Practice Area Insights: The Unique Wrinkles of an IP Practice
Intellectual Property practice generally falls into one of three buckets: transactional IP, IP litigation, and patent prosecution. It is rare for an attorney to work in both IP transactions and litigation at a large firm but more common in smaller practices. Transactional IP attorneys work on transactions to license intellectual property assets or in support of M&A transactions to handle the IP-related issues in such deals. IP litigators work on disputes involving patents, copyrights, trademarks, and trade secrets. Patent prosecution involves assisting clients in obtaining patents from the Patent and Trademark Office. Patent prosecutors are required to have a science degree and to pass the Patent Bar examination. Patent lawyers evaluate whether their client’s request impinges on other intellectual property, defend against opposition to client’s applications in administrative trials, and oppose applications that impinge on the client’s intellectual property. Lawyers working in “hard IP”—patents and biotech assets—are often required to have a technical background even if not practicing before the patent bar and an undergraduate or graduate degree in science or engineering is helpful. IP lawyers need to fully understand the technologies, products, and businesses of their clients to represent their clients well.
In our guide, Practice Perspectives: Vault’s Guide to Legal Practice Areas, attorneys from law firms with top-ranked Intellectual Property practices share insights about their practice, including how to prepare to work in this highly technical specialty and what a typical day working in the practice is like. Keep reading for their insights!
What training, classes, experience, or skills development would you recommend to someone who wishes to enter your practice area?
Paul Bondor, Partner—Desmarais: An undergraduate degree in engineering or science is certainly helpful. Once you get to law school, Evidence and Trial Advocacy are also helpful—there’s no substitute for getting on your feet and presenting evidence and arguments in whatever forum is open to you.
Laura Moran, Partner—Fenwick: I always recommend that law students take classes in deposition skills, trial advocacy, and evidence. And specific to my practice area, I recommend taking whatever patent-specific or even IP survey courses your law school offers.
Cara Regan, Partner—Finnegan: Write as much as possible. A lot of IP work is writing, regardless of whether your primary focus is client counseling, patent and trademark prosecution, or litigation. Being able to communicate clearly to clients, opposing counsel, and the court is a huge advantage.
Take opportunities to be uncomfortable too. In practice, you will often be asked to do things—taking depositions, running portions of a case, speaking in court—before you think you are ready, because more senior members of the team know that you are. Trying things in low-stakes practicums or moot court competitions can help you gain confidence.
What is a typical day like and/or what are some common tasks you perform?
Paul Bondor: Typically, any given day will find me either in my office preparing for the next event, be it trial, a hearing, a meeting, or a deposition (or working with my team on litigation-related documents of all stripes: pleadings, briefs, and written discovery requests or responses) or on the road to get to a hearing or deposition, whether that’s in Delaware, California, Texas, Japan, or Taiwan.
Laura Moran: I wouldn’t say that there is a “typical day.” For any particular case, it largely depends on the stage of the case. Early case assessment, fact discovery, expert discovery, pre-trial, and trial each come with their own unique facets that shape the activities you find yourself engaged in on any given day. Another way to look at the “typical day” is really whatever is most urgent and important for your client that day.
Cara Regan: Every day is different. In an upcoming week, I am scheduled to participate in internal team meetings about case action items and surrounding strategy, join joint defense group and client calls, interview potential experts, and meet and confer with opposing counsel on discovery issues. I will also draft a complaint, write sections of a claim construction brief, and review contention positions prepared by other team members. And I may write discovery letters or a motion to compel, depending on the results of the meet and confer. In some weeks, I might also attend a court hearing or a status conference, or I might travel to meet with a client or an expert.