METAMORPHOSISMETAMORPHOSIS Changing From One Non-Human Life Form to Another Non-Human Life Form By George Meyer Toler Larson & Abel

METAMORPHOSISMETAMORPHOSIS Overview I.Patent Agent (no law school required) II.Patent Attorney (law school) III.Transactional Attorney - IP IV.IP Litigator V.Gives and Gets VI.Other Considerations

METAMORPHOSISMETAMORPHOSIS I. Patent Agent – No Law School Required A.Can write and prosecute patent applications before the U.S. Patent and Trademark Office (USPTO) B. Many different ways to qualify. i.B.S. Technical Degree ii.40 credit hours in physical or life sciences C.Take and pass the patent bar exam. Low passage rate.

METAMORPHOSISMETAMORPHOSIS I.Patent Agent (Continued) D. ABSOLUTELY CANNOT OTHERWISE ENGAGE IN THE PRACTICE OF LAW (e.g., cannot advise a client on the effect of signing an assignment or signing a false declaration) E. Limited advancement F. Cannot be a partner in a law firm (only attorneys)

METAMORPHOSISMETAMORPHOSIS II. Patent Attorney A. Writes and prosecutes patent applications. B.Advises clients on patent legal matters. C.Legal opinions (validity, infringement) D.Qualifications i.Law school graduate ii.Technical background iii.Passed state bar and patent bar exam iv.Long-term thinking E.Caveats i.Corporations treat patents as commodities ii.Conflicts – patent litigation and general practice firms

METAMORPHOSISMETAMORPHOSIS Patent Agents and Patent Attorneys: Get to see new and exciting technologies Work with very creative people See when patents that you wrote are infringed Can help formulate patent strategies with clients

METAMORPHOSISMETAMORPHOSIS Unfortunately, Patent Agents and Patent Attorneys: Work with PhDs and the near criminally insane Have to deal with communication/technology gap issues with inventors Work with problem clients

METAMORPHOSISMETAMORPHOSIS III. Transactional Attorney A. Advises client on IP transactions. B.Drafts and negotiates IP agreements (patent, trademark, trade secret). C.Creative solutions to avoid saying No D.Qualifications i.Law school graduate ii.No technical background required iii.Passed state bar iv.Short-term and long-term thinking E.Caveats i.Should know business and its existing agreements ii.Conflicts – patent litigation and general practice firms

METAMORPHOSISMETAMORPHOSIS Transactional Attorneys Work with executives Integrate IP agreements with business strategies but, Work with executives Have to write agreements to protect the client from itself Agreement work goes in-house when times are bad

METAMORPHOSISMETAMORPHOSIS IV. IP Litigator A. Does everything from the time a lawsuit is first discussed until the lawsuit is terminated. B.Hunter vs. farmer C.$$$$$$$ D.Qualifications i.Law school graduate ii.No technical background iii.Passed state bar iv.Mostly short-term thinking, with a little mid-term thinking E.Caveats i.Very long hours ii.Always dealing with a party in a hostile setting

METAMORPHOSISMETAMORPHOSIS IP Litigators Get to help others assert their rights in court Help to force another party to the bargaining table but, May have to calm down the client Deal with clients that lie or withhold information

METAMORPHOSISMETAMORPHOSIS V.Gives and Gets (Associates and Patent Agents of All Types) A.Minimum billable requirements. An hour billed is more than an hour worked. For every 9 hours at work (excluding lunch hour) about 7 hours will be billed. B.Expect very long hours. Work includes weekends and vacations. C.Annual salary as a patent agent or associate is approximately: 25 to 40% of hourly rate times minimum billable requirement.

METAMORPHOSISMETAMORPHOSIS VI.Other Considerations A. LOTS OF READING AND WRITING. B.Must be very good with English grammar (e.g., know the affect of having or not having a comma, restrictive vs. non-restrictive modifier, etc.). C.Conversion from technical thinking to legal thinking. D.Going from a world of black and white to a continuum of gray. E.Knowledge of other legal subjects, particularly contracts, is very helpful. F.Lots of stress i.Expected to not make ANY mistakes ii.Having to work with low level details iii.Scary busy or scary unbusy.