From Engineer to Patent Agent after a 10-Year Break

Patent Agent Karen Wong-Chan was interviewed for the article “From Engineer to Patent Agent after a 10-Year Break,” published in Landslide, Vol. 13, No. 4, March/April 2021, by the American Bar Association. Read the full article below:

< p>Karen Wong-Chan is a patent agent in the electronics practice group of Sterne, Kessler, Goldstein & Fox in Washington, D.C. She prepares and prosecutes patent applications at the United States Patent and Trademark Office as well as foreign patent offices. Karen has over 10 years of research and engineering experience at Bell Communications Research, where she authored technical specifications for wireline and wireless network communications systems. She left the technical field for over a decade to raise three children, and began her patent law career nine years ago as a flex-time, remote employee.

How did you become interested in electrical engineering?

I have always liked math, and I wanted to be able to get a job after college. I heard about engineering jobs but not as much about mathematician jobs, so I decided to pursue an engineering degree. I didn’t know which discipline to choose, so I chose electrical engineering because I heard it was the most difficult. If it didn’t work out, my plan was to switch to another until I found my niche. Fortunately, things went well. For example, I earned an electrical engineering merit award for “demonstrated exceptional talent and academic performance” that included a financial scholarship. (My dad recently sent me a copy of the newspaper clipping—that’s what it said.) That was really encouraging.

Tell us about your work experience in electrical engineering.

I worked at Bell Communications Research (Bellcore) in New Jersey for about 10 years. Bellcore was the research arm for the seven Regional Bell Operating Companies. As new services were developed, technical specifications for wireline and wire­less network communications systems were drafted. I authored technical specifications for operations, which encompassed network management and maintenance operations requirements to ensure quality of service, as well as network and operations plans for emerging wireless communications services, including opera­tions plans for implementing personal communications services. Things were going well at Bellcore, and I was nominated for, and accepted a position in, the corporate succession program. It was a prestigious placement that afforded exclusive training, mentorship, and other professional development opportunities, including a pro­motion upon completing the program. Subsequently, my husband took a job in Florida, and I worked remotely for about two years.

Many women leave the workforce or take time off to raise chil­dren or take care of their family. You had a similar experience.

At the height of my career at Bellcore, my husband unexpect­edly became ill—doctors said he had about a 3 percent chance of surviving. It was a difficult time for everyone, and I decided to become a full-time caretaker. Miraculously, he recovered from his illness, including learning to breathe and walk again. That experience really put our lives in perspective, and I chose to put my career on hold to raise our three children. Being a full-time mom was something I had always wanted to do.

And then you did something that a lot of professional women struggle with, reentering the workforce after taking time off.

Over a decade later, a former Bellcore colleague called and told me that Sterne Kessler was looking for telecommunica­tions candidates. He asked if I had anyone in mind who might be interested, and I suggested folks I worked with during my Bellcore days. I had heard of patent attorneys but never heard about technical specialists and patent agents. He suggested that I consider the position myself, but I declined. I thought that my technical career days were over. Over the next few months, how­ever, I realized that my children didn’t need me as much when they were in school, so I thought I’d give the position a try with the caveat that I could work part-time, remotely from Florida. It turned out that Sterne Kessler was willing to give it a try as well.

How important is it to maintain your network once you leave the workforce? Would you advise women who are con­sidering taking time off, whether definitely or indefinitely, to stay connected in the event they decide to return to the workforce on a full- or part-time basis?

I would highly recommend maintaining your network. Your resume speaks to your experience and capabilities, but people who have engaged with you can validate your work ethic and highlight your skill set. Endorsements are invaluable.

If you take a career break and want to get back into the workforce, reach out to your network. Your circle of contacts and their extended network may surprise you with opportuni­ties that you may not find on your own.

What was it like to reenter the workforce after a decade of being away?

It was a rude awakening! I had to get references from folks I hadn’t talked to in over 10 years. And I wasn’t sure if I could still tap into my engineering knowledge and skills of the past. So, I went on a review mission—reading books, articles, and papers I had written, even some college textbooks, to convince myself that I could do this. After landing the job, I received training in preparation for taking the patent bar and passed on my first try about four months later. That was a huge boost for my confidence. Looking back, I realize how hard I worked, but also know I would not have made it this far without the support and encouragement I received from my supervisors and mentors at the firm.

How did your supervisors and mentors support and encourage you?

I was assigned a director (partner) as my “buddy”—since I was going to work remotely, I think they wanted someone really experienced to show me the ropes. Unfortunately for me, he left to become a judge shortly after I arrived. I was floundering a bit, and then I met Rob Sterne—the Sterne of Sterne Kessler. He arranged for me to work with a senior counsel, and that made a huge difference. I began to get pointed feedback that accelerated my learning of how to apply my engineering knowledge with patent law. The firm has a second-eye policy where everything is reviewed by two people. Over time, I began to work with and receive input from a cross-section of attorneys in the electronics group. I benefited from engaging and learning from people with different technical, legal, and professional backgrounds. There’s always more to learn.

What was the biggest, non-work challenge that you faced when you returned to work?

Fear that the gap years were too vast to bridge. I tried to set my fears aside by focusing on the work, figuring out what to do, and doing the work. As I made progress, the fears diminished.

What is one thing you learned about yourself that was surprising once you did return to work?

Our ability to learn doesn’t stop just because we change careers. If anything, we use our learning abilities to acquire different skills. I used to think that a technical career was like being on a speeding bullet train—once you get off the train, you can never get back on. That assumption is wrong because a technical career is established with much study and effort. We can’t just buy a ticket, relax, and expect our technical career to grow. It is much more like a journey on a mountain of wisdom that we climb as we acquire knowledge. And when we stop our technical careers, we don’t fall off. We take a different path—that may be becoming a caretaker, trying a different career, taking a sabbatical, or recovering from an illness. No matter what that path may be, if we choose to return to the technical career, it takes effort to make our way back to that original journey—but it requires a refresher, not starting from square one.

In law school, the second-career students always seemed to be the better students and did so well. Did the time you took off actually help you be a better employee?

I look back at times where I have overcome obstacles and draw confidence from the past successes to move forward. I also look back at failures, things that didn’t go well, and try not to repeat them. Being a caretaker, I observed the impact my children and I had on each other. I learned to appreciate the unique contributions that each of us made to the dynamics and ambiance at home. I apply that same perspective to teams at the firm and appreciate the different contributions each individual brings to our work.

What was the biggest work-related challenge that you faced when you returned to work?

The learning curve was pretty steep. In addition to prep­ping for and passing the patent bar, I learned the craft of IP law involves lessons gleaned from case-specific fact patterns. I remember being so concerned about recalling and apply­ing my engineering knowledge that I was stunned when I was told to stop thinking like an engineer and to start thinking like a lawyer. My senior counsel advisor would review and return comments to me late at night. I was up then and would respond, getting further clarification and questions answered so that I could complete my work on time.

Everyone is now embracing, or coping with, teleworking and virtual law firms with the COVID-19 pandemic. But you have been teleworking since before it was “the new normal.” You are based in Jacksonville, Florida, while working at Sterne Kessler, which is located in Washington, D.C. How long have you been doing this, and what were some of the challenges?

I’ve been working remotely now for over nine years. There were initial challenges around remote working. For example, it was unusual for someone with zero patent law experience to do this. There were a handful of other colleagues from the firm who also worked remotely, but they had worked in D.C. for a few years before working remotely. So in this way, firm management had experience for this work situation, and I wasn’t treated differently as if I were enjoying some special privilege. I really appreciated that. Based on my previous remote work experience, I didn’t tell other people that I worked remotely, because I was afraid of potential negative bias. For a while, people just thought I worked on a different floor in the building. Eventually, it became common knowledge and, honestly, not a big deal. Now, we’re all working remotely, and it’s “normal” for everyone.

While working remotely, staying connected can be chal­lenging. It is easy to feel disconnected, especially when you are new. I am always amazed at how seeing someone in per­son makes a difference. Whenever I go to the office in D.C., I look forward to seeing my colleagues and members of the firm I don’t work with directly. It is nice to match a face to a voice I’ve heard on the other end of the phone or to an email address. Also, I try to catch up with all of the folks I work with to touch base on projects, give updates, and receive input/advice on how best to move forward on matters.

Another remote working challenge is that it can be harder to shake a bad-day feeling when you are alone. Walking around the block does wonders! When I’m in the office, I can drop in and talk to someone, not necessarily about the bad-day feeling, but the connection can be restorative. I find the bad-day feel­ings dissipate faster when I can engage with others. Nowadays, I’m using the online tools that were rolled out around the same time the COVID-19 remote working began. I reach out via video-based calls, meetings, instant messaging, etc., to people occasionally to touch base. It can be a short chat, sometimes using the video feature. It can be nice to see folks when we are catching up. On the other hand, being on camera all the time can be tiring, so a simple call can be perfect.

What advice would you give to women returning to work with respect to explaining the “gap” in their resume from taking time off to raise children, take care of a family member, etc.?

The view of the gap years varies based on the culture of the employer. That is not something someone reentering the work­force can control. The good news is that gap years don’t have the same stigma they had years ago. Employers are interested in high ­demand skills, like technical knowledge paired with competence in communications. If your resume includes the experience that the employer is looking for, they often look beyond the gap years. If they don’t, then maybe that’s an indication of the workplace cul­ture. Sterne Kessler is always looking for good talent.

Before you leave your current position, I recommend preparing a reentry kit: draft a resume; collect key materi­als—things that you think are core to your knowledge base that will help you to refresh your skill set; make a list of your greatest hits—things that you are proud of accomplish­ing even though they may not necessarily show up on your resume; update your Linkedln profile; and make a list of peo­ple in your network who would attest to your skill set and character. This collection of information may come in handy when you prepare for reentry.

What advice would you give to women returning to work to “make the ask” with respect to seeking positions that they really want while setting comfortable parameters (part-time, compressed schedules, remote, etc.)?

Again, technical knowledge paired with communication skills are in high demand. And the COVID-19 pandemic has proved that remote work is feasible. It is important to interview purposefully, meet leaders, and get a feel for the culture and/ or work environment. Consider asking about the performance review process—for example, if instead of a full workload at 100 percent, you consider a reduced workload at 50 percent with a corresponding reduced salary. At performance review, assume you produce 60 percent of the full workload. Would the employer compare your performance against a 100 percent full workload, so you are viewed as a 60 percent performer? Or would they compare your performance against your 50 percent goal and view you as someone who exceeded their goals? The answers can be enlightening.

What advice do you have for employers looking for talent?

Think about the people in your classes or in your first jobs who you thought were talented and capable. See if they are on Linkedln and reach out to them to see if they might be interested in an opportunity. If they aren’t on Linkedln, consider whether they may have taken a break from their technical careers. You can use traditional networking methods to track people down, such as checking in with a related colleague via phone, email, or Linkedln. There are many resources for finding and connecting with people these days. Reach out broadly and have a conversa­tion—you never know what may come of it.

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