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Microsoft Researching Patent Law with New Experts
wikinerd writes "According to The Register, Microsoft seeks to hire new patent experts. In their words, patent experience itself "is helpful but not mandatory" and advance knowledge of patent law is not required. The applicants need only be Computer Science or Electrical Engineering PhD holders, without any qualification in law. They will be involved in prior art search, patentability research and technical analysis. The article outlines some of the most controversial MS patents, such as online bill payment."
The worst thing about the bicycle patent is its name. It's not a bicycle, it's an exercise machine with a single flywheel. The novel aspect is the pedals - they are independent of one another rather than being connected by a crankshaft.
There is a separate exam to become admitted to the Patent Bar. You can get more information at the PTO website. You do NOT have to be a lawyer to take the Patent Bar Exam. If you pass it and are not a lawyer, you are called a "patent agent." If you pass the patent bar and are a lawyer (admitted to practice law in any state or D.C.), then you are called a "patent lawyer." In order to take the patent bar exam, you must have a technical degree (engineering, science, etc.) Detailed info is linked to above.
To file a patent, unless you are the inventor, you have to be admitted to the patent bar (patent agent or patent lawyer).
There are no such restrictions on copyrights or trademarks. However, you need to be an attorney to file trademarks on behalf of another. (I don't know about copyrights).
For litigation purposes (suing other people for patent infringement), you have to be a lawyer, but you do not have to be admitted to the patent bar. You only need to be a patent lawyer to prosecute (obtain) patents.
Your friend may have been a bit hyperbolic. :) First of all, IP issues in general come up very often in a non-IP lawyer's work: it comes up when a company is trying to hire somebody, when a company wants to purchase or license a product from someone, when a company wants to merge or acquire another company, etc. etc. These things happen all the time. Though we non-IP attorneys would never give anyone IP advice of the sort that addresses whether something is protectable or infringing, we do deal with IP issues a lot without having to punt to a patent attorney.
That said, the practice of drafting and prosecuting patent or trademark applications and challenging validity/claiming infringement of granted patents or trademarks does involve specialized knowledge, and in fact there is a special "bar" exam that is required to be taken in order to practice before the US Patent and Trademark Office (which handles all that stuff). However, the "patent bar" doesn't make you a lawyer; you still have to take a state bar exam in order to be licensed as a lawyer. In other words, you can't be a patent attorney practicing in front of the USPTO without having passed BOTH the patent bar and your state's bar exam.
Note though that you don't need a law degree to do IP stuff in front of the PTO -- registered patent agents, as far as I know, only need a bachelor's degree (with sufficient science background). In order to be registered, they must take the same patent bar as aspiring patent attorneys, and if they pass they can draft and file patent applications, just like a patent attorney would be able to. They can't go to court, of course, and so can't litigate patent validity, but a lot of law firms that specialize in IP (an ever-thinning population, nowadays) have lots of patent agents to file and prosecute patent applications.
Also, not all IP litigation is before the USPTO, so not all "IP attorneys" need to have passed the patent bar. I have some friends doing IP litigation who aren't patent attorneys.
I can't believe this post has been up for a day and not a single person has actually checked in with the following info:
Law firms and companies with patent lawyers routinely hire non-lawyer technical experts to help them with patent work. In law firms, these people are typically called "technology specialists" or something similar. Often these people simultaneously go to law school, with the idea being that they will eventually turn into lawyers.
Additionally, there are many people out there who are called "patent clerks." What this means is that they have studied for and passed the US Patent and Trademark Office's (USPTO) examination. Once you have passed this exam, you are qualified to help people obtain patents, regardless of whether you have a law degree. Now, you obviously can't practice law, so you're quite limited if your only a patent clerk and not a patent lawyer, but you can still be quite helpful to someone who just wants to obtain a patent or two.
Bottom line: law firms and legal departments routinely hire tech/science people to help them with their patent work. I honestly can't believe this made it into a story. Next week there will be a post about Microsoft hiring SECRETARIES. I mean, they're a software company!! They're supposed to be writing software and they're out hiring secretaries!?!?