Have you ever marveled at the latest gadgets or innovations, wondering about the creators behind them? Have you ever wondered if there was a lucrative path where you could expand your technical knowledge without being stuck in a lab or computer room for days? As a former computer science student that dreaded an impending programming career, I certainly have. Luckily, there’s a fascinating world out there, beyond labs, research, and programming, where I learned I could have a significant impact with my science background: the world of patent prosecution.

What’s Patent Prosecution, Anyway?

No, it’s not about putting patents in jail! Patent prosecution is all about helping inventors get legal protection for their new ideas. In simple terms, it’s the process of discussing, refining, and receiving approval for an invention with the United States Patent and Trademark Office (USPTO).

Think of it as a guiding process between an applicant and the USPTO to acquire a patent. An inventor might be the applicant, or they might assign their rights to their employer as the applicant. Innovators come up with ideas, and patent prosecution ensures these ideas meet the requirements to have legal protection. The requirements for patent protection include the invention be useful, new, and nonobvious. A patent provides detail as to what is in the invention that others are prohibited from making, using, selling or offering to sell. If someone were to make, use, sell, or offer to sell a patented invention, the owner of the valid patent  could  sue for damages in a patent infringement suit.

Why Is Patent Prosecution Exciting?

Every day is a new adventure. Any new matter a patent prosecutor may encounter is something the world has yet to see. Plus, with a science background, patent attorneys are perfectly positioned to understand the nuts and bolts of these inventions, making our role invaluable while being paid to learn the ins and outs of your scientific discipline.

As a future patent attorney focusing on prosecution, I’ll be exploring many various scientific and technical innovations and ensuring they get the legal shield they deserve.

Do I Need a Law Degree?

Surprise! You don’t need a law degree to dip your toes into patent prosecution. While many in the industry are patent attorneys, technical specialists and patent agents also practice patent prosecution.

What are technical specialists and patent agents? Technical specialists have at least an undergraduate background in a scientific discipline and often are hired by firms to help do patent prosecution. Technical specialists cannot represent inventors on their own. Patent agents are required to pass the patent bar exam, such that they are registered to practice with the USPTO. Patent agents can represent inventors before the USPTO on their own. Technical specialists and patent agents can maintain these positions without going to law school. They can also attend law school, and upon graduating law school and taking the state bar exam, they are then given the title patent attorney (that also includes a pay raise).

My Patent Prosecution Journey

My journey into patent prosecution was anything but planned. It sprung forth from a suggestion by Professor Cynthia Ho, spurred by a combination of my Computer Science background and a timely 1L summer associate (well paid summer firm) opportunity at an IP boutique. i.e. a firm that specializes in IP. The cautionary whispers from peers and attorneys in other fields that patent prosecution is overly complicated were dispelled, revealing instead a dynamic, evolving, and exciting field that takes practice and experience to master, just like any other field. Contrary to my initial misconceptions of patent, I discovered a realm that perpetually evolves, demanding ongoing learning and adaptation from its practitioners. Where my previous legal ambitions before law school leaned towards personal injury and civil rights law, an experimental and experiential summer experience in patent prosecution offered a different kind of thrill and challenge that has enticed me for life.

Navigating the nuanced language of patents initially posed a unique challenge. Familiar language structure was subtly interwoven with peculiar patent norms and grammatical constructs. For example, I learned that an entire invention must be defined in a single sentence no matter how complex the invention. MPEP 2175. And yet, amidst these intricacies, my summer associate experience unfolded captivating opportunities, like my first project centered on blockchain technology. That initial week showed me the joys of patent prosecution. I was deeply immersed in blockchain research and assisted in drafting a part of a patent application. This not only enriched my understanding of blockchain technology and patent applications, but was emblematic of a career where learning is not only encouraged, but essential to the job. Learning about a technology that reached prominence after I concluded my computer science studies, coupled with capturing the innovation of the invention by explaining its novelty in the background section of the application was a long awaited marriage of my technical and legal skills. This unexpected adventure in patent prosecution revealed the practice as not just a job, but an exhilarating pursuit of knowledge and innovation.

In retrospect, had I known earlier about that patent prosecution was accessible to individuals without a legal degree, my path might have looked a bit different. The realization that firms not only welcome but often financially support the educational endeavors of technical specialists and patent agents in law school was a revelation realized slightly too late. Today, as I sail further into the ocean of patent prosecution, I find myself surrounded by an array of opportunities to learn. I’m thankful to this practice that not only fuels my curiosity but also consistently opens new horizons, inviting anyone with a fervor for technology and a keen analytical mind to dive in.

Parting thoughts

In a nutshell, here are a few reasons why I love patent prosecution:

• Continuous Learning: The field invites you to perpetually update your knowledge, aligning with the pulse of technological advancements.
• Lucrative Pathway: Not only do technical specialists, patent agents, and patent attorneys enjoy a dynamic work environment, but the career path is also financially rewarding.
• Diverse Innovations: From robotics to artificial intelligence, patent prosecution can plunge you into a myriad of sectors, offering a never-ending learning curve.
• Supporting Innovations: Be the unsung hero who ensures inventors’ ideas are shielded, enabling them to contribute effectively to technological progress.

So, if blending science with a touch of legal strategy sounds like your cup of tea, the vibrant world of patent prosecution might just be the path for you. It’s more than just a job—it’s where science meets strategy, where innovation meets protection, and where you can carve a niche for yourself, celebrating and shielding the marvels of human invention. Curiosity entwined with a scientific mindset forms the bedrock of a successful career in patent prosecution, and I couldn’t be more excited to start down this career path and take some curious minds with me!

Daniel Henry
Associate Blogger
Loyola University Chicago School of Law, J.D. 2024