Patent Careers for Technical Writers, Engineers, Scientists, and Medical Professionals - Part 1

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, I discovered another career option that draws heavily on my technical writing background and potentially offers significantly better remuneration.

The purpose of this article is to help technical writers, engineers, scientists (physical, chemical, and biological sciences), and medical professionals decide if they want to explore this option.

Let's start by defining patent and patent agent.

A patent is a legal document that describes a new invention. It characterizes those aspects of the invention that are "new" or "inventive." A patent has several parts, but the crucial parts are the detailed discussion of the invention (sometimes informally called "the disclosure") and the claims.

• The disclosure gives a description of the invention in sufficient detail that someone who is well versed in the field could build the invention based on the disclosure.
  
  
• The claims are a section of the patent that, through specific, structured legal language and conventions, precisely indicates the aspects of the technology that the inventor asserts are original, and that should therefore be protected by law as a unique invention.

In the United States, inventors are legally permitted to draft patent applications for their own inventions. Most inventors, however, recognize that an effective patent requires specialized training. As such, they turn to patent attorneys or patent agents, who are licensed to draft, file, and prosecute patents on behalf of inventors.

Drafting a patent application entails gathering necessary information from the inventors and writing the patent application. Patent prosecution entails a legal dance between the patent applicant and the United States Patent and Trademark Office (USPTO). The USPTO typically initially rejects all or most of the claims in a patent application. The typical reason is a prior public disclosure, in the form of a prior patent or other publication that the patent examiner considers to anticipate the claimed invention. In other words, patent examiners argue that someone else got there first. The patent applicants-typically represented by their attorney or agent-may then either amend the patent claims or present factual arguments that the claims are not actually anticipated by prior inventions. Sometimes the attorney/agent does a combination of both, amending some claims while trying to argue around other rejections. This dance can go through one or more rounds, and sometimes goes through administrative appeals within the USPTO.

Both patent agents and patent attorneys are licensed to fully represent inventors in all respects before the USPTO. From the standpoint of patent prosecution, there is no practical difference between a patent agent and a patent attorney. However, a patent attorney can represent an inventor in legal proceedings, which may take place in courts beyond the jurisdiction of the USPTO. Attorneys can also advise inventors about contractual and licensing issues and other legal matters that are beyond the strict scope of patent filing and prosecution. Still, there is a lot of work to be done just in the realm of patent filing and prosecution- more than enough to keep a patent agent very busy.

A patent agent, under the supervision of a licensed patent attorney, may also engage in "opinion" work, giving legal advice to clients about whether their inventions violate a patent claim of another patent (usually from another company or inventor) or whether a competing product violates one of their patents.

How To Become a Patent Agent

Drafting and prosecuting patent applications is not exactly the same as technical writing, but there is significant overlap in the skills. Certainly, it is crucial to be able to work with subject-matter experts (such as engineers or biologists) to gather technical information and to document the information in clear language. Drafting the patent claims also involves legal skills that technical writers must learn.

The United States has strict qualifying limits for patent agents. Although a law degree is not required, you must take a licensing exam administered by the USPTO. To qualify for the exam, you must have significant technical training in a field such as electrical engineering, mechanical engineering, chemistry, biology, physics, or medicine. Studies in mathematics are not acceptable, but computer science is. (A complete list of the allowed technical backgrounds is on the USPTO Web site.)

As such, the patent agent field is wide open to technical writers with the necessary academic training and to engineers, scientists, and medical professionals who want to make a switch and who enjoy working with the written word.

At a minimum, you must have an undergraduate degree or the equivalent in an appropriate field. My college degree was for a self-designed program of study; however, I provided the USPTO with documentation showing that I had essentially completed all coursework for a physics major. That was enough to qualify for the test. For all requirements for the test, go to

http://www.uspto.gov/web/offices/dcom/olia/oed/examregist.htm

and click the "General Requirements Bulletin" link.

The test consists of one hundred multiple choice questions. (Ninety questions are actually graded, and the other ten are "questions under development.") Studying for the test is an art form. In essence, the licensing test is not technical. If you qualified to take the test, it is assumed that you know something about technology or science. Instead, it is a test on law and administrative issues related to patents. It is very detailed, and the pass rate is not high. In other words, you really need to study for it.

Everything you need to know about patent law and regulations is in a book titled Manual of Patent Examining Procedure (MPEP), which you can download from the USPTO Web site. Unfortunately, it is about 3,000 pages long (really), and it is hard to know exactly what to study. When I took the test, I was able to study old tests, which you can also download from the USPTO Web site:

http://www.uspto.gov/web/offices/dcom/olia/oed/pastexams.htm

In 2005, the USPTO switched to an electronic testing system. It no longer publishes recent test questions, and the existing tests (2003 and earlier) become progressively more out of date as the patent law and regulations evolve over time. However, I would not completely ignore those old tests. Although the questions and answers may become dated over time, the types of questions still reflect, at least in a broad sense, the kinds of issues likely to be raised in the future.

You can enroll in patent prep courses or you can mail order them. They are not cheap (expect to spend anywhere from $1,000 to $5,000), but the prep courses may help you pass the test if you are determined to make a career transition. For what it's worth, I passed the test the first time by studying patent law books and old tests. Here is a link to a site for more advice about studying for the patent agent/attorney licensing exam:

http://www.intelproplaw.com/

(Go to the "forums" and find the discussions on patent careers.)

You can also get advice about patent law from discussion groups on Usenet. (See the newsgroup misc.int-prop.) Here is one site for course materials for the patent bar:

http://www.patentpublishing.com/index.html

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.