Patent Law News + Insights

13 Qualities Patent Prosecution Law Firms Look For in New Hires

July 16, 2018

It goes without saying that all law firms are looking to hire people who are competent at what they do. But plenty of candidates will meet the basic qualifications for the position — meaning that you’ll need to bring more to the table if you want to stand out.

In this post, we’ll discuss what patent prosecution firms like Henry Patent Law Firm look for during the hiring process.


6 technical qualifications required for patent prosecution

When you first submit your job application, you’ll need to show that you have the right background and experience to succeed in the role. Typically, law firms will rely on the following six criteria to determine whether you’re technically qualified:

1. USPTO registration number

It’s very helpful if you’ve passed the patent bar exam, and therefore have earned a USPTO registration number. This isn’t always an absolute criterion for every firm. For example, many law firms will employ “technology specialists” or “patent engineers” who haven’t yet passed the U.S. patent bar exam.

But if you’re applying for a patent prosecution role, you’ll definitely have a leg up over other candidates if you’ve already passed the exam and received a USPTO registration number.

2. Academic qualifications

In order to take the patent bar exam, you need to have at least a bachelor’s degree (or equivalent course work) in science or engineering. As such, that’s also the minimum academic criteria for anyone who wants to work in patent prosecution.

But if you have advanced science or technical qualifications (like a master’s or a Ph.D.), you’ll be even more appealing to law firms. Understanding your clients’ work is critical in patent prosecution, so meeting the minimum criteria often won’t cut it. Most firms will want to see that you possess depth of scientific experience.

While GPA certainly isn’t everything — and neither is the school you attended — your academic performance is still considered a good indicator of your general work ethic and time management skills.

Many “BigLaw” firms won’t even consider a candidate unless they either went to an elite law school or placed in the top 10 percent of their law school class.

On that note, if you’re still a law school student and you want a job in patent prosecution, you should know that law school extracurriculars like “law review” or “moot court” are not as important as your tech background and grades.

3. A tech background that fits with the firm’s existing client profiles

Most patent prosecution groups have long-term clients that they’ll file many patent applications for over several years. If your technical background aligns well with one of the firm’s important clients, you’ll have a significant advantage because you’ll immediately be valuable to that existing client.

For example, if you specialize in electrical engineering, you’ll be a stronger fit for patent prosecution groups that already serve clients in that field.

You can’t always easily find out who a firm’s current clients are, but you can get a feel for the type of technology they handle by looking at the attorney bios on their website.

4. Interdisciplinary technical background

You’re also a more appealing job candidate if you can demonstrate that you can easily pick up and apply new knowledge. Patent firms love “quick studies” who can be trusted to handle a wide range of cases.

So the more complex or diverse your science or engineering experience, the better.

5. Relevant work experience

Although you can take the patent bar exam without any actual working experience, developing competency in patent prosecution requires significant on-the-job training.

Everyone learns at a different pace, but you’ll typically need at least a year of full-time mentorship before you can draft a competent patent application — and three to four years of full-time experience before you can work independently.

If you don’t have experience, the firm will need to expend resources to train you. But if you can demonstrate that you can work independently, you’ll potentially be a more valuable candidate.

However, some firms actually prefer hiring someone who has little or no experience, just so the firm can train the employee to do things a certain way.

6. Effective writing and communication skills

Strong communication skills are essential in patent prosecution, because a lot of the job involves communicating with clients, drafting patent applications, and making arguments before the USPTO.

But effective writing is more than stringing together grammatically correct sentences. You need to be able to present complex information in a way that’s logical and easy to follow. This is especially critical in technical writing, where you can’t let the jargon get in the way of clarity.

As an anecdote, I usually know whether I’m interested in a candidate about three lines into their cover letter — not because of what they’ve said, but because they’ve already shown strong or poor communication skills.

7 essential “soft” skills in patent prosecution

If you’ve scored a job interview with a patent prosecution firm, that means your credentials technically qualify you for the position. But at the interview, the firm will want to assess if you are the right personality fit to join the team. Here are the seven qualities they’re typically looking out for:

1. Dedication to client service

Law firms are always on the lookout for people with strong interpersonal skills, who will be able to understand a client’s priorities and give them what they need, when they need it. You must be able to treat your clients with respect and provide a high level of service in any situation.

2. Integrity and trustworthiness

Trust is essential to building successful working relationships with both your clients and your legal team. At our firm, if integrity and trustworthiness are even questionable, you’ll not be considered. Hard stop. In any case, you won’t be a good practicing lawyer if you have a poor sense of ethics or can’t be trusted.

3. Good analytical skills and judgment

As a patent professional, you need to be able to confront complex issues and make appropriate judgments based on what you know.

You need to be able to identify any legal issues at stake when given the facts, and know how to apply the law to address the situation.

4. Strong business instinct

You need to understand the firm’s business priorities, and how its practices serve those priorities — in particular, the importance of efficiency, timeliness, and professionalism.

Similarly, you need to be able to help your clients craft smart patent strategies that are informed by their business priorities.

5. Efficient time and project management skills

In patent prosecution, time is of the essence: Missing a critical deadline simply isn’t acceptable. Strong candidates have the discipline to independently meet deadlines and efficiently manage their workload.

6. Team-player spirit

There’s also a lot of teamwork involved in the patent prosecution process. With each client case, you’ll interact with business folks, inventors, and so forth. Internally, you’ll also have to coordinate with your own team of paralegals, researchers, and partners.

Your colleagues are going to be spending a lot of time with you! Law firms want to know that you’re going to be easy to work with — and that your temperament isn’t going to cost them a client.

7. Commitment to the firm’s values and mission

Ultimately, you want to work for a firm whose values are aligned with your own, and whose mission you can invest in.

You can be a highly competent patent professional in your own right — but if you don’t like the way the firm works, or why the firm does what it does, then you won’t make a positive contribution to the firm in the long run.

What does a boutique IP firm look for in new hires?

Interested in contributing your talents to a boutique IP firm?

At Henry Patent Law Firm, we’re always looking for dedicated team players with extensive experience prosecuting patent applications for sophisticated tech companies.

Check out our team page to learn more about what we do!

henry patent law firm team

POSTED IN: All Posts, Recruiting

Michael Henry

Michael Henry is a principal and the founding member of Henry Patent Law Firm PLLC. Michael specializes in creating comprehensive, growth-oriented IP strategies for early-stage companies who are developing emerging technologies.

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