FAQ ON LEARNING AND PRACTICING IP LAW

What is "intellectual property" law?

"Intellectual property" or "IP" law includes several related disciplines.  The core disciplines are copyright law (legal protection for creative and artistic expression), patent law (legal protection for innovative technologies and processes), and trademark law (legal protection for commercial symbols and images).  Related disciplines include the law of trade secrets (such as the secret formula for Coca-Cola) and unfair competition; "misappropriation" doctrine, which a company may use to try to keep a competitor from piggy-backing on its efforts to gather information; the "right of publicity" doctrine, which celebrities use to avoid the unauthorized use of their name or image; a group of principles that are sometimes labeled "privacy" law; and specialized forms of legal protection for certain products and technologies, such as semiconductor designs, plant varieties, and databases.  Few lawyers practice "intellectual property law" in the sense that they have mastered and regularly represent clients in all or even a substantial number of these areas of law.  As a result, "preparing for the practice of intellectual property law" means, first of all, giving some thought to those areas within intellectual property (IP) law that hold the most interest. 

Don't I have to have a technical background? 

Two propositions are commonly heard among would-be IP lawyers:  first, that to have an IP practice, one must be a trained engineer, or chemist, or biologist, or computer scientist; and second, that if one is a trained engineer, chemist, biologist, or computer scientist, the only proper place in the law for that person is patent law.  Both propositions are myths.

First, the brief summary of IP law provided above should be enough to prove that you don't have to be a scientist to be an IP lawyer.  Lawyers who represent inventors in front of the United States Patent Office must have specialized technical training, but an intellectual property lawyer (even a patent lawyer not practicing before the PTO) may be happy and successful even without it.  For some other areas (patent licensing and litigation, and copyright and trade secret law that addresses computer technology), a scientific or engineering background may be an advantage.  But even in Pittsburgh, known historically as a traditional technology city, there are a number of successful patent litigators, trial lawyers, and licensing lawyers who do not possess B.S. degrees.

Second, having a scientific background does not mean that you have to be a patent lawyer.  The intellectual discipline that comes with scientific training is invaluable in studying and practicing any kind of law.  Lawyers with scientific backgrounds may go on to satisfying legal careers in personal injury law, civil rights work, utilities regulation, and environmental law, for example.

What courses should I take?

Students who want to prepare for a career in intellectual property law should think about this question as having two parts, one focusing on course work in intellectual property itself, the second focusing on courses related to intellectual property in some way.

The first part has a more straightforward answer.  You should take all the IP courses that your schedule and background allow.  The exception (and reason for including "background" as a qualifier in that sentence) is that only students with a technical background and the intent to practice patent law need to take a course that focuses on drafting patent claims.  Students without a technical background, but who have a strong interest in patent law, may take a claim drafting course in order to better understand the patent prosecution process; that knowledge may come in handy during a career that includes patent litigation and trial work, for example.  Outside the patent area, the preferred sequence consists of an intellectual property survey course, if available, followed by specialized courses in the different IP disciplines, followed by specialized courses and seminars on narrow IP topics.  At Pitt, students interested in careers in IP law should start with the Intellectual Property survey course and/or with Copyright Law, Patent Law, and Trademark Law and Litigation.  Courses in E-Commerce, Biotechnology, and Intellectual Property Licensing, and Patent Litigation generally suppose that students have already completed at least one or more of the basic intellectual property courses.

The second part presents more choices.  Certain areas of the law are so obviously and commonly related to IP law in practice that they should not be overlooked:  antitrust, administrative law, commercial law and bankruptcy law, federal courts, and international law.  Others have an affinity that is less obvious:   negotiation and corporate counseling; insurance law; business planning; tax; immigration law.  Advanced topics in constitutional law, such as first and fourth amendment issues, have an increasing importance to copyright and patent law in particular.

Students at Pitt interested in careers in IP law may elect to pursue the Certificate in Intellectual Property and Technology Law.  Completing the Certificate is not required, however,  in order to practice IP law.

What if I want to know something about intellectual property law but don't know whether I want to practice in the area (or know that I DON'T want to practice IP law)?

Knowing something about intellectual property law is quickly becoming a prerequisite for competent lawyering in any discipline whatsoever (including such areas as family law, estate planning, and local government law).  The best and easiest introduction is a survey course that includes coverage of patent, trademark, and copyright law.  A course on antitrust and unfair competition law is essential, as is a course that includes coverage of federalism issues. 

What kinds of jobs are available in intellectual property law?

In a nutshell, the answer is: the same types of jobs that are available in almost any other legal discipline--private practice (large firm, small firm, solo); government practice (federal and state, and sometimes local); non-government not-for-profit organizations; in-house or corporate counsel positions.  Training in intellectual property law can also be extremely useful for lawyers who don't want to practice law but who value legal skills and knowledge of substantive law in other careers, including entrepreneurship, investing, publishing and writing, journalism, and political organizing, among other things.

Should I take the patent bar exam as a law student?  Can I get a job practicing IP law if I'm not a registered patent attorney?

Being a registered patent attorney is a prerequisite for representing clients seeking patents before the Patent and Trademark Office.  One becomes a registered patent attorney by passing a bar exam administered by the Patent and Trademark Office.  The Patent and Trademark Office sets its own requirements for admission.  One of those requirements is that the applicant, generally speaking, must have a scientific background.  The specific form of the requirements is available at the Patent and Trademark Office website.  Professor Andrew Beckerman-Rodau at Suffolk University Law School has assembled a useful page with links to resources about the patent bar exam.

Membership in the Patent Office bar (which is the colloquial way to refer to being registered to practice before the Patent Office) is not a prerequisite for any other type of IP practice.  Some law firms expect that all of their IP lawyers (even lawyers not expected to practice patent law) will take and pass the patent bar before starting practice.  Other firms, including some very good firms that specialize in patent law, do not expect or require that incoming lawyers have passed the patent bar before starting practice.  In general, the best way to maximize potential job opportunities after graduation is to achieve excellent grades during law school.  Excellent grades will often (but not always) compensate for not having taken or not being qualified to take the patent bar exam.  Passing the bar exam may, in some circumstances, help a job applicant overcome average grades.  In deciding whether to take the patent bar exam during law school, therefore, a student should consider whether prospective future employers are likely to expect that the student will have passed the exam before starting practice and whether the student's transcript is such that patent bar passage will help impress prospective employers.  Students also should bear in mind that preparing for and taking the patent bar exam is a significant commitment of time and expense, and that studying for the patent bar is likely to detract from the time necessary to perform well in a full load of other courses.  For another perspective on whether law students should take the patent bar exam, read the advice of Professor Greg Vetter, of the University of Houston Law Center.

University of Pittsburgh
School of Law

University of Pittsburgh