a national and/or international patent application.
ADAPT Professional Guide
"This multidisciplinary career exposes me to law, science, and business. Being a patent agent gives me the opportunity to work in patent law without going to law school. In other words, it is a test-drive before I decide if patent law is a right fit for me. My experience as a patent agent gives me the opportunity to be at the forefront of cutting edge technologies and work with some of the world’s most innovative companies.”
Patent Agent, Vault Law 100 Firm.
Undergraduate degree in engineering/science. Advanced degrees may be required to practice in the life sciences technology area.
Passed the USPTO Patent Bar.
Job Description and Responsibilites
Tech Transfer Firm:
In a tech transfer role, you will lead internal and external patent analysis projects of all sizes.
You will be relied upon to provide individual patent analysis for both internal projects and external clients, including performing patent quality analysis. You may also be responsible for supporting more senior employees.
Your duties will include reviewing invention disclosures and searching literature and patent databases to determine the patentability of inventions. You will also draft written assessments of the prospects of obtaining patent protection and, subsequently, draft patent applications.
You will prepare responses to communications from the USPTO. Your responsibilities will also include assisting in evaluating patents for licensing, clearance, and/or litigation purposes, including evaluating the scope of patent claims, comparing patent claims to prior art and products/services of interest, and assessing the market value of the patented invention.
Assist with operations of the company's patent transaction program. Coordinate inventor engagement activities.
Raise awareness around the patent strategy across the company. Evangelize the company’s patent strategy. Actively pursue new opportunities for exploring the patentability of assets.
Streamline review of inventions with internal legal team and outside counsel.
Track progress from invention disclosure to filing a patent application.
Create awareness about different ways IP can be developed at the company.
Patent Agent, Litigation Support
In a patent litigation support role, you will assist attorneys in developing technical arguments and presenting scientific and technical data. This can be achieved through assisting with document review, preparation of expert witnesses, preparation of exhibits for trial, and more.
Patent Agent, Prosecution Support
As a patent agent at a law firm, you will prepare, file, and prosecute patent applications. You may also defend patents before the U.S. Patent and Trademark Office (USPTO).
Your duties will include reviewing invention disclosures, participating in discussions with inventors to understand their technologies and innovations, and searching literature and patent databases to determine the patentability of inventions.
Patent agents may also draft written assessments of the prospects of obtaining patent protection and provide patent reviews as part of the IP due diligence for a potential merger and acquisition.
Inventor Education - discuss ideas for potential patentability
Review invention disclosures
Counsel business groups on possible patent approach
Facilitate communications with outside counsel and inventors
Review patents or applications in a portfolio for readiness or targeted efforts
Review portfolios for possible periodic pruning
In my current role, I focus primarily on preparing, filing, and prosecuting patent applications. Before I draft the patent applications, I review the invention disclosure form and conduct a call with inventors to discuss their invention. Then, I draft the claims, background, detailed description, and abstract of the invention. I also prepare drawings although sometimes I use a draftsperson to prepare the drawings for me. I also review the office action issued by the Patent Examiner. Sometimes, I interview the Patent Examiner to discuss details of the rejections included in the office action. I also draft a response to the office action, which may require written arguments to establish the patentability of a claimed invention.
And, this is the path I took to get here.
Lecturer/research - Electrical Engineering
Electrical Engineering (B.S. and M.S.)
These pros and cons were provided by professionals in the field and are purely subjective.
Tech Transfer Firm:
Lots of variety in tasks and technology
Seeing what happens after patents issue
Understanding what companies do with their patents and how they are viewed
No billable hours
Interesting work (complicated and sophisticated legal matters)
Exposure to broad range of clients
Can be a stepping stone to a patent attorney role
No billable hour requirement
Deeper knowledge of technologies and business needs
Tech Transfer Firm:
Can feel rushed with tight deadlines and budgets
Lots of bouncing between projects, depending on priority
Billable hours requirement
Sometimes, work hours can be unpredictable if a client has unusual deadlines or requests
Work may be limited to patent prosecution matters
Not all companies hire in-house patent agent
My prosecution experience allows me to share insight on common practices and challenges that occur when trying to obtain a patent. My engineering background also allows me to provide a deeper technical understanding for the cases I am working on. This opportunity has allowed me to gain a better understanding of the patent world and what happens after you obtain a patent.”
- Patent Agent (IP Litigation), Vault Law 100 Firm
Pro-tips on how to land the job
Network with the individuals who currently have the jobs at that organization
Be knowledgeable about patents and how patents are valued
Able demonstrate solid technical knowledge
Start as a Scientific or Technical Advisor, obtain on the job training, take and pass the USPTO Patent Bar.