Survey on Fields-of-Study for Patent Practice

Stephen Mason and Austin Talley are conducting a survey of patent practitioners when the focus on: What technical subjects should undergraduate degree candidates considering patent law study? Take the survey here: I’ll post a link to the results once they are released.


54 thoughts on “Survey on Fields-of-Study for Patent Practice

  1. 10

    Update: 306 people have completed the recent survey on preparatory education of patent professionals that Austin Talley and I are conducting for the Engineering Leaders Conference on Engineering Education at Texas A&M University-Qatar, in Doha, Qatar in November.

    Given that this number is on the order of roughly 1% of the estimated population of active patent practitioners in the United States, we owe a huge debt of gratitude to everyone who completed the instrument. We owe even more to the people who worked to promote the instrument. Thank you!

  2. 9

    Best advice I can give: Study a technical field that you enjoy.

    First, this is stuff that you’ll be reading and writing about for 20+ years. If you don’t like the technology – REALLY like it – then you’re going to be bored out of your skull.

    Second, you’ll be a 1,000% better patent drafter in a technology area that you enjoy than in one you don’t. Good preparation demands very deep thinking about technology on the cutting edge, and if you’re not pushing yourself to understand it completely, you’re going to miss the novelty and value of the invention. And if you can’t provide a compelling story about why the technology is interesting, prosecution will be more difficult.

    Third, you’ll be a 10,000% better patent prosecutor. Minimally adequate patent prosecution requires reading and understanding every reference, and ALL of every reference, to get a sense of what it actually teaches, as opposed to what the examiner saysit teaches. Then it requires thinking very carefully about what the differences are, and whether or not they matter, and how to amend your claims to express that difference succinctly and clearly. And if you don’t love the technology, this process will be excruciating.

    Far too many practitioners and examiners take shortcuts, and it shows. Arguments are presented that are technically nonsensical: attempts to distinguish trivial differences (“but THIS file is a DATABASE”), and significant differences overlooked (“‘resolution’ is the same thing as ‘pixel density'”). Words get taken out of context by people who were too unmotivated or uninterested to understand them. Not taking those shortcuts enables you to run circles around practitioners who do, and to provide your client with tremendously better service.

    Fourth, you have a valuable skill in your back pocket. So if your law firm collapses, or your clients vanish, or your area of patenting becomes too difficult, or you get burned out, or you just find that you don’t like patent work – then you have another option.

  3. 8

    Given the current and future glut of attorney’s, I’d advise including a course on real estate flipping. Smart, hard-working folks across the country are earning $25,000 – $50,000+ per house … and doing 3 – 5+ deals/year.

    Isn’t this better than going to school for years … and then graduating with up to $100,000+ in debt … with no job in sight?

    Alternatively, these folks could read through 100’s of patents and apps in a field of their interest … come up with new / improved products and services (processes) … hire a great patent attorney … and patent their own inventions.

    1. 7.2

      Oh dear god no. Unless you want to be a sales rep. Undergrad biomedical engineering is utterly pointless. The utility of even graduate level BME is debatable.

  4. 6

    Here in multi-lingual Europe the trend is to ever more specialised technical qualifications, simply to understand the technical field in which the client has made the inventive step. Post-grad qualification is needed, in EE or chem/bio, just to get an offer of a training place. Needless to say, excellent communication skills are a sine qua non. Otherwise, you are unlikely to win many disputed inter partes cases at the EPO, where most of the argument is about the technology, not the law. Add to that the fact that the EPO has 3 official languages, English, French and German.

    Passing the qualifying exam is very difficult. No firm will invest in the years of training unless there are good prospects of the trainee passing the exam.

    So there is a growing shortage of European Patent Attorneys.

    My suggestion: study the particular technical field that most grabs your passion, because you are going to be immersed in it, exclusively it, and up to your neck, till the day you retire.

  5. 5

    What technical subjects should undergraduate degree candidates considering patent law study?

    The simplest answer is pursue the “technial subjects” you are most interested in and which are taught by the best teachers. That way you’ll get the best grades which may help defray your law school expenses which are going to be as enormous as your undergrad expenses.

    If you are planning on becoming a patent agent then the considerations are a bit different. Are there many high school graduates entering college who have indicated that they have such plans? I have to assume the answer is “no” but I’d be interested in any evidence to the contrary.

    If one insists on believing that the previous couple decades of court/PTO-worship of information processing claims is going to continue into the future, then perhaps some classes in “library science”, database management or a similar area might be helpful.

    Of course, if the patent system continues down its present path, the requirement for a “technical background” will seem even more silly than it does now.

  6. 4

    NONE! Only a fool would be preparing to enter the legal field right now. And engineering isn’t much better. The good jobs are the low cost training with jobs available in rural and suburban settings – HVAC, electrician, dental assistant, Nurse practitioner, physician assistant, pharmacy tech, etc.

    1. 4.1

      Nurse Practitioner in the state where I live is a 6 year, two registration exam process. Four year BSN degree plus registration exam, and two year MNP degree plus another registration exam on top.

      1. 4.1.1

        Okay. They make over 100, CAN live in low cost of living areas, and the schooling isn’t nearly as expensive as law or some other “prestigious” “profession”.

    2. 4.2

      All of those are falling with the general fall of the middle class.

      If you can be an ee, you can be on Wall Street.

  7. 3

    I should note that the genesis of the questions in this survey was a feeling that, while there is a general oversupply of lawyers and possibly an oversupply of patent lawyers, anecdotal evidence suggests that there is an undersupply of lawyers with specific technical backgrounds.

    Because anecdotes lack the necessary rigor to discuss the problem in a meaningful way, Prof. Talley and I started to look for data.

    1. 3.2

      This is more anecdotal evidence, but my view is that the biggest problem is an undersupply of patent lawyers with real engineering experience. Going straight from engineering school to law school is a terrible idea, in my view, as no engineering curriculum really gives you the perspective that toiling away in the lab for a few years will give you.

      By the way, while meaning no disrespect, I don’t count programming (other than some embedded programming) as “real engineering” – it’s a different discipline and the supply of attorneys with nominal programming experience is more than sufficient, thank you.

      I suspect that one reason there are so many cr@ppy “computer-implemented” patent applications being written is that these are the only applications that many patent attorneys are at least minimally competent to write.

      Just my humble opinion.

      1. 3.2.1

        Most engineers don’t work in labs.

        Suffice to say, that this provides an ample window into your perspective – one as limited as the engineer that jumps directly to law school, I would add without the slightest hint of snark.


          Most engineers don’t work in labs.

          That’s nice. And most “engineers” don’t do much engineering, do they? But those aren’t the ones who should become patent agents either. You can deny it all you like, but there are plenty of newly minted lawyers with technical degrees out there, and there are even plenty with EE degrees. But without meaningful technical experience they’re not much use to any one except the bottom feeders.


            Just remember DanH that 1) your characterization of there being some group of attorneys that are bottom feeders is offensive and has no support. 2) That at the heart of the problem is the PTO. You refer to “patents” that were granted by the PTO. Get that the problem is the PTO. Real patent attorneys wish the PTO would get better at what they do.

            Example, clients continue to push for lower prices on everything. One reason for this is that the PTO does such a terrible job that most examiners are incompetent. So, in one case, I remember working very hard to convince a good examiner who was a primary and knew his stuff to grant a patent. He was a good guy and it took a lot of skill to get the patent granted. Then on another case for the same client there was an examiner that was granting patents for garbage. A monkey could have done my job. From the client’s perspective they don’t see the difference, but just look at a number of patent applications granted. So, if you are a great law firm that does a great job you may not have much better results because of the incompetent examiners. Note too that some clients simply take a buck shot approach and figure they will take the patents from the incompetent ones and take the hit on the good examiners (i.e. not pay for good patent attorneys to narrow the claims and present arguments.)

            Think about that DanH. That s the real reality. Good patent attorneys want objective high quality examination. It makes our job more valuable. So, why don’t you stop blaming others and take responsibility for the problem.

            Also, note from what I’ve seen these new cases have just made matters MUCH, MUCH worse.


              I would also add that MM should read and respond to this. Because this is the reality of the law firms I’ve worked at that one of the top shelf premium law firms for patents.


              So, why don’t you stop blaming others and take responsibility for the problem.

              Who am I blaming for what, NWPA?

              Regarding bottom feeders, there are bottom feeders in any profession or industry. I’m not blaming them for anything, at least not right now.


                What you ARE doing DanH/Leopold is engaging in the typical implicit name calling that is not supposed to happen on the discussion-friendly Patently-O.

                Further, and not intending to start any meta-bickering, I am also certain that you are very much aware that you are doing this implicit name calling, as you also (somehow) think that a defense of “there are such people everywhere” means that your comment is not an insult nonetheless.

                Something about all of us doing our part comes to mind.

                1. The question is: do we want to encourage lawyers bottom-feeding off the patent system or do we want to discourage it?

                  Because there are ways to discourage it.

                  And there are ways to encourage it.

                  Which direction do you want to go?

                2. DanH, you got called out accurately and even politely for your snarky name calling. Looks like it’s working fine to me.

                3. Wow. I wasn’t directing the term “bottom feeders” to anyone here, or to anyone in particular, for that matter. And yet, it appears that at least three people were sorely offended. I’ll be more careful.


              NWPA, I don’t think the problem is that examiners are incompetent, it is that quality work, including at the Patent Office level, is expensive, especially in time. And perhaps more expensive than the system’s primary stakeholders (their choice of word) would be willing to pay. A system can be envisioned in which every patent application undergoes a very thorough and exhaustive vetting process, but who would pay for that, and how many of us would be willing to wait for the result? The number of hours offered per balanced disposal would have to more than double in some arts, pendency numbers would skyrocket, and the stakeholders would complain. The system we have is the one we pay for and more or less tolerate.


                Egon, what a strange post. All you said was “no NWPA” and then say to improve the quality it would be too expensive. You didn’t address the substance of my post at all.

                And, I’ve posted on here before the quality could be vastly improved by 1) moving the PTO to a less expensive area, 2) putting back TSM and outsourcing, 3) get someone in there as the director that knows prosecution so they can improve the systems in place.


                I don’t think the problem is that examiners are incompetent, it is that quality work, including at the Patent Office level, is expensive, especially in time.

                There are definitely good examiners whose work product is constrained by the realities of the productivity system.

                And on the other hand, there are plenty of bad examiners whose office actions look like this:

                Claims 1-20 are rejected under 35 USC 102(b) in view of Reference A.

                Claim 1 is rejected in view of Reference A (see paragraphs 20 through 62).

                Claim 2 is rejected in view of Reference A (see paragraphs 20 through 62).

                Claim 3 is rejected in view of Reference A (see paragraphs 20 through 62)…

                And the final rejection is identical, except for the following addition:

                Applicant’s arguments have been considered, but are unpersuasive. See Reference A, paragraphs 20 through 62.

                In my experience, those examiners outnumber the first kind by at least 2:1, and probably more. It’s gotten better over the past decade, but it’s still not good.


              NWPA: 1) your characterization of there being some group of attorneys that are bottom feeders is offensive and has no support.

              Such people exist, there is plenty of support out there for their existence, and denying their existence and their impact on the patent system and their impact on public opinon about the patent system is one of the major habitual mistakes of the patent expansionist crowd.

              some clients simply take a buck shot approach and figure they will take the patents from the incompetent ones … (i.e. not pay for good patent attorneys to narrow the claims and present arguments.)

              And then what?

              Good patent attorneys want objective high quality examination.

              I’m pretty sure that we all agree that “high quality examination” would be awesome. People — including many “good patent attorneys” — disagree on what that term means and how to achieve it.

              I’m quite certain that preventing Examiners and judges and attorneys from using common sense and logic to tank patent claims seems to most poeple like a terrible way to go about achieving that goal.


                >>>>I’m quite certain that preventing Examiners and judges and attorneys from using common sense and logic to tank patent claims seems to most poeple like a terrible way to go about achieving that goal.<<<<

                Alice 101 is not law. Even the last judge said Alice is basically I get to do whatever I want. That is not the kind of law that any person living in a democracy should want.

                1. I was talking about KSR and your recent suggestion that getting rid of the strict TCM standard for obviousness is somehow the cause of lower patent quality. Maybe I’m misread what you wrote or maybe you didn’t mean what you wrote.

                  Anyway, my comment was not about Alice.


                I’d prefer that they use established prior art and reasonable rationale to tank the claims than what amounts to an opinion.


              NWPA : the problem is the PTO

              There certainly are problems with the manner in which many computer-implemented and information-processing patents are granted at the PTO.

              What do you propose to do about them?


            Dan – Makes you look fairly bad to say that the only role for patent attorneys who are also engineers/scientists is as “bottom feeders” unless they have “meaningful technical experience.”

            I know plenty of excellent engineers who would be awful patent attorneys. I also know many patent attorneys who only spent a short-time working as an engineer/scientist, but who have turned out to be excellent.

            I suspect that we tend to support the notion that the best patent attorneys follow similar career paths to our own.

            I do think that there are some problems with someone moving into patent law as a second career after 20-years as an engineer. In particular, it will be time to retire about the same year that the individual really learns the ropes of being an excellent patent attorney.


              Dan – Makes you look fairly bad to say that the only role for patent attorneys who are also engineers/scientists is as “bottom feeders” unless they have “meaningful technical experience.”

              Ah, so that’s what has everyone so worked up. That’s not exactly what I said, I think. It’s certainly not what I meant.
              I was trying to address the current job prospects for engineer/attorneys with no technical experience, and I suggested, hyperbolically I admit, that the only current opportunities for them at present were at bottom feeders. That’s a far cry from saying that every patent attorney with no engineering experience is a bottom feeder.

              Of course there are experienced engineers who make terrible patent attorneys, and of course I have worked with many excellent patent attorneys who went straight from undergrad to law school, and acquired much more than “meaningful technical experience” on the job. But that’s not the career track I’d recommend right now, because I think it’s harder to find a position that will give you good on-the-job technical training. Once again, it’s just my humble opinion.

              P.S. Your last comment is pretty funny, Dennis! Don’t worry – I’m not planning to retire until sometime well after I become an excellent patent attorney. That’s the current plan, anyway.

      2. 3.2.2

        Following up on DanH’s comment, if you look to any firm that represents clients with large dockets of applications drawn to computer-implemented information processing inventions, you’ll find prosecutors with close to zero coding experience working on many of those applications. That’s been the case for many years.

        There are two major reasons for this. The first is that no experience is necessary as the writing of software has nothing to do with the functionalities being claimed. In many instances, one would be far better served with a background in marketing, sociology, psychology, insurance or (trying not to laugh here) contract law.

        The second major reason is the need/desire for firms to keep their associates busy when, for whatever reason, work in a particular practice group lags while another practice group is struggling to keep up. If there are no special technical skills or knowledge required to draft and prosecute a client’s applications, as is the case with many computer-implemented claims, then it’s relatively easy to shuffle people around to work for that client.


          This assumption is inaccurate. To do a computer system application properly, you have to know how the databases, server systems, and data interactions are structured. Yes, anyone can write a case that isn’t enabled. The same is not true of a case that is properly detailed.


            This assumption is inaccurate.

            I’m not making an assumption. I’m telling you the facts about the agents and attorneys who are prosecuting a lot of computer-implemented applications for a lot of the big players and even some of the smaller ones.

            To do a computer system application properly, you have to know how the databases, server systems, and data interactions are structured.

            All that’s in the prior art for the typical computer-implemented information-processing claim. The only “innovation” is the re-labeling of the information being “processed,” or the idea of performing the old information-processing task “on a computer.”

            If your innovation is a new distinct objective physical structure, that’s a completely different story, of course. Those aren’t the claims I was talking about.

            anyone can write a case that isn’t enabled. The same is not true of a case that is properly detailed.

            I’d love to hear your explanation of the “proper detail” required to support a claim to, e.g., a computer system “configured” to highlight an email message from “a friend” and send a notice to a “handheld device” that the email was received. Let’s say the claim was filed circa 2000. Note that the claim isn’t limited to any particular operating system. What’s “the proper detail” for “enablement” of that claim?

            Or maybe a method for holding a raffle where the winning number is printed on a wrapper and you get your prize by typing the number into a form on a web page. Let’s say taht was filed circa 1997. What’s “the proper detail” for “enablement” of that claim?


              I’m not involved in software cases but, looking in from outside, I see in this thread (yet again) its proponents displaying their tendency to “have it both ways”. By this I mean that when it comes to patentability of their functional claims, it’s all patentable because none of the claimed subject matter is enabled by the prior art. Yet, when it comes to the sufficiency of their specification, the skilled reader, they posit, would have no trouble implementing the functionality.


                No, I always pan cases where there’s not detail to the elements and everything is purely defined by a summary of the function.

                1. Plenty of detail then. Is that it? Is that all there is to it? Five pages won’t get through, but pump it up to fifty and it will?

                  That’s not at all what I was getting at.

                2. And that’s not what I said. I said you need detail in the steps and data interactions (i.e., HOW) you are achieving the invention. Some (most) of that may have to be in the claims too. And yes, when you describe a particular set of automated data transfers and interactions, that is far enough down the levels of abstraction to qualify for 101 in my mind. It does prevent the building blocks, only your implementation of a solution to the problem.

                3. everything is purely defined by a summary of the function

                  Everything, that is, except for the new objective physical structure of the “new” information-processing machine, storage device or system that you’re trying to protect.

                  That’s the sort of disclosure that just about everyone else has been required to put in their applications — indeed, in their claims!– since pretty much forever when they are trying to claim a new composition. Well, there was that kerfuffle with the interpretation of product-by-process claims but good old Randy Rader put an end to that. And there was the so-called “antibody exception” but that window seems to have been slowly closed over the past couple of years (good).

  8. 2

    Honestly, I view this version of the survey as the version 1.0 minimum viable product. Suggestions for questions that will make the data more useful when we re-run the survey in 2015 are exceedingly welcome.

    We asked the questions that immediately occurred to us. We’ll ask better questions as we find them.

    1. 2.1

      Many of the questions assume that the respondent has a role in the hiring process. I’m not sure that’s a reasonable assumption, especially given that the questions are all required.

      I would like to see three scoring matrices rating the value of various technical backgrounds on a 5 point scale. The first matrix would be the value at the time the respondent became a practitioner (or perhaps when they earned their technical degree / experience). The second matrix would be the current value of those technical backgrounds. The third matrix would be the respondent’s estimation of the value of those technical backgrounds in 7 years (chosen because it’s not too far into the future and represents the typical time required to earn a bachelor’s degree and a law degree).

      These three matrices would allow you to derive a sense of the trends in the value of various technical backgrounds and make some future projections. For example, one would expect that many respondents would say that a computer science background was very valuable 5-10 years ago, is of questionable value today, and will likely be nigh-worthless in 7 years.

      Another important question is the geographic location of the respondent. My anecdotal sense of things is that different technical backgrounds are more apt to be valuable in different parts of the country. If someone has a background in computer science but wants to live in the midwest, they will have a very hard time of it compared to someone willing to move to, say, Silicon Valley.

      Fundamentally the question I would like to see answered is “if someone has technical background X and is considering going to law school solely in order to become a patent practitioner, should they do so? (ignoring the questionable wisdom of attending law school in the first place)”. It’s too late for those of us who are already practitioners, but perhaps we can save a few hapless undergraduates and grad students from throwing their lives away on a six-figure expense they will never recoup.

    2. 2.2

      The survey is a good start, but the wording of the questions themselves needs to be examined carefully for ambiguity. For example, in the last question, about whether we “preferentially” hire based on certain criteria, I would have to answer Yes, but we preferentially hire based on a lot of other criteria too, and they could well overshadow the particular criterion you ask about. You don’t want any questions where the reader’s answer is not reflected in any of the answers available. Thanks for doing this research.

  9. 1

    Today’s college sophomore is a good six years away from when he would be starting his first job as a patent attorney, assuming he gets an undergraduate degree and then enrolls in law school without any gaps (add five years for anyone aiming for a doctorate). Predicting the job market in any field that far out (apart from those obviously in decline) is usually pointless. But since you ask, I would not urge an undergrad to pick courses based on a presumed career in patent law. The field itself is still oversubscribed (too many lawyers even in patents), you should study what interests you, and if what interests you is law, then become a lawyer. Leave the focus on patents for when you are in a position to know that’s what you want to do.

    1. 1.1

      I was working as an engineer through engineering school, pretty much following the supply/demand curve through the dot com bubble. A survey such as this would have greatly interested me, and been persuasive for good reason. I am not sure that interest in any one part of engineering or any other field should be weighed anymore heavily than whether there will be a job available or what the associated salaries are for different fields. Some folks should follow interests, others should follow supply/demand because some are more money motivated than others.

    2. 1.2

      I can safely predict some fields will be in greater demand in the near future, for example, disaster clean-up services and sea wall builders. I’d advise those entering law school to consider studying water rights.

    3. 1.3

      I would say that no one should become a lawyer simply because it interests them. “Interest” does not get one a job, nor does it pay the student loan bills. One should only attend law school if A) one is admitted to Harvard, Yale, or Stanford, B) one has a full tuition scholarship to a top-tier school, or C) one is guaranteed a well-paying job after graduation (perhaps by dint of a family connection). At minimum one should read Don’t Go to Law School (Unless) and carefully consider whether one actually falls into the “(unless)” category.

      Anything else is too risky and getting riskier every year. The number of graduating law students needs to fall by about 50% before it matches the number of available jobs, and it needs to stay that way for several years to exhaust the enormous pool of unemployed and underemployed prior graduates. In the mean time automation and off-shoring will continue to shrink the number of available jobs, making it harder and harder for law schools to remain sustainable. In general it’s just an awful time to go into the field and has been for at least the past 10 years.

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