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Overview of patent and intellectual property law

dadofsamdadofsam Posts: 1,613Registered User Senior Member
edited September 2013 in Law School
From time to time (and even currently) questions are posted about these fields of law. Answers are given; sometimes accurate, sometimes not so accurate.

With the agreement of our Mod, Concerneddad, I have offered to post this basic overview of these areas of law, as a "pin". While I am hoping to avoid repeated reposting of the same questions, I know that it’s bound to happen anyway. So I'm requesting that anyone who sees a new posting of questions already addressed here direct the poster to this thread.

First, a summary of my own background. I am an attorney actively engaged in patent and other intellectual property law, and have practiced in these fields for longer than most posters on this board have been alive. The majority of my current practice is patent law, but my work has included trademarks, trade secrets, unfair competition and a little copyright law. I have been an in-house attorney and at law firms. I am not a litigator, but I have worked on several major litigation teams.

This post is aimed at providing information rather than opinions (even mine), so I will do my best to differentiate any of my opinions from facts by labeling them as such. If anyone sees a factual error in my posting, let me know. If you disagree with any of my opinions, well, you are entitled to your opinion; however, your opinion may or may not be as valid as mine.

I will NOT be covering law school admissions, law school rankings, the LSAT and the like. My experience with these is too far in the past to be useful today. However, if you want to be a patent lawyer, or any type of lawyer, and want to do best for yourself, in my opinion you should try to get into the best law school that will admit you and challenge you and that you can afford. "Afford" is a subjective judgment on which I will not venture an opinion.

So, here we go.

PATENT LAW is the area of law dealing with patents, which are Federal or foreign government grants of certain rights in inventions. Patents are a form of property that exists solely because of legislation. Work in patent law includes working with inventors or their employers, drafting (writing) patent applications, prosecuting them through one or more patent offices (corresponding with patent examiners, changing or amending patent applications, and arguing why the invention is patentable), evaluating the strength or nature of patents of your client or of someone else (for example in investigating patents of a company that is to be acquired or evaluating a proposed product of your client for possible infringement of patents of others), and drafting and negotiating patent licenses and other patent-related agreements.

INTELLECTUAL PROPERTY LAW is a term that includes areas of law that relate to intellectual property, i.e. non-physical property that is a result of some mental activity. It includes patent law, trademark law, copyright law, trade secret law and unfair competition law. Intellectual property law can overlap with other areas of law, such as antitrust law and entertainment law.

TRADEMARK LAW involves issues around items such as names or other designations for products or services, logos, and domain names. It includes some matters relating to advertising, for example comparative advertising, to counterfeiting of products and to Internet-related issues such as banner ads, meta-tagging and rights to domain names.

COPYRIGHT LAW involves rights in literary, musical and other artistic fields, and designs. Copyrights are vital in the advertising, entertainment and publishing fields, and are included in practically all contracts in these fields.

TRADE SECRET LAW involves rights in technical and business confidential information or "know-how".

Attorneys practicing in trademarks, copyrights and trade secrets primarily will be helping clients establish rights in these fields via reviewing and registering trademarks or copyrights, evaluating rights of others in these fields that may affect their client's business, helping clients design procedures for protecting these rights and drafting or negotiating agreements that involve these rights, such as licenses.

LITIGATION takes place in all the above areas, for patent, trademark or copyright infringement or ownership of these rights, allegations of unfair competition in numerous ways, breach of licenses and other contracts and misappropriation or theft of trade secrets. Patent litigation is almost always conducted in federal courts in the U.S.; the others may be in Federal or state courts.

REQUIREMENTS FOR PRACTICING IN THESE FIELDS: No special education or training is required to practice in trademark, copyright, trade secret or unfair competition law, or to engage in litigation in these fields or in patent litigation.

However, if you are working in these fields, as in any other field of law, Bar regulations require that you only carry out work that you are competent to do. In addition, while no specific education or training is required to engage in patent litigation, a scientific background usually helps you better understand any technology that may be involved.

PATENT LAW: To act as a patent attorney, or to call yourself one, you must be registered to practice before the U.S. Patent and Trademark Office (USPTO) . This is a requirement if you are drafting or prosecuting patent applications in the U.S. Registration is attained by passing an examination given by the USPTO, but eligibility to take that examination is limited to people having certain technical or scientific education or alternately who meet certain other requirements. Rather than my attempting to list them all, please check the USPTO website at
http://www.uspto.gov/web/offices/dcom/olia/oed/grb15nov05.pdf
for specifics.

It is not necessary to have attended law school in order to take the USPTO examination. It may be taken without ever having gone to law school or while you are in law school. If you are not an attorney, that is, you have not been admitted to a state bar (or the D.C. bar), and you pass the examination, you will become a Registered Patent Agent and may draft or prosecute patent applications on behalf of others (clients). You may give an opinion as to whether an invention appears to be patentable. However, you must be an attorney to give an opinion about an issued patent.

When applying for your first position as a patent attorney, it is a distinct plus if you have already taken and passed the USPTO examination.

A question that is often asked is whether a particular scientific background or degree is more suitable for patent law, or whether one would be more likely to lead to a higher paying job than another. In my opinion this is a question that has no definite answer, especially when asked by someone just beginning college. There are opportunities to be a patent attorney in all of the fields listed in the USPTO registration requirements, and the opportunities in a given field vary widely with time, as well as with the economy. If you are beginning your college career, no-one can reasonably predict what opportunities will exist seven or eight years later, or what fields of technology will be "hot" when you will have finished both college and law school. In addition, you may change your mind about becoming a patent attorney in favor of some other career that you discover. You therefore should major in a subject that interests you and in which you can do well.

MORE INFORMATION Some websites that have more information were posted by Hazmat and are

http://www.abanet.org/intelprop/patentprep.html

which is from the American Bar Association's Section of Intellectual Property Law, and

http://www.patents.com/opportun.htm

which was posted by a partner in an IP law firm. Note that this website contains information that is 5-10 years old and is out of date on some specifics, especially regarding the USPTO examination. However, it is fine on general matters such as what the practice of IP law involves, and how at least some employers look at one's qualifications.
Post edited by dadofsam on
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Replies to: Overview of patent and intellectual property law

  • ariesathenaariesathena Posts: 5,030Registered User Senior Member
    Excellent post, DadofSam.

    The only thing I would disagree on is that patents are property rights arising solely from legislation. I will direct everyone's attention to the Constitution, Art. 1, Section 8. (Of course, the grant of power does not require Congress to allow for patent and copyright protection.) This does become an interesting point in that Congess (well, in theory) only has the power to regulate interstate commerce. Therefore, although patents and trademarks are consolidated in the USPTO, a potential trademark owner needs to demonstrate use in ISC; no such requirement is put on potential patent owners. Also, the result is that patent litigation is done in federal courts, not state courts, and is subject to federal legislation. States cannot confer additional rights upon patent owners.

    Carry on, carry on.
  • dadofsamdadofsam Posts: 1,613Registered User Senior Member
    Dear AA. Thanks for your post but I am afraid that on this occasion, anyway, you're incorrect. You may be confusing legislation with Federal jurisdiction.

    Patents are a creature of legislation. No patent legislation, no patent and therefore no right to exclude all others from making, using, selling, importing, etc. the patented invention. One only may have a right to sue for theft of trade secrets, if there are any trade secrets, and if they were stolen. Suits for patent infringement can only be brought in Federal courts because the clause of the Constitution you cited reserves patent legislation to the Federal government and preempts states from enacting it.

    Trademark rights, on the other hand, are essentially based on use of the trademark by someone. They are a creature of the common law of unfair competition; Federal legislation allows for Federal registration based on use in interstate commerce, but one can still sue for trademark infringement without any registration, and can sue in state courts if the infringement is only local.

    Carry on.
  • ariesathenaariesathena Posts: 5,030Registered User Senior Member
    Yes, they are a creature of legislation, but the right arises from the Constitution. This isn't the Socical Security Act - while federal in nature, it has no constitutional nor common-law basis. (Compare 19th century Switzerland (before 1888, at least); patents were granted by individual cantons and essentially unenforceable. The Swiss constitution had no provision for allowing the federation to grant patent rights. Interesting to contemplate what would have happened if our founding fathers had not inserted that clause into our Constitution.) We did import some of our patent laws from English common law property rights, which became widespread throughout Europe around the 17th century. Of course, English patent rights were then completely abused and the entire system was changed to reflect the property interest/natural law inherent in creative work. We borrowed and adopted from the English, with minimal changes.

    Yes, when you are litigating the validity of a patent, with the question being whether it is new, you are quoting Sec. 101 of the 1952 Patent Act; but that is traced directly back to 1449 and King Henry VI. Torts, the quintessiential common-law subject matter, has changed more in the intervening years. The prohibitions against socially reprehensible inventions are straight from Sir Harrington's 1596 WC; you would be hard-pressed to get moral utility arguments (Juicy-Whip v. Orange Bang) from "new, useful, and non-obvious." Can we at least agree that the Patent Act is only slightly more explicit than the Bill of Rights in elicidating how we are to proceed? Useful? Public use? Let's read the minds of guys who have been dead for 200 years!

    It's all a very obtuse way of saying that patent law is not like bankruptcy, rules of civil/crim procedure, election law, administrative law, the Social Security Act, tax, etc etc, which have little or no common-law origins.

    Legal philosophy aside, jusridiction is a relevant issue for those who are considering patent law and considering clerkships. Never a bad idea to go into law school with an idea of where you want to clerk
  • dadofsamdadofsam Posts: 1,613Registered User Senior Member
    AA: Sorry; I don't agree with your assessment, but in any case we're getting off-topic.
    Best regards.
    DOS
  • allenaallena Posts: 1,716Registered User Senior Member
    Great post, this has been very helpful for me.
  • lkf725lkf725 Posts: 4,781Registered User Senior Member
    Thanks for the great post dadofsam!

    Do any law schools specialize in IP? If so, would this specialization supercede the strategy to attend the highest ranked school possible?

    Also, does the technical major chosen have any bearing on employability in the IP field, or is everyone equalized by passing the patent bar?

    Thanks!
  • dadofsamdadofsam Posts: 1,613Registered User Senior Member
    Some law schools have specialized IP classes, but it depends on which areas of IP you're speaking about. Some examples are Georgetown, John Marshall, UC Berkeley (Boalt), Hastings, Cardozo, Franklin Pierce.

    It always helps to have more qualifications than the next applicants for a position, so taking IP classes, if they are available, at least shows your interest in the subject. However, hiring attorneys have different assessments of the real value of such courses in working in an IP area, usually ranging from not much to some, also depending on the schools. If IP courses aren't available in the school, look for any courses or law reviews on combinations of law and technology.

    More schools are giving more courses in IP due to increased interest among attorneys and students.

    In my opinion, if you are interested in IP, sure, look for the best school you can afford and be admitted to that has some IP courses, but you also need to look at schools in certain geographical ares in which you want to practice. For instance, if you want to practice in the Southeast, it may be better to attend one of the better schools in that area that has a good alumni network than to attend an out-of-area school with good IP courses.

    As far as technical area, as I said in my post, there will be opportunities in all fields. However, those opportunities will not be equal in all technologies in a given geographical area or at a given time. To get a patent position in aerospace technology, for instance, you may not have as many opportunities in Mississippi as in Seattle; for one in agricultural technology the opportunities will be greater in the midwest than in New England, etc. And in terms of time, as I said in my post, there's in way to predict what opportunities will exist in 7 or 8 years - or even in 3 or 4. But historically, you can expect that if a technology looks hot right now, then in 3 or 4 years there may be a temporary glut of people graduating from college (or law school) who have majored in that field.

    P.S. I almost forgot to say that the above comments are primarly my opinion.
  • ariesathenaariesathena Posts: 5,030Registered User Senior Member
    Throwing in my opinion...

    I've heard that beyond basic IP courses (copyright, patent, trademark, etc law), tailored to the area that you want, course work doesn't much matter. What may matter is the availability of specialised moot court or journal opportunities. It's always best to be on Law Review; however, if a student doesn't make it, then it's good to have another journal in the relevant field. Also, some schools really work their moot court programmes. I participated in the annual IP Moot Court competition - we sent two teams - and many schools don't even send teams, or don't do well there. It was our first year. That might be something to help a student stand out, but such opportunities are usually only available during 2L and 3L year, while hiring takes place during August and September of 2L year.
  • bsme_to_patbsme_to_pat Posts: 13Registered User New Member
    dadofsam,
    In your opinion, do patent lawyers work as many hours as other (non-IP) lawyers? I could work 80 hours a week but there's no way I would be productive the entire time. I get tired after working 10 hrs/day. Do you think it would be a financial mistake to give up an easy $75k+/yr engineering job to attend george washington and get into patent law? I'm 35 yrs old, so I need to decide soon. I'm doing great in engineering but a career in patent/IP law would be more of a challenge. thanks
  • rigel123rigel123 Posts: 23Registered User New Member
    I'm not dadofsam-but have you considered working as a technical specialist (patent clerk) at a law firm? Since you have a significant amount of work experience as an engineer, you could probably get a job _now_ as a technical specialist at a law firm. After working there (probably earning slightly more than you do now or at least a roughly similar amount)-you would know whether or not patent law is a good fit for you. Then, the law firm would most likely help pay for you to go to law school at night (likely full ride-although it depends) while paying you a decent salary. Much less risky than dropping a career and investing in law school and throwing yourself in the pool with a bunch of kids right out of college. You could also go to law school at night and continue working as an engineer-which would also be less risky finacially although some what exhausting.
  • sallyawpsallyawp Posts: 2,059Registered User Senior Member
    "Then, the law firm would most likely help pay for you to go to law school at night (likely full ride-although it depends) while paying you a decent salary."

    Unfortunately, that's highly unlikely. Law firms tend not to pay to send folks to law school -- lawyers who have already graduated from law school are usually battering down their doors for jobs. There are a couple of law firms that used to repay law school loans for their former paralegals who went to law school if that former paralegal worked as an attorney at that firm for 5+ years, but I'm not certain if those programs still exist (I believe that Skadden used to do this).
  • rigel123rigel123 Posts: 23Registered User New Member
    Actually, some law firms DO pay for highly skilled technical people to go to law school and pay them while they do it (albeit while they work full time). I know what I am talking about because I did it and I know quite a few people in my firm and other firms in my city who are doing it currently. I think the idea is to get technical people into the firms while their technical expertise is still fresh and then fill in the legal expertise later. I'm not saying it is necessarily a common practice outside of the main patent law cities-but if you search in patent law groups (in patent boutiques like Darby, Fish & Richardson or big firms with major patent practices) you'll find people whose title is something like "technical specialist," "staff scientist," who generally are in the process of going to law school. For some one with a great technical background-it can be a great way to get into patent law while still being able to support oneself and not take out loans.
  • dadofsamdadofsam Posts: 1,613Registered User Senior Member
    Rigel is correct in general; some patent or IP law firms will work with a current "technical advisor" (or similar title) who wants to go to law school to become a patent attorney. It all depends on whether the person has made an extremely good impression with the firm and whether the firm feels that it would benefit from the more advanced status, i.e., whether that person would want to join the firm as an associate and whether the firm would want to hire him/her in that capacity.

    It's more common for that person to decide to take the USPTO exam and beome a patent agent, either without going to law school or while in the process of deciding to do that. For someone of the poster's age and experience the firm would expect that to happen within a couple of years, and for the person to not want to stay as a technical adviser, which is not usually a career situation and because the salary will cap out at a maximum within a few years.
  • dadofsamdadofsam Posts: 1,613Registered User Senior Member
    Now let's get back to bsme's question.
    IP attorneys in a law firm generally do not have to work backbreaking hours unless they are working on litigation or they are inefficient. On the other hand, attorneys in general do not work 9-5 or 40-hour weeks, either in a law firm or in a company. In most law firms you will, after an intial break-in period, be asked to work at least 1800 billable hours, i.e. time that can be charged to a client. In straight patent work, that typically will mean that you have to work 9, 10, or more hours per day (and some nights or weekends) to meet your goal. That's a minimum goal; you need to do better than that to ensure a longer-term career at that firm. In a company, expect a 45- to 50-hour week.
    Yes, once you are an IP attorney, you would earn much more than $ 75,000 per year. Along the way to that, it depends on where you are employed.
    But first you need to think about what career plans you want to make for yourself. If you like the challenge of designing new products or working out a solution to an engineering problem, you could remain an engineer for the rest of your career, or a substantial part of it. But usually you won't be able to make a lot more money in any "easy" job (or you'll have to work hard at finding such a job). if you become an IP attorney, you won't be doing any more actual engineering, mainly sitting at a desk writing. Same would be true, however, if you decided to go into engineering management and take an M.B.A. You will become a businessperson, no longer doing any engineering.
    So take some time to think not only about making more money (a very important thing to think about) but how you want to be making it - what kind of job or profession would suit you.
  • bsme_to_patbsme_to_pat Posts: 13Registered User New Member
    Thanks to rigel123, sallyawp, & dadofsam for the helpful replies.

    Here's my current plan:

    1) Take the LSAT. I'm studying for it now and plan to take the test early next year. The score itself will answer many questions. I won't be competitive for higher ranked schools if I score less than ~165. I don't want to play the odds at a lower ranked school. I spent $200 on a book of 50 actual LSAT tests to study.

    2) Take the patent office exam while working at my current job. As dadofsam's initial post indicates, I'm qualified to take it now as a mechanical engineer. Not to mention, it wouldn't be as easy to study for the test later while back in school, etc. It would look great on the resume' and should help with law school admissions.

    3) If I score very well on the LSAT, I could take a job at the patent office (at my current salary) and apply to a few local law schools. From what I understand, law firms love someone with year or two of USPTO experience.

    4) Work at the patent office for a year before attending law school. I would need to focus 100% during the first year on learning the patent trade.

    5) After a year or so, attend law school part-time or resign from the patent office and go full-time using student loans.

    If I'm accepted at a higher ranked school, I could most likely start at the higher end of salary ranges, especially being in the IP field. In that case, taking on student loans wouldn't be so bad. Going full-time would also allow me to start making the higher salary a few years sooner.

    By the way, would a six year enlistment in the Navy working on electronics help or hurt my legal resume'? I served in the Navy and used the GI bill to get my engineering degree. Being in the Navy is great but it means I have that much less engineering experience.

    Working as a tech specialist in a law firm does not sound as good as learning the patent process from the inside, at the patent office.

    Thanks again.
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