New program launches STEM majors into patent law career path

May 17, 2023

By Mariah R. Lucas

UNIVERSITY PARK, Pa. — A new program is launching this summer to expose Penn State science, technology, engineering and math majors to career paths in patent practice. Managed by the Law, Policy, and Engineering initiative (LPE) within the School of Engineering Design and Innovation (SEDI), the Patent Agent Career Pathway is for upper-level undergraduate and graduate students seeking to learn about patent law and explore the possibility of taking the patent bar exam, which does not require a law degree, to become a patent agent. 

“This program is perfect for engineering and science students who are interested in a career path outside the lab or traditional engineering industry,” said Sandra Allain, director of LPE and professor of practice in SEDI, who spearheaded the program. “With their technical knowledge gained from a STEM program, they are well suited to work with inventors on the patent application process and become agents of innovation.”

Patent agents work to protect intellectual property — which can consist of an original invention, technical product or process — by preparing, filing and prosecuting patent applications. They can work for startups, technology transfer offices in universities and research institutes, research and development groups within corporations, the United States Patent and Trademark Office (USPTO), patent law firms or legal departments of corporations. A STEM-oriented degree is required to apply to take the patent bar exam. 

The program kicks off on June 28 with LPE 497: Patent Application Drafting, offered synchronously via Zoom three evenings a week during Summer Session II. 

“In this course, students will learn the legal principles underlying patent drafting and will prepare and draft a patent application,” said course instructor Jonathan D’Silva, Penn State assistant professor of law and director of the Intellectual Property Law Clinic at Happy Valley LaunchBox. “They will explore basic principles of patentability and the structure and format of patent applications, as well as how to develop a U.S. and international patent portfolio strategy.”

D’Silva also will cover the practice of being a patent attorney or agent, how to engage effectively with clients and the opportunities that are available in the field.

Following patent drafting, students will register for LPE 497: Patent Filing and Prosecution, taught by Andrea Ragonese, assistant teaching professor in SEDI, to be offered synchronously via zoom during the fall semester. 

“We will look at what makes an idea patentable and how innovative ideas may be rejected by the USPTO, and how to overcome those rejections,” said Ragonese, who worked for the USPTO for six years as a patent examiner prior to joining Penn State. “We also will examine the patent applications students wrote in the previous course.”  

The program finalizes in May 2024 with a five-day intellectual property and patent “bootcamp” in Washington, D.C., where students will learn more about course subjects directly from patent agents, attorneys and examiners, through a collaboration with law firm Harrity & Harrity LLP. Students also will participate in networking events and visit the USPTO. 

Eventually, the program organizers hope to work toward formalizing the program into a nine-credit certificate that can be earned by students after they complete all portions of the program. 

Allain emphasized that even students who decide not to pursue patent practice as a career can benefit from the program. 

“No matter what profession engineering and science students decide to go into, intellectual property is an important skill to know about, whether they are protecting their own inventions or creative works or those of their future employer,” Allain said. “For those interested in learning and contributing towards advancing innovation, it’s a great way to become familiar with intellectual property rights and what inventors, patent agents, patent attorneys and patent examiners do.” 

Interested students from University Park and the Commonwealth Campuses can learn more on the program webpage and register via LionPATH, or contact Allain for more information.  


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