What does an intellectual property lawyer do?
Intellectual property (IP) is a term that refers to inventions, creations and other products of the mind that have commercial value and for which the creators are granted certain exclusive property rights. Intellectual property includes patented inventions such as pharmaceuticals, machines, chemical processes, software and business methods; copyrighted works such as books, music, sculpture and software; trademarks such as brand names, catchphrases, logos and distinctive packaging; and trade secrets such as customer lists, proprietary algorithms and secret recipes. IP law addresses both the litigation consequences that arise when rights are infringed upon as well as the negotiation of licenses to preclude or resolve litigation.
Many IP lawyers are generalists who handle a wide range of IP matters for their clients. Others are specialists who focus their practices on one or more of the following areas:
Patent prosecutors help their clients apply for patents with the United States Patent and Trademark Office (USPTO). These lawyers also advise clients on whether an invention is patentable. Patent prosecutors generally have an undergraduate and/or graduate degree in engineering, computer science, physics, chemistry or biology, among other specialties. Patent prosecutors must also pass the highly challenging USPTO Patent Bar Exam.
Patent litigators represent clients who are litigating issues related to a particular patent. A technical degree is not required to become a patent litigator, but it can prove helpful. Patent litigation is a very profitable specialty, as companies are willing to spend millions of dollars in legal fees to assert their patents or to defend against patent attacks. Patent litigators often handle related litigation on behalf of their clients, including trademark and copyright matters.
Trademark lawyers protect the words, phrases, logos, symbols, color schemes and packaging that their clients use to distinguish their products from competitors’. They prepare and file trademark applications for registration and litigate issues involving trademark infringement, unfair competition and dilution. They also prosecute and defend trademark oppositions and cancellation actions before the USPTO. They negotiate and draft all forms of trademark-related agreements, such as licenses and transfer agreements.
Copyright lawyers prepare and file applications for copyright registration in the Copyright Office and assist clients in clearing uses of copyrighted works owned by others. They litigate issues of copyright ownership, validity and infringement. They also negotiate and draft all forms of copyright-related agreements, such as development agreements, distribution agreements, licenses and transfer agreements.
Trade secret lawyers negotiate and draft all forms of trade secret agreements, such as employment agreements, development agreements, distribution agreements, licenses and transfer agreements. They also litigate cases of unauthorized disclosure of trade secrets.
Licensing lawyers negotiate and draft licensing, franchising and technology transfer agreements. They may also represent licensors and licensees in international and domestic transactions involving patent, trademark, copyright and trade secret licenses.
What skills do I need to be an intellectual property lawyer?Intellectual property lawyers need strong communication, writing and analytical skills. All patent lawyers need to be comfortable with technical subject matter, though patent litigators do not necessarily need a technical undergraduate degree. A personal interest in the subject matter is often helpful.
What kinds of jobs are available to intellectual property lawyers?
Intellectual property lawyers work in small and large law firms, legal departments of corporations and universities, trade associations, and in a wide range of federal agencies, including the Department of Justice, the Department of Commerce, the International Trade Commission, the U.S. Patent and Trademark Office, the Library of Congress and many agencies connected with the Department of Defense.
What courses should I take?
Take all the IP courses you can during law school. Here are a few to consider:
Patent Law • Copyright and the Arts • Trademark and Unfair Competition • Intellectual Property Survey • International Intellectual Property • any of the offerings titled IP Current Developments • Patents, Trademark and Copyright Law Seminar • Entertainment Law Workshop • Media Law Seminar • Antitrust Law • Cyberspace Law Seminar • Communications Law • Opportunity Analysis • Sports Law
IP lawyers will tell you that business and tax law courses are also useful, since IP law is often practiced in a business development context.
What co-curricular and volunteer activities should I consider?
Join IP-related organizations such as the Intellectual Property Law Society, and participate in IP-related events, such as talks and panels sponsored by the Center for the Law of Intellectual Property and Technology. If you have a technical degree and would like to be a patent prosecutor or a patent examiner, take the patent bar exam.
Consider what type of IP law you would like to practice and gain as much work or externship experience as you can. If you would like to be a patent litigator, any litigation experience you can gain will be valuable. Participate in moot court and work on a journal. If the transactional side of IP work interests you, take business law coursework and try to gain experience in contract drafting and negotiation. Externships often prove critically helpful in landing a position after graduation.
Who should I talk to for more information?