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Careers In IP Law Blog



Welcome to a new AIPLA website feature - our Careers in IP Law Blog. On this page, you'll find information, tools and career advice that you can use to navigate your career as an IP law practitioner.

Interested in submitting a blog post? Contact membership@aipla.org.

​Professionalism Reminders for the IP Practitioner

by Penny L. Prater, Vice-Chair AIPLA Professionalism and Ethics Committee
August 2017

Many registered practitioners in the field of intellectual property may not be aware that they are subject to the scrutiny of the USPTO’s Office of Enrollment and Discipline. The OED generally handles complaints in the categories of negligence, dishonesty, misrepresentation (including fraud and deceit), fee-related issues, as well as the unauthorized practice of law. Each of these deserves an article in itself, however this article considers two questions concerned with unauthorized practice law issues as they relate to patent agents.

1. What is the patent agent’s area of practice?

It is always wise to remember that those licensed to practice before the USPTO may be either patent agents (non-lawyers) or patent attorneys. At least one-quarter of the 45,000 currently licensed practitioners are agents.  In view of the two types of practitioners, one must keep in mind the type of activity in which the practitioner is engaged. USPTO regulations provide that any citizen of the United States who is not an attorney, and who fulfills the proper requirements may be registered as a patent agent limited to practice before the USPTO. The agent, and any attorney who might employ the agent, must bear in mind that the agent may assist the client in law–related services connected to obtaining a patent, registering a trademark   or interacting with the Office of Enrollment and Discipline. Daily activities may include preparing documents for filing with the USPTO, communicating with the USPTO on behalf of the client, through documents or interviews and advising a clients of the status of these exchanges. The practice of the agent specifically includes practice before the Patent Trial and Appeals Board.

USPTO regulations  permit the performances of services “reasonably necessary and incident” to patent application proceedings, including determining if relying on alternate forms of patent protection under state law  may be advisable, and drafting assignments  following the issuance of a patent on behalf of a patent owner.

2. How is the patent agent’s practice limited in scope?

It is important to note that the authority of the patent agent ends when matters involving a patent move beyond the jurisdiction of the USPTO.  Most notably, a patent agent may not appear as counsel in court for a client. This has become of particular importance following the America Invents Act, since post grant review involving a patent may be instituted parallel with litigation in Federal Courts.  The agent may be a representative before the PTAB but not in the courts, and need not have attorney supervision if acting within the scope permitted at the USPTO.

The question concerning  whether or not an agent –client privilege exists  outside of  patent prosecution activities within the USPTO  remains unsettled, which can  further limit the effectiveness of the agent in some instances. The recent decision, In re Queen’s Univ, 820 F.3d 1287 (Fed. Circ. 2016) states, “ the current realities of patent litigation counsel in favor of recognizing an independent patent-agent privilege.” The recent decision, in Texas, In re Silver, 500 S.W. 3d 644(Tex.App-Dallas 2016) determined,”no state statute or rule adopts a patent agent privilege,” although it acknowledged such a privilege existed on the federal level concerning substantive patent law issues.

Conclusion

Both patent attorneys and patent agents are authorized practitioners before the USPTO. The scope of practice of the agent, however, must be carefully limited to working with the USPTO, an administrative agency. Both the agent and the agent’s employer should be vigilant to avoid issues covering the unauthorized practice of law. 


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Great Expectations or Armageddon: What does the future hold for IP lawyers?

by Dr. Beatriz San Martín, partner, Fieldfisher, London, UK
July 2017

Since I started practising as a legal professional, the way that we work and career expectations have dramatically changed. No longer is dictation a key skill requirement with competency in touch typing being a requisite for new trainees.  With the advent of email communications and digital documentation, many private practice firms have transitioned to paperless or near paperless offices with increasingly sophisticated document management systems. Investment in cyber security is increasingly important to ensure client confidentiality is preserved as well as compliance with data protection law.  

In London (England), where I am based and where office space is at a premium, more and more law firms are moving to open plan environments. And then there's flexible working and working from home...

On top of all of this we are seeing new business models for legal services with companies such as Thomson Reuters providing commoditised legal services and others, such as Axiom, offering lawyers to be seconded to fill specific needs and requiring lawyers to work on demand.

So, what does the future hold for IP lawyers especially given the advent of AI? One could take the doom and gloom approach that there are going to be ever decreasing jobs as legal advice is commoditised and automated. But it could also create great opportunities if, for example, one exploits the potential that data gathering and analysis could provide to clients, or efficiencies are maximised leading to more work that might not have normally been possible in specific timescales. 

We cannot ignore technological advances and should instead try to embrace the new opportunities to maximise benefit to us and the organisations that we work for.  We should not necessarily expect traditional career paths which should, inevitably, lead to new and potentially exciting opportunities.  Flexibility and high technical competency may be the key factors that ensure as much stability in an uncertain future.​


Patent Agent or Patent Attorney? – Things to Consider

by Shubhrangshu Sengupta, Baker & Hostetler, LLP
June 2017​

So you have passed the registration examination conducted by the USPTO (informally known as “the Patent Bar”) and are not yet in law school, but you’re thinking about it.  Here are a few things to consider before you make the leap.

(a) Do you really want to be a patent attorney, or even a lawyer, to begin with?

Maybe you are a practicing engineer who has some exposure to patent practice through the legal department in your company, and you took the patent bar to explore a career in patents.  You are now faced with the question of whether or not you should go to law school.  While you may be a successful engineer and have passed the patent bar, you may or may not like going to law school and subsequently being an attorney. 

As a patent agent, you will be (mostly) limited to doing patent prosecution (drafting patent applications, responding to Office Actions from the USPTO, handling post-allowance/administrative matters).  As a patent attorney, you can do everything a patent agent does and then a lot more. For example, you can be involved in patent litigations, opinion work, due diligence, other forms of intellectual property law (trademarks, licensing, etc.).  While you will have a more varied range of roles and responsibilities as an attorney, your work-life balance might be affected.  This is especially true if you’re working in a law firm where expectations might be different for patent attorneys versus patent agents.

If you are beginning your patent career, then it might be worth first “testing the waters” as a patent prosecutor.  Then, if you are not satisfied, you can consider law school. If you already have a few years of experience as a patent agent, then it is an easier decision to make – at this point, you know patent prosecution well enough, and maybe you are yearning for more than the role of a patent agent (and also a significant pay raise, hopefully).  

(b) Are you ready for the tuition expenses?

Often, companies and law firms will pay for tuition expenses related to degrees that advance their employees’ careers.  If your firm is paying for your tuition, you might consider going to law school in the evenings, while continuing your “day job.”  Your employer may ask you to sign a promissory note in exchange for fully/partially funding you law school tuition.  For example, your law firm may ask you to work with them for a certain period of time before leaving.

If not, then it is more of a financial decision similar to any other higher education degree, where you consider the return on investment in a Juris Doctor degree to long-term salary structure as a patent attorney. 

Many other factors are worth considering, too.  For example, your employer may require you to eventually become a lawyer.  Or, maybe your employer/law firm client wants only patent agents who are comfortable doing patent preparation and prosecution work, without having to foot the bill for a patent attorney at a higher billable rate doing the same work (likely at the same quality level as a patent agent).  Therefore, each career situation is unique and the transition should fit in with your long term career goals, as well as your employer’s goals and expectations for you.​


Jump Ship for a Lazy Extra $20k?

by Bradley Postma, Principal, Cullens Patent and Trademark Attorneys and
  author of Junior to Partner in Under 5 Years

May 2017

We’ve all experienced the approach. The unsolicited recruiter or poacher whispering sweet nothings into our ears about the green grass that lies just across town. Better pay - that extra $20k certainly would come in handy. Better conditions. Better prospects. Mmmm, you can just about taste the sweet life. But should you make the jump?

Don’t be lazy

If you are in a stone-carrying job with no prospects of career progression, the simple answer may be YES! On the other hand, if like the majority of professionals, you are seeking a fulfilling lifetime professional career, some more detailed thought is required.

Simply leaving for any short term pay increase is the “lazy” option, compared with first building a case to justify it.

One of my juniors was once poached by a larger firm in a bigger city. He told the other professionals of the significant pay increase he would receive in his new position. However, he was not prepared to work the long hours to justify the increased pay and so he did not see out the year. The reality is that he could have been paid the same amount at our firm, had he first produced the work to justify it. 

Beware of ridiculous pay offerings from those who do not know you. You must remember that increased pay in professional services is directly linked to increased performance expectations.

Loyalty

Any firm takes a chance in employing you. They extend themselves to take you in, provide you with training and support, and expose you to their clients for your benefit. It goes both ways, and professional integrity involves repaying the faith. 

Avoiding disaster  

You have to be committed for the long haul. In his book The Road Less Travelled[1], Peck advocates the advantages of the ability to delay gratification. The hard yards must be done before the reward is received. There are no short cuts and no getting something for nothing. Do not take your eye off the prize by looking at moving to a competitor instead of being committed to your current firm. Where possible, you are always better off fixing any deficiencies at your existing firm in preference to shifting firms where the grass often only appears greener.

Our responsibilities are to generally service the client, the firm, and then ourselves - in that order. In serving the client, we serve the firm. In serving the firm, we serve ourselves. Provided that the client and the firm treat us with respect, these responsibilities are never in conflict. A termination in our employment from the firm would neither serve the client nor the firm well. We must therefore ensure that our professional needs are met to avoid such a disaster.

It is always best to talk in terms of the firm’s interest, rather than your own interest at the firm’s expense in ensuring that your needs are met. For example, there is nothing more career damaging than indicating that you can get more pay elsewhere with a view of leveraging a pay rise. Even if you do get the pay rise in the short term, your lack of commitment to the firm will be remembered. It never ends well when you advertise to the firm that you are not committed to your practice or your firm. If you are prepared to walk away from the practice you are building on the basis of money alone, you are actually doing your fir​m a favour.

Compelling reasons to leave

The two essential ingredients for professional success within the firm are: (1) the firm environment; and (2) the job itself. If you have exhausted all avenues to obtain these ingredients at your current firm without success, then a quick exit is a good exit.  Our ability to stay motivated as a professional depends upon our firm choice. We are all individuals and all firms are different. It follows that not all individuals and firms form a perfect match. Professionals who are well matched with their firms will do well and thrive, whereas professionals who are poorly matched will always struggle. Recognising a misfit earlier is best so that corrective action can be taken. We should always remember that we choose to work at our firm and there are always other options. 

It is always unpleasant when any relationship ends badly. Both parties enter the relationship with the best of intentions, and both share in disappointment when it doesn’t work out. But life goes on.

Conclusion

Money should never be the determining factor in whether or not to leave an employer. In fact it should often be the last factor to consider. A professional’s worth is easy to calculate and is based upon performance - which is largely up to the professional.  The number-one way to increase your value to your employer, and your remuneration, is to increase your productivity. It is as simple and as difficult as that!

[1] M. Scott Peck, The Road Less Travelled: A New Psychology of Love, Traditional Values and Spiritual Growth, Simon & Schuster, 1978​


Considering a Career as Corporate Counsel?

by Laurie Young, Senior IP Counsel, Katun Corp

March 2017​

When an attorney goes in-house, he or she is skilled in the law which they will be focused, but an in-house attorney needs know more than just the law and how to work with lawyers. Being in-house is akin to going on a trip and having just a suitcase and nothing planned – you need to be ready for anything.  

1. Things Change and Change Quickly

I have been in-house at a medium sized company for seven years. I was fortunate to start with a fellow IP attorney, but after a few years, he left and I became the sole in-house IP counsel at an international corporation. After he submitted his notice, I was no longer dealing just with patent portfolios in the United States and the European Patent Office and a few trademark matters; instead, I was thrown into patent, trademark, copyright, domain name, and every other type of tangential IP matter one could imaging on a global level. Daily, I need to be able to switch my brain from reviewing US patents to trademark matters in a South American country, or something else crazy.

2. You will be Diverted

I not only need to be knowledgeable about the different topics I handle, but I also need to be flexible in a way that I am able to jump from one matter to another and back to the first with seamless transition. Most of the time, I cannot tell my General Counsel, Chief Operating Officer, or lead engineer that I am focusing on something else and I cannot listen to their issues. I have to be able to stop what I am doing, listen to the executives, remember what their issue are, and bounce right back to what I was doing, or address their issue first and be able to return to what I was previously doing.

3. Communicate Effectively

I also need to be skilled in communication styles. I say, only half-jokingly, that I have two divisions I report to – Legal and Everyone else. While the General Counsel is my ultimate supervisor, I must be able to understand and answer to the business units, marketing, IT, and engineers in R&D. I need to be able to communicate with all individuals. Non-IP lawyers may have a rudimentary knowledge of IP matters, but not great enough for me to explain a matter the same way I would to my General Counsel. The communication style and word choice is different. I must be able to explain to marketing and R&D why the company cannot offer a product to marketing with enough specificity, but not get bogged down by the legalese.

Being able to react positively to change, multitask and communicate effectively are not easy skills to master. As an in-house attorney, these skills are crucial to having a positive experience in your job. Travel well, and enjoy the journey. 


How Do You Like Your Eggs? Or – How to Find Your Preferred Job in IP

b

y Amdie Mengistu, Managing Partner - Legal Division, Lucas Group
March 2017

There is a surge of in-house demand for attorneys in the Big Law IP space, and associates are looking for ways to position themselves to land these coveted roles. I’d like to share hiring trends and offer guidance for success.

My vantage point is managing the legal practice for a national recruitment firm. While I focus on answering talent needs in the New York and Tri-State areas, the reality is that IP is a dynamic, growing area of practice everywhere. IP-intensive industries operate nationwide and are a major contributor to the overall U.S. economy.

What do eggs have to do with it? I’ll get to that in a minute.

It’s a candidate’s market

As the economy and jobs come roaring back from the 2008 recession, the world has become an oyster for IP attorneys – and for law school graduates who made it through the ‘08 downturn. The classes of 2009 to 2012 are maturing into the mid-level associate era of their careers and entering a window of strong marketability, laterally among Big Law firms, and in-house to a range of companies.

Do you prefer hard or soft IP law?  

Getting back to how you like your eggs, your preference in career direction is pretty important, too. Big Law is full of IP needs on behalf of its clients, and not just hard IP needs like pharmaceutical or engineering patents – but also soft IP needs, such as licensing and distribution agreements. Soft IP legal services are a huge area of growth in entertainment, including in the television and cable network industry, as well as tech industries and others.

The field is expanding, so explore and identify your interests. 

Going from corporate practice to Big Law IP

Following is some advice for associates looking for ways to prepare for these opportunities:

  1. Advocate for yourself in your existing company or firm.

    If opportunities exist to gain experience doing IP portions of the work, ask for them. For example, in every M&A deal there are lawyers doing analysis of IP in the transaction. Do all you can to get into that space. It will make you more marketable to more in-house roles.
     
  2. Be open to a two-step process.

    At Lucas Group, we help associates at general corporate practices make savvy lateral moves to IP boutiques. They pick up experience that makes them more marketable to Big Law.
     
  3. Talk to a good recruiter.
    It’s never too soon to establish a relationship with a legal recruiter. Specialists have relationships with Big Law firms nationwide and real access to sought-after in-house jobs. Plus, they want you to succeed and that means delivering golden career eggs – the way you like them.

About the author: 

Amdie Mengistu earned his J.D., cum laude, from Hofstra University School of Law, where he was a Dwight L. Greene Scholar and a New York City Bar Diversity Fellow. At Lucas Group, he works with clients from Big Law to small legal firms and Fortune 500 corporations to find the legal talent they need. For assistance finding top legal talent, please reach out to Lucas Group: http://lucas.gp/zwzZgr.​​​​​​