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Frequently Asked Questions

• Why has the profession of patent law expanded so much in recent years?

  • In the 1950s and 1960s, patents were considered of marginal importance. Federal courts, and jurisdiction in patent cases lies exclusively in the Federal courts, looked askance at patents and, in the rare instance where a patent was found valid, seldom awarded damages which inflicted any real pain on the infringer. Patents were monopolies to the Supreme Court of the time, and monopolies were bad. Appeals from District Court judges went to the Circuit Courts of Appeals, and almost always that was the last stop, the Supreme Court accepting Certiorari in a patent case only every few years. It got so bad that the liberal Seventh Circuit was finding about 10% of the patents it got its hands on valid, while the much more conservative Fifth Circuit found half or more valid. The result was that those patent owners who were brave enough to have a go at litigation fought tooth and nail to get in the Fifth Circuit while infringers strove equally hard to get in the Seventh. Few patent owners bothered and businesses were not about to spend a lot of money obtaining patents if they didn't provide any real exclusivity.

    Then Congress in the 1980s created a special court to handle not only all appeals from the Patent Office but also all appeals from the District Courts in patent suits, the Court of Appeals for the Federal Circuit. The CAFC judges for the most part came from the ranks of patent attorneys, and these judges believed patents were a good thing and should be encouraged, not the opposite. While the CAFC has by and large affirmed the decisions of District Court judges, particularly when patents were upheld, the Court also from the beginning tended to find patents valid, and much more importantly created rules which resulted in truly draconian damage awards when patents were upheld. At the same time, as you will recall, Republicans started their run of presidential victories. Nixon, Ford, Reagan and Bush appointed conservative, business oriented judges and these judges were much more willing to find patents valid and to award or allow juries to award damages which sometimes wrecked or made companies. The Golden Age of Patents arrived.

    The Supreme Court did its part, strongly affirming the CAFC view that almost everything was patentable. Software, which hitherto wasn't important at all in the patent world, assumed paramount importance, and as Biotechnology burst on the scene, patents were the only effective way to secure value for these discoveries, which were incredibly expensive to make and develop. While this was playing out, international trade also exploded in volume and it was Japan which lead the explosion. Japan is the most pro-patent country on earth, at least in numbers. Japanese companies love to get patents, although Japanese have never accepted the present American attitude that patents can and should determine whether a company rises or falls. In the 1960s Japanese companies were filing a few hundred patent applications a year in the United States. Today Japanese companies file 25% of the more than 250,000 applications filed in the U.S every year, and foreigners together file half. Japanese even began to litigate as plaintiffs in the U.S.

    Finally, it began to dawn on American companies that their best weapon against competitors abroad, particularly in the Far East, was in their U.S. patent portfolio. Drag a Japanese company into a U.S. District Court and have its fate decided by an American jury taking time off from their job at Ford, and you have a recipe for adding significantly to the bottom line and making foreigners think long and hard before copying U.S. innovations. The way was brilliantly led by Texas Instruments and Hal Cooper of Jones, Day who extracted hundreds of millions of dollars from all the Japanese and Korean semiconductor manufacturers, and kept TI profitable through the tough 1980s.

    Also the U.S. more and more is becoming an economic juggernaut which designs, sells and owns the rights to things made elsewhere. Strong patents are the keys to keeping the profits here and suppressing competition from the foreign businesses that are actually making the products.

    For all these reasons the attitude of the business community today is that patents are serious things and that serious money should be spent both offensively and defensively dealing with them. Serious money means more patent attorneys making more money and that's where we are today.

• What does the immediate future hold for the patent profession?

  • The immediate future looks like a straight-line continuation of the last few years, namely the Golden Age of Patent will continue for at least another decade, maybe more. Congress seems intent on strengthening and expanding patent protection, and the Patent Office wants to see its role, and grasp, grow.

    A few cracks have begun to appear. While convincing your average District Court judge that the Patent Office erred in issuing a patent remains a very difficult enterprise, more and more courts are interpreting claims narrower and judges are more and more making the decisions that juries used to make. The Patent Office fees keep going up, and the long-term systemic flaws in the Japanese economy are forcing Japanese companies to reduce all expenditures, including patent costs.

    Moreover, it is unlikely that the patent profession can fully absorb all of the lawyers pouring into the profession. Soon it will likely be the case that without a law review credential from a top law school or a degree in Electrical Engineering or a Ph.D. in Biotechnology, or some evidence of initiative and ability, like passing the PTO exam, you won't be getting a starting job in a top tier firm as a patent attorney.

    However, it seems very unlikely that the future will ever see patent attorneys being laid off and working at McDonalds as has happened to other legal specialties.

• I would like to hang out my shingle and start my own practice after I graduate. Is this practical?

  • Almost certainly this will not work. You don't learn enough in law school or even in passing the PTO exam to be able to represent clients alone, and you will find getting clients almost impossible. The mistakes you will make for the most part will be fixable but not all of them. If this is your goal, you need to get a job in a law firm, learn your trade as quickly as you can, and court potential clients to keep you alive when you do hang out that shingle.

    I understand that the large general practice firms are all creating patent departments. What is the difference between working for such a firm and firm which does only patent work?

    Until about ten years ago almost all patent work was done by firms which did nothing else. In the 1930s a famous bank robber named Willie Sutton was asked why he robbed banks. He responded:

    "Well sir, that's where the money is!"

    Applying that same principle, every large general practice firm wants to build or acquire a patent department, particularly because other departments like Anti-trust and Corporate have been decimated. For some, like Jones, Day, and others, the move has been extremely successful. Large firms have strong connections to their clients and can to some extent seize the lucrative litigation and advice work. There are problems, however.

    Patent attorneys are a different breed, who don't always fit very well into a traditional law firm. For one thing they are accustomed to making more money than partners in most large general practice law firms make and this causes jealousy. In a patent firm all able young lawyers are traditionally made partner, often as early as the fourth or fifth year. In the major general practice firms, the process is much more selective and political, with each department and powerful partner competing to advance its candidates. And your patent associates and secretaries make more than their general practice counterparts.

    Finally many of the general practice firms trying to grow or acquire a patent department will fail. If you have a choice you would be well advised to pick a general practice firm with a well-established department, rather than one which plans for one.

• I've heard that patent attorneys specialize in either litigation or prosecution. Can I do both?

  • Yes, for a few years. In fact the best patent litigators are those who understand the process of getting a patent from personal experience and the best prosecutors are those who can avoid building into an application flaws which will weaken or doom it in litigation.

    However, after a few years what you will find is that to service clients in prosecution you have to be available day to day whereas litigation requires focusing on nothing else. You will end up doing one or the other.

• What's the difference between working for a law firm and working for a corporation?

  • Conventional wisdom used to be that if you wanted the big bucks and could take the stress and long hours you went to a law firm. If you wanted to go home at 5 PM and take less money then you were headed for a corporation. It used to be true as well that drop outs from law firms headed for corporations, but not vice versa. This is still largely true, but less so than a decade ago. Corporations now expect much more in output than they used to, but nothing like what law firms expect.

• I want to live and work abroad. What are the opportunities as a patent attorney?

  • Excellent. Law firms and companies in the Far East and Europe are more and more looking for on site U.S. patents attorneys to advise.

• I have an opportunity to clerk for a Federal judge? If I take this position do I fall behind those who go directly to the patent firms?

  • Clerking for a federal judge has enormous advantages, which will last to the end of your career. All firms want to hire clerks because they know what actually happens in Federal courts, they know the court staff, and they know the law and procedures. The only drawback is that the poverty of law school continues for another year or two.

• How much do patent attorneys make?

  • Starting salaries are in the 90k to 100k range at big firms and 85 to 100k at the second tier firms, depending on location and what you bring. You can expect to move up at least 10k a year. New partners at firms typically earn in the 150 to 200k range and experienced productive partners twice that or more. At a corporation reduce those numbers by 25 to 50 percent.

• Should I take a job at the PTO?

  • The PTO is a great place to work during law school and go to school at night. You will graduate with real skills and the background to get the job you want. As a law graduate the PTO is not the place for you, unless you just can't get a job in a firm.

• Where is the action in the patent profession?

  • Traditionally patent law was concentrated in New York, Washington, Boston and Chicago. These are still booming places, but the biggest growth is now in Silicon Valley, the stretch between San Diego and LA and similar happening places. Indeed wherever entrepreneurs are creating businesses and technology is where patent law opportunities will grow. While there is some small demand for patent attorneys at quality of life places like New Mexico or Hawaii, what small demand exists is being amply met.

• Will an advanced law degree advance my career in patent law?

  • Not unless you want to teach in law school. Otherwise it will likely be a waste of time and money.