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Career Story: Intellectual Property Lawyer

Intellectual Property Lawyer

Job Title: Partner - Law Firm

Type of Company: I am a partner in a law firm specializing in intellectual property law.

Education: BSEE - Northwestern Univ. •• JD - Northeastern Univ. School of Law

Previous Experience: Field Engineer for Westinghouse Electric Corp. working on airborne radar systems, specifically test equipment hardware and software and hardware for radar system development.

Job Tasks: I help clients obtain patent and trademark protection in the United States and foreign countries. This is part of the legal field of intellectual property law, which also includes copyrights and trade secrets. My clients include individuals, start-up, regional, national, and international companies, universities, and foreign law firms.

The majority of my work involves understanding clients' innovations, writing patent applications, filing them with the United States Patent and Trademark Office and foreign patent offices, and working with those offices to obtain patent protection, a process known as "patent prosecution." I also pursue trademark protection for client, known as "trademark prosecution." The job is a mix of understanding and describing technical innovation as well as navigating government administrative procedures.

Because intellectual property law is not very well understood by most people, much of my time involves explaining the patent or trademark system, both U.S. and foreign, to clients. This includes helping them make decisions about where it makes sense for them to pursue legal protection. It is a very expensive process in general, and care must be exercised to choose whether to file, for example, a patent application in a foreign country where the client may only have marginal business.

Practically speaking, I spend most of my day at my desk, reading invention disclosures, writing documents on the computer, and researching legal issues. Most of my client communication is done via email, telephone or fax.

Our firm cannot file or "prosecute" patent applications outside the United States so we rely upon the services of foreign law firms. They, in turn, cannot prosecute their patent applications in the United States, so they rely upon us. We have these "reciprocal" relationships with law firms all over the world. I am currently responsible for the business relationship with firms in Switzerland, Denmark and England, and regularly correspond with lawyers in Israel, China, Germany and Canada.

Best and Worst Parts of the Job: Some of the best parts of the job include being exposed to new ideas and very bright people. One way of looking at my job is that I use my specialized knowledge to help people, so that is very satisfying. I also have a lot of responsibility, which makes my work very challenging and personally meaningful. I am in many ways a small businessperson.

One of the worst parts of my job is that I no longer get to actually work with technology as I did in my engineering job. Reading about ideas and sometimes seeing demonstrations are enjoyable, but it would be more fun if I actually got to work with new and innovative equipment.

Job Tips:
1. In order to become a registered patent attorney, one must have either an undergraduate degree in science or engineering, or have taken an equivalent number of science and engineering courses. However, it is possible to work with other aspects of intellectual property law, including trademarks or copyrights, without such a degree. Obviously, one also needs a law degree.

2. It is a lot of work, and in the current economy, it means a lot of tuition.

3. It is a good career for those who enjoy learning about new ideas and explaining them to others.

Additional Thoughts: There are different environments in which to be a patent attorney. I work in a mid-size intellectual property firm having thirteen attorneys. There are also smaller firms, regional firms of fifty to one-hundred lawyers, and national firms with many hundreds of lawyers. One can also work directly for a company or university, known as an "in-house" position. I like being a partner in my firm because I have a good understanding of what everyone is working on and what their capabilities and strengths are. I am also involved in running the firm from a business standpoint which I find very rewarding.

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