Frequently Asked Questions about Engineers in the Patent Law Profession
What on earth does patent law have to do with the FE and/or PE exams?
The United States Patent and Trademark Office (USPTO), which is the licensing authority for patent law professionals, gives limited recognition to people who have passed the FE exam. They do not give any recognition for passing the PE or PLS exams.
So the FE is one route to becoming a patent lawyer? Don't patent lawyers have to be regular attorneys and licensed by the appropriate State Bar? Can't each and every attorney practice as a patent lawyer?
Yes, yes, and yes, but it's not that simple. Read on.
What does the Federal Code say about use of the "Patent Attorney" title?
35 U.S.C. 33 states: "Whoever, not being recognized to practice before the Patent and Trademark Office, holds himself out or permits himself to be held out as so recognized, or as being qualified to prepare or prosecute applications for patent, shall be fined not more than $1000 for each offense." Title 37 of the Code of Federal Regulations defines what constitutes practice. 37 CFR 10.34 states: "A registered practitioner may state or imply that the practitioner is a specialist as follows:
(a) a registered practitioner who is an attorney may use the designation, 'Patents', 'Patent Attorney', 'Patent Lawyer', 'Registered Patent Attonrey, or a substantially similar designation.
(b) A registered practitioner who is not an attorney may use the designation 'Patents', 'Patent Agent', 'Registered Patent Agent', or a substantially similar designation, except that any practitioner who was registered prior to November 15, 1938, may refer to himself or herself as a 'Patent Attorney'."
Are patent agents practicing unlicensed law?
Yes, but they are legally practicing law unlicensed by any state bar. Because they are appointed by the USPTO, which is an arm of the U.S. federal government (Dept. of Commerce), the state laws regulating the practice of law are effectively overruled by federal law. The relevant test case of federal supremacy jurisdiction overruling specific state regulations was Sperry vs. The State of Florida. Note, however, that patent agents can counsel and represent clients only in connection with civil service administrative hearings, not before judges.
What are the likely career prospects and working conditions for an engineer-turned-patent agent?
Opinions vary widely. Patent agents tend to be rather passionate about their work--you either love patent law work or you hate it. There is less age discrimination among patent agents than is found in engineering. Patent work tends to be located in relatively few places--the East Coast (Boston through Washington, DC), the West Coast, a large area around Chicago, and a few other smaller pockets. There are roughly 2,000 patent agents in the U.S. and roughly 20,000 patent attorneys.
Patent agents may not be seen as "equals" by patent attorneys.
Being a patent agent requires scrupulous attention to detail and excellent communication skills. Don't even think of a career as a patent agent if dealing with civil servants leaves you feeling frustrated and angry.
Can a patent agent or patent attorney find clients in all areas of engineering?
Yes, but most work is available from four areas: chemical, electrical, mechanical, and biotechnological.
Is there a need for patent attorneys who are professional engineers?
Very few patent attorneys are PEs. There are a number of patent agents who are PEs, but generally, the vast majority of agents and attorneys never gain the technical expertise and experience to qualify for the PE exam. There seems to be a big need for highly technical patent attorneys.
How do I migrate from patent agent to patent attorney?
Migration from patent agent to patent attorney is simple. First, you have to pass the state bar exam. Then, you provide a good standing letter from the state bar and pay a fee. The USPTO will then provide you with a new certificate and will update their online database to indicate attorney status.
How do I become a patent agent?
You apply to the USPTO to take the "patent bar" exam (officially, the Examination for Registration to Practice in Parent Cases Before the U.S. Patent and Trademark Office), pass the exam, and pay the fees. If you are an accomplished engineer who has never been to law school, the process might take an average of two years from start to finish--assuming you are concurrently holding down a full time job. An expenditure of several thousand dollars may be involved. The absolute minimum time and money would be around nine months and several hundred dollars, but such an achievement would be unusual.
How hard is the exam?
The typical pass rate is around 40%. A typical candidate might put in a total of roughly 300 to 400 hours of study directed specifically to the exam.
How often is the exam held?
Over the years, it's been held once or twice each year. The USPTO seems to be settled on twice a year, but this may change with minimal notice.
Where is the exam given?
The exam is given in many cities throughout the United States. More information is available in the USPTO publication entitled, "Examination for Registration to Practice in Patent Cases Before the U.S. Patent and Trademark Office."
What is the exam format and the subject matter?
Recent exams have been all multiple choice, but essay questions have also been used in the past. The USPTO can, and has, changed the exam format without notice. Currently, there are two three-hour sessions, each with 50 multiple-choice questions. The subject matter is patent law and USPTO procedures. A typical question might be to determine (from a fact pattern) the exact deadline for filing a particular form in connection with an application for a patent.
How is the exam graded?
You need a cummulative score of 70 to pass.
How can I obtain old exams to study?
Copies of old examinations can be purchased from the Office of Enrollment and Discipline at the following address:
Commissioner of Patents and Trademarks, Box OED, Washinton, DC 20231.
What are the requirements to be admitted to the exam?
You do not need to be a lawyer or law student to take the exam. You have to submit an application and pay the fee. You must be over 18, not a convicted criminal, and either a US citizen, a Canadian citizen, or a US permanent resident (green card holder). You also need to have done one of the following:
A. earned a technical bachelor's degree that is on the USPTO list of approved degrees, OR
B. taken a collection of semester hours of certain subjects at certain colleges according to a horrendously complicated formula, OR
C. passed the FE exam (hurrah!), OR
D. convinced the USPTO by petition that justice requires them to waive the above requirements in your case. A petition may be filed under 37 CFR Section 10.170 for this purpose.
I passed the EIT before they changed it to the FE. Do I qualify?
See option D directly above.
Are there "trademark agents" too?
Are there review classes offered for the patent agent exam?
In the absence of having worked drafting patent claims and amendments to patent applications in a patent law firm or in the patent law division of a corporation, a review course is highly recommended. Review courses typically last a week.
Are there any other options for an engineer?
It is not necessary to have a law degree in order to work as an examiner with the USPTO. Applicants are generally required to hold a BS degree with a major in a scientific or engineering subject. (Contact the USPTO for its current technical requirements.)
The above information is based on information that was provided by Henry Black, P.E., Patent Agent, and Dr. Kevin Mark Klughart, PE, Patent Attorney. The information is believed to be correct but is not legal advice and should not be relied upon without independent verification. Permission is granted to make verbatim copies for personal use. Derivative works are prohibited. Any form of distribution except distribution by PPI is prohibited. PPI was not involved in the production of this article and accepts no responsibility for it.