Vault Law Resource Center

Intellectual Property

Overview

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.

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Practice Area Q&A’s

People often think that you need a degree in engineering or the sciences to excel in patent litigation, but I think that it’s possible to succeed regardless of your background—if you’re not afraid of technology and if you’re smart, interested, and dedicated enough to push - yourself to really learn it for each case.

— Paul Bondor , Desmarais LLP

While having some background in science can be helpful, it is absolutely not a requirement. There are so many people on my team without a science background who mentor me and teach me all the substantive law I need to know.

— HanByul Chang , Cooley LLP

I joined as a technical specialist, which is a starting position for people who have technical backgrounds but no legal experience. When passing the patent bar, I became a patent agent, after which I applied and attended law school as a parttime law student while working full-time as a student associate. I became an associate after graduating law school and passing the bar.

— Wenhao Xiong , Sterne, Kessler, Goldstein & Fox P.L.L.C.

As a trademark lawyer, I like that I can observe, in the real world, the benefits our clients receive from our service. When I see advertisements of my client’s product, I know that my effort in defeating a motion for preliminary injunction has allowed my client to continue to use their trademark for their product. Or when I’m in a grocery store and I notice that a third party has rebranded, I know my efforts in enforcing my client’s trademark rights led to that rebrand.

— Jenine A. Rossington , Kilpatrick Townsend & Stockton LLP

If you’re working in IP support for M&A transactions and licensing, you can thrive with the right attitude and dedication. Ultimately, your success in IP law will be driven by your ability to continuously learn and adapt.

— Joseph Schenck , Fenwick & West LLP

One of the hardest adjustments to make for most people between their undergraduate education or previous career and the practice of law is learning how to be an effective legal writer. It’s especially important in litigation.

— Nathan Reeves , Knobbe, Martens, Olson & Bear LLP

For any IP area, learning about how businesses operate, make money, and compete with each other is extremely important, as these directly impact the value of IP. For example, pharmaceutical companies handle IP very differently than software companies because their business models are not the same.

— Nishla Keiser , Finnegan, Henderson, Farabow, Garrett & Dunner, LLP

If you do have a technical or scientific degree, I recommend taking the patent bar, even if you are not interested in prosecuting patents. District court patent litigation is often accompanied by parallel inter partes review proceedings before the Patent Trial and Appeal Board. These proceedings are often the source of early argument experience for junior attorneys but require you to be admitted.

— Kaitlin Crowder , Jones Day