The Inside Scoop on Practicing Intellectual Property Law was originally published on Firsthand.
Intellectual property lawyers protect and enforce the rights of creators, and most work in one of three key areas: transactional IP, IP litigation, or patent prosecution. Transactional practitioners may handle matters such as licensing deals or the IP issues within an M&A transaction, while litigators handle disputes related to patents, copyrights, trademarks, and trade secrets. Patent prosecutors help clients obtain patents from the U.S. Patent and Trademark Office, and these attorneys must have a technical background and pass the patent bar exam.
In our guide, Practice Perspectives: Vault’s Guide to Legal Practice Areas, lawyers from top-ranked firms for intellectual property share insights about their practice, including the kinds of cases they work on, how they chose IP law, common misconceptions about the practice, and recommended training and skills. Keep reading for their insights!
What types of cases/deals do you work on?
Michelle Ernst, Associate—Latham & Watkins: Patent litigation cases fall under the jurisdiction of federal courts, though there are sometimes parallel validity proceedings before the PTAB, and appeals proceed before the Federal Circuit. The majority of my cases fall under the Hatch-Waxman Act, a statute that governs the interplay between brand and generic pharmaceutical companies, including before the Food and Drug Administration and in attendant patent litigation proceedings. In my cases, I typically represent the plaintiff brand pharmaceutical company in enforcing patents that cover their innovative drug.
John Livingstone, Managing Partner—Finnegan: I work on contentious proceedings, typically in the district courts, the International Trade Commission, or the PTAB in the technology fields noted above. For instance, I have worked on AstraZeneca’s blockbuster drugs CRESTOR®, SAXAGLIPTIN®, and FARXIGA®; Ajinomoto’s feed-grade tryptophan produced by genetically modified organisms; Kaken Pharmaceutical’s drug JUBLIA®; and Nissei ASB’s mold tooling technology for making plastic packaging materials via injection stretch blow molding machines.
Brian Flynn, Partner—Knobbe Martens: I prepare and prosecute both utility and design patent applications, including appeals at the U.S. Patent and Trademark Office. I also perform due diligence and draft intellectual property opinions. Additionally, I assist clients in patent strategy, manage patent portfolios, and oversee international patent prosecution.
Mark L. Whitaker, Partner & Co-Chair—Morrison & Foerster LLP: I am currently representing Teradata in a trade secrets case dealing with data warehousing and big data analytics technology patents. Other cases involve automated camera lens technology and software, spinal correction and alignment equipment, semiconductor chip and wafer development for various personal and automotive electronics, polyurethane chemistry for golf balls, and hydraulic excavators.
How did you choose this practice area?
Pauline M. Pelletier, Director—Sterne, Kessler, Goldstein & Fox P.L.L.C.: I love patent law and have always focused my practice on areas where patent legal expertise is critical. Over the years, that has evolved. For example, in 2012 the America Invents Act (AIA) created the PTAB and inter partes review proceedings, and this fundamentally changed the patent enforcement and defense landscape. The PTAB has taken on increasing significance in the past five years, as district court actions are increasingly stayed pending review of the asserted patents by the PTAB. Having that expertise, both procedural and substantive, has been key to delivering great results for clients, whether with respect to challenging, asserting, or defending patents.
Chase Hammond, Associate—Sterne, Kessler, Goldstein & Fox P.L.L.C.: During my senior year as an undergraduate engineering student at Virginia Tech, I took an environmental law course as an elective. At the time, I only chose that course because it was a good fit for my schedule. However, shortly after beginning the course, I realized that I really enjoyed analyzing legal issues. To me, analyzing legal issues is very similar to analyzing technical issues. Both require applying a set of unique rules and variables to a problem to achieve a desired outcome. After finishing the environmental law course, I took an intellectual property law course the next semester, and I was hooked.
Han-Wei (“Harvey”) Chen, Partner—Perkins Coie LLP: Since I was trained as an electrical engineer and a computer scientist, learning about new technologies never gets old for me. Also, born and raised in Asia, I am an immigrant who is very familiar with the culture and intricacy of companies in Asia, as well as the legal and business issues they face.
Naomi Birbach, Associate—Goodwin Procter LLP: I majored in Chemistry in undergrad but always wanted to be a lawyer. After college, I was lucky to get a job working as a Patent Examiner at the U.S. Patent and Trademark Office. I found the work very interesting but also a bit solitary and had a feeling that I would prefer the team-based approach of patent litigation more than patent prosecution. After two years at the Patent Office, I left for law school with the goal of becoming a patent litigator and haven’t looked back.
What misconceptions exist about your practice area?
Marty Gomez, Partner—Goodwin Procter LLP: One misconception is that patent attorneys are nerds and shy introverts. Well, maybe the nerd part is true; but the best part of my job is talking to my clients and networking with potential new clients—and that requires me to be outgoing.
Forrest Flemming, Associate—Kilpatrick Townsend & Stockton LLP: Many law students dismiss intellectual property because they don’t have a scientific background. But trademark and copyright work—and even some patent work—does not require science degrees. I, for one, have a degree in vocal performance, not physics. I highly recommend that those interested in pursuing a career in trademark and copyright law do so since there are no prerequisites standing between them and those practice areas.
What training, classes, experience, or skills development would you recommend to someone who wishes to enter your practice area?
Arpita Bhattacharyya, Partner—Finnegan: If you aspire to be a patent litigator, your Civil Procedure, Evidence, and Trial Advocacy classes can be very helpful. Also, take as many patent law classes as you can, so that you understand the basics of patent law really well when you start as a first-year associate. Mock trials and moot court can also provide valuable stand-up experience.
Rachel Dolphin, Associate—Morrison & Foerster LLP: It is definitely helpful to take a class or two in intellectual property law if you want to get into IP litigation. It is not required (I had not), but it is good to have that general knowledge before starting as an associate. If that isn’t possible, reading a treatise on IP law can also be helpful and can help you get a sense for whether or not the issues seem interesting to you. I also recommend taking some sort of trial skills and/or negotiation workshop. After all, IP litigation is a form of litigation, and it is important to develop those skills. Your Civil Procedure class will also definitely come in handy.
Tara Elliott, Partner—Latham & Watkins: Law students who have technical degrees should strongly consider taking the patent bar, irrespective of whether they have decided on patent prosecution or litigation. Patent bar registration is a marketable credential. Clerking in courts that handle patent disputes is also valuable, such as trial courts in Delaware, Texas, and California, as well as the ITC and the Court of Appeals for the Federal Circuit. A technical degree can be valuable but is by no means necessary. However, a keen interest in learning new technology and a willingness to roll up your sleeves and learn complex technical matters is important.
Click here to read more insights from these lawyers about their IP practices—including types of clients they represent and what a typical day is like—as well as Q&As from more than 100 lawyers across 24 other practice areas. (If you are a law student, you may have free access to the Practice Perspectives guide through your law school—check with your career services office for your login.)