Technical Advisor
As a Scientific or Technical Advisor, you are responsible for studying and analyzing scientific or technical documents. You will also assist with the drafting and prosecution of patent applications before the U.S. Patent and Trademark Office (USPTO).
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ADAPT Professional Guide
“I’m grateful for my role in intellectual property because it allows me to utilize my background in engineering to protect cutting edge technology with patents and interact with the amazing minds of innovative inventors.”
- Patent Engineer, Vault Law 100 Firm
Qualifications
Undergraduate degree in engineering/science and/or relevant industry experience. Advanced degrees may be required to practice in the life sciences technology area.
Job Description and Responsibilites
As a Scientific or Technical Advisor, you are responsible for studying and analyzing scientific or technical documents. You will also assist with the drafting and prosecution of patent applications before the U.S. Patent and Trademark Office (USPTO).
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.
Example of Day-to-day
Review invention disclosure forms.
Perform prior art searches using publicly available databases and other resources.
Draft patent applications.
Draft patent claim charts.
Report patent and prior art evaluations to supervising counsel.
Fehmi's Path
Technical Advisor
In my current role, I use my expertise in the various technical areas which I worked on during my research career to provide technical support for the patent attorneys in our in-house patent team. This includes the development of our company’s patent portfolio as well as the evaluation of 3rd party patents asserted against our company. Additionally, I provide support to the licensing executives in the company during licensing discussions, this includes financial modeling and presenting the company’s position with respect to the patents in discussion.
This is the path I took to get here.
Technical Advisor
Electrical Engineering (B.S, MS and Ph D)
Research Engineer at a research center
Patent Advisor at an in-house patent team
In-house Patent Team
Passed the USPTO Patent Agent exam
Patent Manager at in-house patent team
These pros and cons were provided by professionals in the field and are purely subjective.
Pros
Cons
Exposure to various technologies and clients
Usually low billable hour requirements
Can be a stepping stone to a patent agent or to a patent attorney role
Billable hours
Limited growth
“The opportunity to work as a patent prosecutor has given me the unique opportunity to combine both my passions for technology and writing, while also learning about the newest technology.”
- Patent Engineer, Vault Law 100 Firm
Pro-tips on how to land the job
Approach recruiters
Network with patent professionals
Send emails to law firms to inquire about scientific or technical advisor positions (may also be called patent engineers)