Chapter IV Patent Law As A Specialty: Preparation
Patent law can be divided informally into four technical areas-chemical, electrical, mechanical, and biotechnological. While a detailed knowledge of any single area will be helpful, it is useful for patent lawyers to have a broad understanding of the basic, fundamental rules underlying their area of expertise as well as those of others. With this general knowledge and basic understanding, they can quickly place an invention into its proper niche.
A patent lawyer's education and capacity for acquiring knowledge is never-ending. Patent lawyers must be perpetual students-inquisitive and retentive. They should have a wide spectrum of general knowledge, and be able to incorporate within this a detailed current knowledge of the law and technology pertinent to particular problems. Oftentimes, an inventor will be unaware of the true breadth and scope of his invention, and must rely upon the lawyer to draft and obtain patent claims of proper scope.
Undergraduate Work
College students who are contemplating the field of patent law as a career choice should major in engineering, physics or the natural sciences (such as chemistry and biochemistry). In order to eventually practice in this field, an aptitude and liking for science and technology is an absolute must. College students should also take, in addition to courses in the desired technical subject, courses which cultivate skills in organization and communication. An understanding of marketing, economics, accounting, mathematics, and languages, though less essential, will also be helpful. A college student who has not made a firm career decision can follow the course of study outlined here and finish college prepared for a career in science or engineering, business, law in general, or patent law.
One intellectual property law career position that does not require a law degree is that of an examiner with the USPTO. The USPTO generally requires that an applicant for such a position have a Bachelor of Science degree with a major in a scientific or engineering subject. An applicant is not required, however, to have a law background, but may later acquire legal training at a local university while working in the USPTO. Interested students should contact the USPTO for its current technical requirements.
Law School
The general discussion in the preceding section concerning admission to law school, choice of a law school, financing a legal education, bar associations, and competitions applies equally to the preparation for a career in patent law.
Advanced Study of Patent Law
Post-law school programs, degree and non-degree, are available at a number of law schools for beginning and advanced students of patent law and related fields of interest. These law schools include, but are not limited to, George Washington University National Law Center, John Marshall School of Law, Franklin Pierce Law Center, and New York University Law School.
Internships and Clerkships at the U.S. Court of Appeals for the Federal Circuit
Law students and young lawyers in the Washington, D.C. area who are interested in the practice of patent law should consider applying for an internship or clerkship at the U.S. Court of Appeals for the Federal Circuit in Washington, D.C. The Court hears appeals in cases involving patents from federal courts around the country, and from the USPTO.
Internships are unpaid part-time positions. Some schools give credit for internships. Interns can expect to work on a variety of assignments similar to those of judicial clerks, including general legal research, preparation of bench memos, opinion drafting and special projects. Each judge has different needs and expectations.
Applicants for internships should write directly to the judge(s) at least six months in advance of the time requested for an internship, and include a résumé, a transcript, a writing sample and letters of recommendation. The cover letter should specify the time period for which the applicant is applying. Some judges are willing to take interns for brief periods of several months.
Clerkships are full-time paid positions on the judge's staff. Most clerkships begin in late August of each year. Clerkships for active circuit judges are generally two-year positions, although some judges will accept clerks for only one year. Many judges try to stagger their clerks' terms so that there is always one new clerk and one experienced clerk in the chambers. Clerkships for senior judges are for only one year.
Clerks are generally chosen more than a year in advance of the clerkship. Law students interested in clerkships at the Court of Appeals for the Federal Circuit following graduation should apply directly to the individual judge(s), by or before March 1 of their second year of law study. The application should include a résumé, a transcript, a writing sample and two or more letters of recommendation. Since there are often several judicial vacancies on the Court, it is also a good idea to send an application to the Senior Technical Advisor of the Court, to be put on file for any newly appointed judges to review.
Similar ground-rules pertain to associates in law firms who apply for a clerkship. The judges tend to be very receptive to applications from new associates, and many judges prefer clerks who have prior experience. Intellectual property firms are often supportive of applications by their associates for clerkships on the Court of Appeals for the Federal Circuit. Associates should include recommendations from senior partners in the firm with their applications. The address of the Court of Appeals for the Federal Circuit is 717 Madison Place NW, Washington, DC 20439.
The Patent Bar Examination
In order to practice patent law in the USPTO, a person must take and pass the "patent bar" exam (officially, the Examination for Registration to Practice in Patent Cases Before the U.S. Patent and Trademark Office). The exam is given once a year in the many cities listed in the USPTO's publication entitled "General Requirements for Admission to the Examination for Registration to Practice in Patent Cases Before the U.S. Patent and Trademark Office."
A person need not be a law student or even a lawyer to take the patent bar. To be eligible to take the patent bar, an applicant must, in general, (l) hold a bachelor's degree or the equivalent in engineering or one of the sciences specified by the USPTO; (2) hold a bachelor's degree in another subject, and have taken a certain number of hours of specified science courses; or (3) have taken and passed the Engineer-in-Training (EIT) test. You need not be a lawyer.
The actual examination is given in two three-hour sections. The first section consists of 50 multiple-choice questions. The second section is a combination of essay and multiple-choice questions. Each section is scored individually and an applicant failing to pass one section may retake only that section during the next examination. 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, Washington, DC 20231.
It is difficult, though not impossible, to pass the patent bar without taking a review course. The Practicing Law Institute (New York City), the Patent Resources Group (Washington, DC), and John Marshall School of Law (Chicago) are among those that offer review courses which typically last a week. Another valuable method of preparation for the patent bar is through actual work experience, such as drafting patent claims and amendments to patent applications in a patent law firm or the patent law division of a corporation.



