I am not talking about general skills like communication skills or research skills. Of course all lawyers need those skills to succeed.
However, what could be 35 highly in-demand skills in IP that would qualify you for the best jobs in the IP world, be it in an IP law firm or as an in-house IP lawyer in a media or tech company?
What would be 35 things really worth learning over the next few months that could take your career to the next level in terms of new opportunities that will open up thereafter?
I am giving you a well researched list I arrived at after talking to some of the top IP lawyers in the country. Goes without saying, I did this research to figure out what to teach in our IP, Media and Entertainment Law course.
I did not want to make a run of the mill course where we just teach people various sections of the Copyright Act, Trademark Act and Patent Act, and then some case laws. Most of you are smart enough to read those things even on your own.
However, what are the challenges that top lawyers are grappling with? What kind of client matters keep them awake at night but also fetch them the best rewards, in terms of both money and recognition?
So I made a list of 35 such tasks. As you read this, I want you to think. What if you could learn these things? Can you get better jobs? Can you impress your boss to get a promotion or to find your way into more important matters? If you had this kind of knowledge, is it possible that you would get more respect from your peers and other lawyers? Could you attract better clients because you have special skills that most lawyers in the market do not? Could you serve a wider range of clients than you currently do?
This course is available. You can enrol and start studying now. It is available until 3rd May at 2018 prices after which the price hike for the current financial year will kick in. So make the best of it!
Prosecution for infringement of IP
India has seen a huge surge in IP registration applications in the last 5 years. Even small businesses and first-time entrepreneurs are filing for registration of trademark and copyright left, right and centre.
The cost of registration has also come down drastically with venture-funded service providers bringing the legal costs to a minimum and making the process very efficient. These LPO style operations often deploy very little time from lawyers and more from well-trained paralegals, keeping costs at a minimum.
On top of that, the Indian government has been sponsoring free registration of IP by startups and encouraging patent applications by universities. This has led to a tsunami of registrations. Naturally, this is also leading to a tsunami of infringement cases related to the infringement of IP.
IP infringement prosecution is lucrative work for IP law firms, and there is now a trend where large companies are hiring in-house legal teams to do this work in order to cut legal bills. Preventing trademark infringement is very important from the point of view of protecting a brand.
Dealing with objections and oppositions while registering a trademark
For the same reason as above, as pre-registration input from lawyers is at an all-time minimum for a large number of trademark applications, there are a lot more objections and oppositions. The work is growing much faster than lawyers and law firms can keep pace at the moment. As a result, charges are very high and as are the margins.
If you want to be an IP lawyer, being very good with the trademark registry, especially for the purpose of handling objections and opposition means a sure shot ticket to a well-paying job as on 2019, and it is unlikely to change in the next half a decade as the speed of registration increases further.
How to conduct IP due diligence
This is a specialised branch of due diligence. A large number of valuable companies that are up for grabs or tried to get listed or are even looking for large scale finance need IP due diligence services. The beneficiary of the services is usually the buyer, investor or financier.
Usually, law firms are hired to conduct IP due diligence.
How to deal with copyright societies
Responding to notices by copyright societies, entering into proper arrangements with appropriate copyright societies and dealing with lawsuits by copyright societies, which can be quite frequent, is an important job of IP lawyers. Copyright societies are in a murky business in India, there are often lack of legal clarities and conflicting claims. Lawyers play an important role in extracting maximum royalties for performances as well as reducing royalty payment to a minimum through negotiation and legal strategy.
How to protect software from getting replicated by competitors
One of the biggest problems startups and innovative software makers face is copying by competitors. Sometimes software can be patented, but mostly that is not a viable option. However, the software has copyright protection. Lawyers create strategies to slow down competitors that try to launch copied software. It may not always be possible to restrain your competition from launching a software based on the same logic and functionalities but through strategic litigation, competitors are often intimidated or injunctions are obtained to slow down launch.
How to calculate damages for IP infringement
One of the tricky things to do is calculation of damages in IP infringement cases. If you infringe my IP, I am usually entitled to recover all your profits apart from recovering any loss of business I have suffered due to infringement. Lawyers who can work with financial models that predict or calculate such damages and can then establish the same in a court of law are always in high demand.
How to prevent import or export of infringing goods by giving notice to customs commissioner
These are lucrative assignments. Imagine that you have a patent on dual sim phones in India. And then a competitor is importing dual sim phones without taking a license from you. How are you going to stop the same? Btw, this is actually a real-life case that took place a few years back.
The point is that there are many new patented technology which may be infringed by Chinese exporters or some other pirates. Businesses pay top rates to lawyers for this work as stopping such piracy and infringement by capturing consignments before goods actually hit the market is a very high priority legal work.
How to register non-conventional trademarks
Sometimes the most valuable trademarks are not conventional word or image marks. For example, there has been an attempt to register the blue border of sarees of Mother Teresa’s nuns (Missionaries of Charity). The sound of Hurley Davidson bikes or the texture of a Sandesh are also good examples. Registering such trademarks are rare feat and if you have knowledge and experience of the same, it can be the clinching deal in your resume.
How to structure and draft for a franchising deal
Franchising deals are on the rise. I am sure you see a lot of franchisee stores these days, from Mcdonalds, Kidzee, Apple Genius Stores to Cafe Coffee Day, many examples are very prominent. These franchisee deals are usually complicated and documentation must be very detailed. You can easily charge in lakhs for drafting and advising on a franchisee contract if you are working for the franchisor. Where you are advising a franchisee, it could be less but still substantial.
How to draft a patent application
While a patent application can be filed only by a licensed patent agent, lawyers have found a clever way to get around this. They get the application filed as self-filed by the inventor. However, if you know how to draft patent claims, how to strategize to ensure that the application gets through if you can get provisional patents for an applicant – these skills are rare and highly in demand whether or not you qualify as a patent attorney. Definitely make it a point to learn these skills if you are going to work as an IP lawyer.
Creating a monitoring system for a portfolio of intellectual property
Imagine working in a large corporation. There will be a long list of IP, from trademark, patents to copyright. There may even be various trade secrets. As an in-house IP lawyer, you will have to set up a monitoring system. Imagine a dashboard that keeps track of when a trademark has to be renewed, which applications are pending and needs follow up, which IP assets are under threat due to infringement, what are the various litigations going on, what licenses have been obtained, what products are being developed and what new licenses may have to be procured, what are the intellectual property assets that can be out-licensed, and so on.
You need to create weekly and monthly reporting structures that feed into your dashboard, and processes that check the integrity of the data periodically. This is a management skill and a critical one for an IP lawyer especially if you are looking to work in-house. Even if you work at a law firm, you can charge companies a lot of money to build such dashboards.
Prior art search, patent landscaping and advising inventors
What inventions are patentable? What is the inventive step that makes your claim for a patent valid? This is a contentious area, and a high quality prior art search and patent landscaping is necessary to understand what patents have already been granted and what information is already in the public domain, in order to target the right inventions. This work should ideally be done at a preliminary stage, even before beginning the research.
Drafting various kinds of licensing and assignment agreements
Once someone owns or creates any intellectual property, the next important step is to monetize the same. Monetization usually happens through various kind of licensing agreements and assignment agreements. For example, a music license agreement may give a movie producer to use a certain song in his movie. A very different kind of license will be needed to license it for playing on a radio channel. One may take a license to create a different language version of the same song.
These are frequently drafted agreements and comprise the bulk of many IP lawyers work. These can be very technical and complicated and require a high level of expertise.
Valuation of intellectual property
Very few lawyers can do valuation of intellectual property but it is an in-demand skill. Valuation is needed in a number of circumstances. One type of situation is when a company is up for sale, its valuable intellectual property requires valuation. From M&A to bankruptcy, in a number of situations this is relevant. Similarly, when investment is being raised or finance is being arranged, valuation of intellectual assets is commonplace, especially if those are to be offered as collateral.
In many court cases, especially infringement or misappropriation cases involving intellectual property, valuation becomes necessary for quantification of damages. Valuation is also often necessary for internal decision making, taxation or accounting purposes.
Quite clearly, the application of knowledge of valuation is therefore wide ranging and it is a greatly in-demand skill.
How to structure a merchandising deal
Merchandising of popular characters, movies and musical icons is big business. The estate of Elvis Presley still makes a lot of money from merchandising as those who print Elvis t-shirts or mugs have to pay license fees to the estate.
Merchandising such deals can be complicated, as one may have to divide geographical territories, provide exclusive or non-exclusive licenses, and take care of multiple stakeholders with a focus on maximizing license fees. This requires a lot of expertise and specialized knowledge.
How to draft and file a passing off suit
Passing off is a tort and very useful for trademark lawyers. A lot of times your trademark may not be valid or registered in a country, but an action of passing off stands in the court. As an IP lawyer, you need to have thorough knowledge about passing off, and you should know how to draft and file a plaint for the same, and how to defend actions for passing off.
How to handle pre-grant and post-grant opposition when applying for a patent
This is a highly valuable skill. Very few lawyers have the requisite knowledge and skills for this work, but it is also highly remunerated and sought after. You can make a very thriving practice or join any good law firm if you have these skills. You need to be very good at drafting and have tremendous clarity about the scientific and legal concepts involved so you can explain these to tribunal members and judges in a very simple manner.
How to draft a technology transfer agreement
Technology transfer agreements are highly specialized documents that can run into hundreds of pages and often contain a lot of technical details. A lawyer has to be at ease with the technology and processes to be able to draft these agreements. However, the going rate for these contracts range from INR 60,000 to a few lakhs depending on the size of deal and complexity.
How to navigate domain name disputes
Domain name disputes, especially international ones, are extremely common. Many times squatters by domain names and misguide potential visitors and customers. Sometimes competitors register misleading domain names to cause losses to a business. Domain name registrars provide for online arbitration processes. Lawyers can make handsome margins from this work as the work is considered a niche with very lawyers and lawyers practising in domain name disputes.
Preventing of misuse of trademark by competitors in comparative advertisements etc.
Competitors may issue disparaging advertisements, or unfair competitive advertisements, or even plant negative news stories about your brand. Or your client’s brand. As a lawyer, it will be your responsibility to navigate your company or brand out of such tight corners through litigations. You may have to obtain appropriate injunctions. Having the skill to handle these situations is very valuable for IP lawyers, especially if you work in-house.
Getting infringing and pirated content quickly off the internet
This is a staple for lawyers in media and entertainment companies, publishing houses and news and sports broadcasting companies. The entire business model depends on exclusivity and pirates seriously damage revenues. So these companies hire an army of lawyers and spend a lot on enforcement. This is also very relevant for internet media companies. For a lot of social media companies, the challenge on the other hand is to keep infringing content out, create good policies that protect them from lawsuits and unnecessary negative publicity, for which they also hire lawyers.
Reputation management by preventing misuse of trademark
Reputation management has emerged as a very important area of work because the internet has become a place where many unfair accusations and false information is being propagated by various actors. Brands are being forced to deploy a large number of lawyers to regularly deal with these threats. There are regular events of disparagement and there are crisis situations, and the remuneration for crisis situations can be very high.
This work falls squarely in the domain of IP lawyers because trademark, trade secrets and copyright are three very important weapons in the reputation management battle.
Vetting of advertisements and marketing material
One of the major tasks of in-house lawyers is to vet advertisements and marketing schemes from the point of view of potential legal liability and compliance to laws. There are many laws such as the Drugs and Magical Remedies Act, or Legal Metrology Act etc to which products and their advertisements have to comply with. There may be surrogate advertisements or other tricky advertisements that need extra attention. Sometimes, in-house counsels approach law firms for external advice on these matters too.
Preparing documentation that helps to protect trade secrets
Trade secret is an underused tool in the kitties of IP lawyers. It can be used to protect business related information which may be leaked by employees to competitors or the public in general leading to losses or embarrassment. A famous example of trade secret is the formula of Coca Cola.
Getting quick injunctions that protect IP and prevent loss of business
Very often, the loss from infringement of IP can be prevented only through a quick injunction. This is why litigation chops is very important for IP lawyers. You need to know which lawyers to approach, how to brief them effectively and how to monitor ongoing cases for best results.
Responding effectively to patent trolls and other malicious attempts to extract money through unfair IP prosecution
Patent trolls, trademark squatters and copyright societies often try to unfairly extract money from businesses by playing various legal tricks. They often file cases that are trivial and malicious in order to get out of court settlement. A good IP lawyer should know how to defend against these trolls and squatters.
Building a system to monitor R&D and product development activities for the identification of inventions and assess potential external claims for compensation
If your company is developing a new product, you may have to take licenses from other parties if any patented technology is being used (even unknowingly), or you may need to apply for patents yourself. In-house lawyers need to build systems and processes for regular monitoring of R&D and product development activities, and keep track of confidentiality agreements so that you do not get disqualified from filing a patent.
Registration of international trademark and patents
Registering a trademark, patent or copyright in one country is easy. What if you have to file it in many countries at once? There are treaties between countries that allow simultaneous filing of copyright, patent and trademark. IP lawyers need to learn how to use these international systems for simultaneous filing in many countries.
Research and mapping on IP strategy of competitors
This is important for in-house lawyers but even law firms also often get these assignments. Let’s say that you are running a biotech company trying to create next-generation sleeping pills. Who are your competitors? What patents do they have? What patents have already expired or are about to expire? What are the potential molecules that could be invented, and would they be patentable? This kind of analysis of competitors IP strategy is not only important for biotech companies but also tech companies like Google, Uber, Apple, Amazon, Facebook, GE, Volvo etc.
Developing an offensive and defensive patent portfolio strategy
As a part of the ongoing patent war, which is related to who can take innovative products first to market, advanced tech companies develop offensive and defensive patent portfolio strategy. They obtain defensive patents that are meant to prevent successful prosecution by competitors for infringement and offensive patents that they can use to sue their competitors. Given that a phone, laptop or a car can have hundreds or even thousands of patented parts, sometimes, they just reach a stalemate where they give licenses to each other of their patents so that both companies can go to the market. Lawyers who work on such matters are sitting on gold mines.
Drafting various media and entertainment contracts that deal with IP
There are a lot of agreements, from co-production to direction agreement or actors and performers agreements, model releases, photo releases, location releases etc that are required in the media and entertainment industry, and usually the IP lawyers are called on to draft these.
Drafting royalty sharing agreements
There are a number of complex royalty sharing and input sharing agreements that require specific expertise. Royalty sharing can be contingent on the performance of a party or overall commercial success of a venture. Many of these agreements can look like complex JV agreements which are more temporal in nature. They can in fact be housed in JV entities at times as well. These are expensive agreements that only the best lawyers are called on to draft and negotiate.
Advising on tax aspects of intellectual property
There are many specific provisions in tax law related to intellectual property. For example, there are special rates of income tax for royalties from books, excluding text books. IP lawyers need to know these aspects of tax laws to effectively advise their clients and appropriately structure some of the deals.
Structuring and drafting in-licensing and out-licensing deals
If I license a product from you, I am in-licensing it and you are out-licensing it. If I license a product to you, then I am out-licensing and you are in-licensing. Pharma, automobile, biotech and publishing companies often have to engage in these practices in order to avoid patent or copyright wars, launch new products and even enter into new geographical markets. In-licensing and out-licensing are negotiated differently and lawyers specialise in these skills.
Mortgaging or pledging of patent or trademarks
The Kingfisher Airlines trademark was pledged to raise a loan of 4000 crores from SBI. Patents and trademarks, and even copyright can be pledged or mortgaged. This are sophisticated transactions that are not very common, but lawyers who work on such deals are highly remunerated.
Procurement of compulsory license
This is possible in copyright and patent. In the famous Novartis case, a compulsory license was given for launching a generic version of a liver cancer drug by the Indian Supreme Court. The compulsory license of copyright is possible if the license is denied unfairly.
Drafting effective IP protection and assignment agreements in employment and consultancy agreements
It is a general rule that a person has IP rights over his or her original work product. But what happens when you make it while being paid by an employer to do it, or in the course of employment? All employment and consultancy agreements where the product is essentially a result of the work of an employee or consultant necessarily include IP protection clauses, where IP rights of such work is determined. It will cover issues such as who will have rights to IP, till when and for how long, in what circumstances such rights will not be available to him/her, are these rights assignable, etc.
Generally, because the corporation/firm/company is in a better negotiating power, such clauses are drawn and drafted in favour of these employers. This is true to the extent of these contracts being standard contracts with no room for negotiation. The employees have little or no negotiating powers. It is important to understand that such IP rights are important and any employee relinquishing their rights in favour of the employer should tread with caution.
Employment agreements of senior scientists are therefore hotly negotiated. In other cases, a standard contract is signed with all employees, but businesses regularly review such agreements.
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Executive Certificate Courses
- Certificate Course in Advanced Corporate taxation