Intellectual property (also called "IP") is an expansive area of law that is well-suited to people who enjoy learning about new technologies, products, and businesses. It refers to the rights held in intangible property, as opposed to tangible real or personal property. The field continues to grow as scientific and artistic advancements become an increasingly important part of our society. Although technical experience leads some lawyers to careers in IP, a science background is not required to practice in this area. While only attorneys with a science background can help clients prosecute (i.e., draft) patents or become patent examiners, lawyers without a science background can still serve as patent litigators, copyright attorneys, trademark attorneys, entertainment attorneys, international IP attorneys, sports agents, and trademark examiners. Many attorneys who represent businesses also deal with intellectual property issues at least occasionally. Although IP cases can be stressful because of their often high stakes, IP attorneys enjoy the daily intellectual challenge that their work provides.
Intellectual property is an asset that "results from original creative thought." Inventions, works of art, names, slogans, and scientific breakthroughs can all be intellectual property. IP lawyers specialize in the body of law that protects intellectual property rights. They may focus their practice on patents, copyrights, trademarks, or trade secrets, each of which is explained in more detail below, or they may work more generally with a few different types of intellectual property.
A patent is a property right in an invention that prevents anyone other than the owner of the patent from making, using, selling, or importing the invention for a certain period of time. For example, a company may want to patent a new software that it developed, a university may seek to protect a certain scientific method created by its researchers, or an individual may want to patent the design for a new kind of boat that she invented. In fact, Michael Jackson even patented the design for the shoes he used to execute his "Smooth Criminal" dance move. In the United States, the Patent and Trademark Office (USPTO) awards patents upon application showing that the invention is "new, useful, and nonobvious" and meets certain other criteria. Patent attorneys undertake the complex process of filling out patent applications for their clients. They also handle patent infringement cases, which are litigated in federal court, and sometimes negotiate and draft licensing agreements. "As a patent attorney, I get to see different types of technologies every day," says Kirupa Pushparaj '07, a patent attorney with Perkins Coie.
Attorneys who prosecute, or prepare, patent applications must have a science background — usually in the form of an undergraduate degree in engineering, biology, chemistry, or physics—and must pass the patent bar exam, which is administered by the USPTO. No special background is required of attorneys who litigate patent rights but do not prepare patent applications.
A copyright is a property right in the original expression of an idea in tangible form, regardless of whether that expression is manifested in a painting, novel, play, film, photograph, dance, or other medium. Copyright attorneys counsel artists of all sorts — from playwrights and painters to choreographers, composers, and architects — regarding their rights in their work. They also negotiate contracts protecting these rights and represent their clients in suits to enforce them.
A trademark is a distinctive word, phrase, symbol, or design used by a company or merchant to identify the origin of its product or service. The Pillsbury doughboy, Chik-fil-A's "Eat mor chikin" slogan, the Nike swoosh, and McDonald's golden arches logo are all examples of well-known trademarks. The law protects trademarks in order to (1) let consumers know with certainty where the items and services they use come from and (2) allow trademark owners to protect their marks, which they can use to market themselves or their business. Trademark attorneys help their clients choose marks that will not violate others' trademark rights, register marks with the USPTO, investigate possible unauthorized uses of their clients' trademarks, undertake litigation to stop unauthorized uses of trademarks, defend clients who are accused of infringing on others' trademark rights, and negotiate and draft licenses for the use of trademarks.
A trade secret consists of confidential information that adds economic value to a business by virtue of the fact that only a limited number of people have the information and the owner of the information has taken steps to keep it secret. For example, the formula for Coca-Cola and Colonel Sander's recipe for Kentucky Fried Chicken are both trade secrets; their value lies in the fact that they are known to only a select few, so they cannot be easily replicated. Other, more commonplace examples of information that can become a trade secret include business plans, computer programs, data sets, designs, and manufacturing techniques. Attorneys who work with trade secrets advise clients on ways to keep their information confidential, develop strategies to prevent trade secret litigation, and litigate cases in which a trade secret is alleged to have been improperly acquired. In many cases, they file a motion for a restraining order or preliminary injunction to prevent former employees and competitors from misappropriating their clients' trade secrets. They also draft non-compete agreements, non-disclosure agreements, licensing agreements, and other legal documents meant to protect their clients' trade secrets.
Students at McGeorge who want to work with IP should consider completing the Intellectual Property Law Concentration along with their JD The concentration’s curriculum is specifically designed to prepare students for a career in IP by exposing them to the laws governing each type of intellectual property (patents, copyrights, trademarks, and trade secrets) and then allowing them to tailor their schedule to their specific interests within the field. “It [the IP Law Concentration] gives you a general understanding of everything,” explains USPTO Patent Examiner Benjamin Packard ’06, who completed the concentration when he was a student at McGeorge. “I really only deal with patents, and I don’t really deal with anything else, but it’s nice to have that background [in all types of intellectual property].”
Breadth and Depth
Breadth and Depth
Breadth and Depth
Breadth and Depth
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It is very important for IP attorneys to have strong written and oral communication skills. They must be able to use technical language appropriately in legal contexts and explain complex matters with non-legalese in business situations. Because many IP attorneys spend a considerable amount of time in court or preparing for court, litigation and negotiation skills are equally important. Given our increasingly global economy, it is also crucial that IP attorneys are familiar with issues relating to the international enforcement of intellectual property rights. An understanding of business and economics can be helpful as well.
Skills often found in IP attorneys:
Students who have a science background and are interested in patent prosecution (handling the patent application process) should take the U.S. Patent Bar Examination after their first or second year of law school. For more information and to register, visit http://uspto.gov/ip/boards/oed/index.jsp#heading-6.
As with other areas of law, work experience with a law firm or other organization that represents clients in intellectual property matters can provide students with valuable practical experience and make their resumes more attractive to potential employers. "Get out there, meet as many people as possible, and don't be afraid to roll up your sleeves," says entertainment lawyer Douglas Johnson '00, who regularly deals with copyright issues. "Something's bound to happen."
Additional ways to get relevant experience are:
IP attorneys are concentrated in the vicinities of San Francisco, Los Angeles, and New York, but many other cities also offer opportunities for lawyers to work with intellectual property. In particular, many copyright attorneys practice in entertainment centers like Los Angeles and New York City, whereas the San Francisco area (especially Silicon Valley) and other technology hotspots are popular locations for patent attorneys.
A great number of IP attorneys work for private law firms, either in the IP department of a large firm or in a smaller firm that specializes in IP. In addition, many companies and institutions that produce a significant amount of intellectual property employ IP attorneys as in-house counsel. These positions are difficult to obtain immediately after graduation from law school because most in-house employers are not willing to spend extensive time training their counsel. IP attorneys also work for the federal government, most of them for the U.S. Patent Trademark Office or the U.S. Federal Communications Commission. Certain state agencies handle IP issues as well, including the California Attorney General and the California Secretary of State.
An intellectual property lawyer's concentration within the field of IP determines in large part the type of clients that he or she represents. More often than not, IP lawyers represent organizations rather than individuals.