Waukeshia D. Jackson, Managing Partner, Patent Attorney at Jackson & Lowe Law Group, PC

Waukeshia D. Jackson

Waukeshia is a patent attorney and the co-founder and managing partner at Jackson & Lowe Law Group P.C. in Atlanta, Georgia. She has worked in the field of intellectual law for over 6 years at the time of this interview.

The following is her Q & A interview:

How did you get into a career in IP law?

My undergraduate degree is in Electrical Engineering. I worked for several Fortune 500 companies prior to attending law school.  Therefore, with my professional work experience and rigorous scientific training I saw the difference I could have the opportunity to make with a Juris Doctorate and a career in patent law.

Why did you think this would be a good career for you?

Because technology and the law in this area are developing rapidly, I am confident that this field will be constantly challenging.  Additionally, I wanted to be able to help to educate, inspire and assist other aspiring entrepreneurs and small business owners to develop their inventions and protect their innovative efforts.

What are the top 3 things you really like about working in IP law?

Because patent law is federal law and not state bar specific, a career in this area offers mobility by being able to work anywhere.

I get the opportunity to work with really smart people like; inventors, entrepreneurs, small business owners, and multinational corporations.

It’s challenging work which allows me the opportunity to stay abreast of up and coming developments in technology.

What is one thing you dislike (or that may stress you out) about the work?

The work is intellectually stimulating and I enjoy the work.  However, I think the most stressful part about being a patent attorney is the road to becoming a patent attorney.  You have to have a technical background, then go to law school, then pass a state bar exam as well as the Patent Bar exam in order to become a registered patent attorney.  Those are a lot of hurdles but I think it is definitely rewarding for those who decide to pursue a career in this area of law.

Do you feel like there are advancement opportunities?

There are definitely advancement opportunities in patent law.  This area of the law is client facing which allows attorneys to develop relationships with clients that could potentially lead to business development opportunities.

Do you have any tips for people who are looking for their first job in the field?

Read as much information on the field as possible. – In fact, the USPTO hosts trainings and informational sessions either via webcasts (or webinars) or live trainings at various locations throughout the country. Schedule informational interviews with attorneys already practicing in this area.  Attend networking with events with the state bar’s intellectual property section.

 

Sonia Lakhany, IP Attorney at Lakhany Law, PC

Sonia Lakhany-headshotSonia Lakhany

Trademark lawyer and Managing Attorney at Lakhany Law, PC in Atlanta, Georgia, which is her boutique IP practice focusing on trademark and copyright. Instructor for the Trademark Institute of Training.

Five years in the IP law profession. Read more

Gregory S. Rosenblatt, Partner at Wiggin and Dana

Gregory-Rosenblatt-2Gregory S. Rosenblatt

Partner at Wiggin and Dana
28 Years in the IP Law profession.

How did you get into a career in IP law?

I have a degree in Materials Science and Engineering, a degree in science or technology is a requirement for admission to the Patent Bar.  I was working as an engineer when the company developed a new product.  The company had me explain how the product worked to this patent attorney and he suggested I look into the field.  I did so and was intrigued.  I then went to law school in the evening while continuing work as an engineer.  After graduating law school, I sat for and passed both a State Bar and the Patent Bar.

Why did you think this would be a good career for you?

In high school I was interested in both science and the law. I chose to major in engineering in college figuring it was a more secure profession. After working as an engineer for a few years, I realized that I would rather write about the work rather than actually do it. I went to law school in the evenings while working as an engineer. After law school, I was faced with two hurdles. In addition to being required to pass a state bar to practice law, I had to pass the patent bar administered by the United States Patent and Trademark Office which, at the time, had pass rate much lower than any state bar.

I have now been a practicing patent attorney for 29 years. If you have a passion for science and the law, no profession is better. The patent attorney gets to meet with leading scientists world-wide and work with them to get their inventions patented. This results in travel to many parts of the world and frequent trips to the Patent Office in Arlington, VA. In addition to meeting great people and wonderful travel, the pay has not been bad.

It provides a great opportunity for getting involved in cutting-edge technologies.

What are the top 3 things you really like about working in IP law?

  • Meeting with top-notch scientist and engineers.
  • Traveling to distant locations to meet with inventors.
  • Seeing a product covered by a patent I drafted in commerce.

Do you have any tips for people who are looking for their first job in the field?

Sharpen your writing skills.  The ability to accurately put an inventor’s ideas on to paper is key.

 

Mark Costello, VP, General Patent Counsel, Chief Strategy Counsel, Xerox Corporation

Costello_Mark-webMark Costello

VP, General Patent Counsel, Chief Strategy Counsel at Xerox Corporation
33 years in the IP law profession.

How did you get into a career in IP law?

During engineering school at the University of Massachusetts at Lowell, I realized that, while I loved engineering and science, it was not something I wanted to pursue as a career. In casting around for opportunities where I might be able to use my engineering background, an acquaintance recommended that I look into patent law. I had always had an interest in law, so the suggestion was an easy one to follow up on. In law school at Case Western Reserve University, I took every IP course offered, and enjoyed them, and the rest of my classes, immensely. About halfway through law school, I took a law clerk job at a local patent law boutique, where I learned the basics. A few years later, I heard about the opportunity at Xerox, and was excited to join a company where innovation was at the heart of their business. I have been with Xerox ever since, and it has been an outstanding career.

What are the top 3 things you really like about working in IP law?

  1. Connection with brilliant people – I work with scientists and engineers at their most creative moments, helping them obtain recognition for their most important work.
  2. Patents have developed into the currency of business – and that has involved me in many of the most important transactions that my company pursued.
  3. The changing nature of the technology and IP landscape – I am working on the cutting edges of technology and business.

Do you feel like there are advancement opportunities?

IP law has many, many facets, and if one opportunity is not working out, there is always another. Many IP lawyers start their careers writing patents – and there is full and rich career in practice in front of the Patent Office. However, some will veer off into litigation, and others into transactional matters, and still others into non-patent IP specialties like trademarks, copyrights, trade secrets. In each area, there is an opportunity for excellence, and advancement into leadership roles

Do you have any tips for people who are looking for their first job in the field?

First jobs can be hard, and I think you have to look at every opportunity and find one that is right for you. Law firms, both boutiques and larger firms, offer great opportunities to learn the IP business, from different angles, with many boutiques focusing on patent preparation and prosecution, while larger firms focus on IP litigation (understanding that there are always some excellent organizations who do both). Corporations tend to want more experienced staff, but may offer opportunities for engineering staff to move into IP legal or IP management functions. The Patent Office is also a great first opportunity – and may offer an outstanding career for lawyers who want to work in government.

Is there anything else you would like to share that may be helpful for an individual thinking about starting a career in IP law?

For law students and new lawyers, I think the most important thing is to focus on being a great lawyer first, and an IP specialist second. IP law practice is first and foremost a practice in law – the principles of contracts, property, litigation, and legal research writing all apply equally to IP law. The best IP lawyers I know are all among the best lawyers I know, and would have been successful lawyers no matter what their specialty was.

Eamon Wall Shares Tips On Getting Your First Job as a Patent Agent or Patent Attorney

When did you become a patent agent/attorney?

I’ve been a patent attorney since 1994. Two years corporate, the rest in private practice.

I love it. It’s a really great career. I don’t really sweat the economic ups and downs. I know what I am doing, I like what I do and my skill set is valuable to companies and in demand. I do work hard, but that suits me.

I did not know much about this while I was an engineer. That said, by the time I started attending law school at night it was for the sole purpose of entering this field.

Why did you think this would be a good career transition for you?

While working as an engineer I became familiar (a little bit) with the patent field. It struck me as critical to the success of a company and, therefore, a critical function within a company.

My view of engineering was becoming a bit jaded as we went into a paperwork intensive iso-9000 regime. I also knew I needed to get further education; namely, an MBA, MS EE or law degree. I chose the latter because I wanted to be part of what appeared to me to be an upcoming corporate emphasis on intellectual property, particularly the creation and use of patents to protect technical innovations.

What is one thing you like about working as a patent agent/attorney?

I like learning something new every day. I like taking a complex innovation and finding way to express its essence in a clear and concise manner to further my clients’ interests.

What is one thing you dislike about the work?

Very little. I really like what I do pretty much every day. I am very busy at times and often need to focus on immediate client needs to make sure that the many time constraints associated with my practice are managed properly. Scheduling control is critical, and sometimes I just need to handle what’s next rather than what I wish to work on.

Do you feel like there are advancement opportunities?

Absolutely. This is a challenging job requiring technical, communication and legal skills. If you know what you are doing then you can move into different areas within the broad patent or intellectual property fields. There are opportunities in private practice as well as in corporations and government. There are opportunities on the technical side as well as legal/business/venture sides.

Do you have any tips for people who are looking for their first job in the field?

Learn to communicate well. Learn to speak and to write effectively and logically. Find some way to demonstrate this ability to a potential employer. Find some way to demonstrate an ability to learn quickly. Develop the critical ability to distill a complex topic or concept to its essence, along with an ability to communicate this essence within the context of whatever narrative is appropriate (a patent application, a letter to a client or opposing party, a letter to the CEO or board of directors etc.).

I like to see some evidence of discipline; an ability or determination to stick with something until it’s done. Things such as military experience, night school, work experience and the like are very interesting to me as a hiring partner. Volunteer to write something for a prospective employer. Challenge them to test your ability, to give you the opportunity to show that you really know what is necessary for this job.

One of the problems for a patent firm or company is the fact that the time investment in training a new patent attorney or patent agent is high. The claims of a patent application (the most important part), will likely be poorly written by the new hire for six months to a year. That’s just the way it is. The trick for both the new hire and the company or firm is to find a way to quickly ramp up and become somewhat self sufficient.

New hires should learn the technology of the company or client as well as they possibly can. They should do this quickly, and not just on business time. A primary skill of a patent attorney or patent agent is very quickly digging down to the specific technical minutia necessary to express the invention/innovation, how the invention should be practiced and so on.

We don’t have the time or budget to write a treatise on the invention. We need to focus on what is before us and why it is novel/nonobvious. Muddled thinking leads to muddled writing/speaking, poorly drafted patent applications and the like. This is to be avoided.

Patent Attorney Career Spotlight: Bob Siminski

When did you become a patent agent/attorney?

I became a patent attorney back in 1990.

Why did you think this would be a good career transition for you?

I knew that patent attorneys generally used a combination of their scientific and legal knowledge which was intriguing.

What is one thing you like about working as a patent agent/attorney?

The opportunity to work with creative people on a daily basis. In the field of patent law we work on scientific subject matter which sets up nicely for a guy who studied chemistry and worked in chemistry labs.

On the trademark front, I get to work with entrepreneurs who are investing in product or service branding. In the field of copyrights we work with different types of “artists” – musicians, photographers, painters, sculptures, software developers, etc.

What is one thing you dislike about the work?

There isn’t much I don’t like. If I had to name one it would probably be dealing with the long lag time between filing a patent and receiving the initial response from the patent office.

Do you feel like there are advancement opportunities?

The field of intellectual property law, particularly patent law, is one of the growth fields in the law. Work in this area is largely a function of technological expansion, and technology over the last few decades has grown exponentially. Positions for patent attorneys are available in house with corporations, in private practice with law firms or with the US Patent Office for example.

Do you have any tips for people who are looking for their first job in the field?

In order to become a patent attorney you must have enough of a scientific background to qualify to take the Patent Bar Exam.

Most people entering this field have at least a Bachelor of Science degree, with many now pursuing more advanced technical degrees before heading off to law school.  You don’t need a technical background for the fields of trademark and copyright law, but it certainly doesn’t hurt if you do.

When I look to hire new or lateral attorneys, I love to see a combination of technical work experience along with their technical degree. By and large these people have a basis to relate to inventors  who have spent their careers in the field of engineering or the sciences.

James Drake Talks About Registration Numbers and Patent Attorney Career Insights

How Did You Enter the Field of Patent Law?

I have been a patent attorney since 1990. I got into the field in quite an unusual fashion. When I graduated from high school, I enrolled in a six year BS/MD program, but that stalled when I had to operate on live animals in physiology lab.

Possessed of a Bachelor’s Degree in Biology but no immediate job prospects, I decided to enroll in law school. Midway through my second of three years in law school (this was in Cleveland, Ohio), I saw an advertisement on the job board for a law clerk. The prerequisite for the position was a B.S. degree in science. It was also paying significantly more than most other law clerk jobs available at the time.

It turned out that the job was with the Patent and Licensing Department of BP America, which had recently purchased Sohio. The reason a B.S. degree in science was necessary was because there is a separate certification that you must earn above and beyond the state bar examination in order to call yourself a patent attorney. Most other areas of law allow you to begin practicing as soon as you graduate and pass the bar exam. As a result, this is a field with a limited number of practitioners.

My registration number is 34,584, which was assigned to me in 1990. At the time, it was rare to find a practitioner who was either active or alive with a number under 20,000. This is because the numbers have been handed out consecutively since 1910.

Currently, the registration numbers are in the 75,000-80,000 range. This big jump is primarily a result of higher pass rates on the patent bar exam. Nonetheless, it is still a limited field of practice and practitioners who have been around as long as I have tend to run into colleagues we have met previously more often than not. As an example, the attorney who hired me for the BP America job hired me again six years ago for a company that was spun off from BP.

Insights on Working as a Patent Attorney

The job is very interesting because you are typically working with new technology that no one has seen before. Job advancement varies depending on whether you are an in-house or outside counsel.

In private firms, the usual 7-10 year period of being an associate attorney is followed by becoming an equity partner in the firm if you can generate a sufficient amount of business. In corporations, advancement is more haphazard, as few corporate law departments are sufficiently large to allow for a typical progression. Despite this, patent attorneys may be found at all levels of a corporate structure.

In the mid-90s, I worked for a chemical company where the CEO and the VP of Human Resources were both patent attorneys, although no longer practicing. Overall, pay for patent attorneys is at the high end of the compensation scale for attorneys, primarily because of the specialized skills of practitioners.