Patent law? So you want to be a lawyer?

A post from our student blogger Catie

To answer that question: no, completing the MSPL will not necessarily make me a lawyer (at least not in the sense in which the person is likely thinking!) I can’t keep count of how many times I was asked this and other similar questions in the months leading up to my start at Notre Dame. These questions mostly arise just because most people are unaware of what patent agents are and what they do. I, myself, was not really aware of these facts until I was introduced to the MSPL program during my last semester of undergrad. Therefore, I’m going to attempt to explain these differences!

Patent law and intellectual property are a smaller sub-category of employees that can be found at any given law firm. Currently, there are only about 42,500 active registered patent practitioners in the U.S. ( Although there are currently not very many practicing patent practitioners, they are in high demand because they bring in plenty of good business for law firms, and the skill set that they possess are incredibly useful in the industry. Their usefulness is really a hidden gem, because inventors who even consider trying to patent their own invention are often in over their heads, and the U.S. Patent and Trademark Office (USPTO) are currently under about a two year backlog of reviewing patent applications (just to give you an idea of how many inventors are trying to obtain patents).

Patent practitioners can be divided into two main categories: patent agents and patent attorneys. Patent agents typically do what’s called patent prosecution; or drafting patent applications for filing. Referring to my previous statement, a patent agent would be the person who drafts the patent application for the inventor. Patent prosecution is what we are training for in the MSPL. This job includes working with inventors, understanding the technical details behind the inventor’s new idea, and doing tons of searching and writing to prepare the patent application. Prosecution still requires a strong understanding of the patent laws and codes found in the MPEP to ensure that the new idea is patentable and that no laws will be infringed upon in the patent drafting and filing process. Patent attorneys perform patent litigation, and they are the people who can stand in court and litigate in cases of patent infringement. Infringement can include breaking a code from the MPEP or situations where another company or individual attempts to make or sell an invention that is patent-protected. There is also a third category of people related to patent practitioners made up of patent examiners. These are the people who work for the USPTO and review patent applications with the power to either grant a patent or reject the application.

You’re probably wondering how you make your way into one of these careers. In order to be a patent agent, you MUST have a technical background in either science or engineering (basically a Bachelor’s degree in one of the approved fields, check here: ) and must pass the patent bar exam. A patent attorney must complete the same requirements and must additionally have a degree in law. Patent examiners are only required to have a minimum of a Bachelor’s degree in science or engineering, although passing the bar exam and holding a PhD in the desired technical background is helpful. So, if you ever find yourself in my place and people ask you “Isn’t that a far stretch from your degree?”, you can now politely correct them and inform them that it was the first step towards your patent law career! As a final note: if you are considering the MSPL program, the student bloggers can be a great resource for getting your questions answered! My technical background is in biology, but Megan would be great to talk to if you have a degree in law, and Roberto would be the person to talk to if you have a background in engineering!

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