This article is written by Ramanuj Mukherjee.
What kind of skills will you need to become a high-flying IP lawyer? Here is a list. And yes, if you need to learn some of these skills, we have top IP lawyers and academicians from across the world teaching you these skills. Give us a shoutout if you want to make a career in IP law.
We have provided you the link of two courses at the end.
Let’s jump in and get through this list first.
1. Prior art searches, patent landscape and other reports
This is another skill that young IP lawyers need to develop. There are different kinds of prior art searches. The objective may be to check whether a certain invention is patentable, or in order to invalidate someone else’s patent. Sometimes state of the art reports are requisitioned in order to understand what patents already exist and what inventions should be targeted by R&D teams. There is a freedom-to-operate report that lawyers have to draft as well which is mandated by clients before launching new products in order to avoid infringement suits, product recalls, and launch delays.
Patent landscape reports are generated by patent analysts and patent strategists who evaluate existing patenting activity of the client against the activity of competitors to help answer key questions about risks, opportunities and impacts.
Here are some key questions that you may have to answer:
- Are there specific gaps in patented technology that represent opportunities?
- What are the gaps in your own patent portfolio?
- Is this technology area primed for disruption?
- Whom should the client partner collaborate with, fund or acquire to gain momentum?
- What are the in-/out-/cross-licensing opportunities?
- What are the key markets?
- Who are the top inventors within the sub-domains?
- What is their current association?
- What products or technology are competitors focusing on?
- What is the risk of litigation, opposition and infringement in the area?
- Is the area affected by recent mergers and acquisitions activity?
- How is your client’s patent portfolio positioned relative to competitors in terms of age, volume, quality, geographic presence and recent activity?
- What are the competitors’ patenting strategies, grant rates and exemplary patents?
As you can understand, commercial and technical understanding of technology is as important as technical legal skills in this space. Developing such acumen will be critical for your success as an IP lawyer.
2. Assisting executives with legal questions and helping them to form business strategies
IP has a key role to play in business, especially in the knowledge economy. Business leaders often need timely IP advice from their lawyers, whether in-house IP experts or external counsels. This is where the business acumen of the lawyer becomes even more important.
Some of the areas in which you should be able to advice are:
- What are some of the IPs that should be registered and possibly monetized?
- In what new ways can we monetize our existing IP?
- What are the most tax-efficient, highly enforceable models for monetizing our IP?
- What steps should be taken by the organization to effectively manage and develop the patent portfolio?
- How can our IP portfolio stay ahead of competition?
- What technology can we in-license, out-license or cross-license?
- Where can our organization increase research and development investment to build an effective patent portfolio?
- Are there any competitors whose IP pose a threat to our business?
- When to engage in defensive publishing of our research?
- Should we invest in certain startups, or pursue an M&A strategy in light of IP concerns?
- Are we doing enough to preserve the value of our IP portfolio? Who is infringing or abusing our IP?
- Are we doing enough to protect our IP or do we need to increase our budget?
- Would we be able to enforce our IP in that geographical market? Or should we just stay away?
- What are the geographies where we should register our IP? How much will it cost and how long will it take?
- How to fight back against patent trolls and deal with strategies like ‘picket-fencing’ where competitors try to get patents around our prized patents trying to erode the value of our prized patent?
- What would be our IP enforcement strategy? If a deep pocketed competitor infringes, what kind of enforcement cost and timeline are we looking at?
- How can we prevent counterfeiting on online auction platforms like e-bay or TaoBao or even Facebook and telegram groups?
- How should we respond to infringements and how can we recover damages?
- Will our new product or brand end up violating someone else’s IP rights?
- Have we properly optimized our patent or trademark registration strategy? In corporations based in the USA, more than 50% patents are abandoned after 10 years! Given the cost involved, questions may arise as to whether such patents should have been pursued in the first place.
- Can we reduce spending on outside counsel by zeroing in on redundancies and establish an in-house patent and trademark prosecution practice?
3. USPTO specific skills
United States Patent and Trademark Office is one of the most influential IP regulators and registrars in the world. Learning USPTO specific skills and getting experience involving USPTO can give a great boost to your IP law career in any country around the world. Apart from USPTO, EPO and JPO are the other patent offices that are sought after.
Here are some skills you may want to learn:
- How to respond to office actions from USPTO.
- How to conduct invention disclosure meetings.
- How to correspond with USPTO examiners throughout the patent procurement process.
- How to respond to USPTO Office Action challenging the distinctiveness of a trademark.
- How to interact with the USPTO regarding patent prosecution.
- How to amend claims during a prosecution to redefine the scope of patent protection.
- Drafting amendments and remarks in response to Office Actions from the USPTO.
- How to review patents drafted by foreign law firms for conformity with USPTO statutes, regulations, and best practices standards.
- How to direct the process of drafting opinion letters by outside counsels in anticipation of assertions of patent infringement by competitors.
- How to coordinate amongst in-house attorneys, local counsel, foreign counsel and support staff to ensure effective and economical case preparation.
- Can you do Freedom-to-Operate analyses and render opinions regarding patent infringement and validity as per US laws?
4. Brand development advice and services
Can you counsel clients on implementing brand development strategies specifically in regard to distinctive trade dress and trademark development? This is a service that is highly sought after. The sheer volume of this type of work is huge and ever growing.
- Brand creators and owners need extensive guidance regarding the availability and protection rights of various trademark phrases and designs.
- Negotiating domain name disputes and domain transfer deals.
- Identifying opportunities for and negotiating joint or cross brand promotion agreements.
- Putting together brand endorsement deals and securing image rights of celebrities for promotion of brands.
- Monitoring e-commerce websites for products and services that may abuse and infringe on a brands trademarks.
- Developing corporation-wide policies for electronic distribution of content in order to enhance global visibility and brand recognition.
- Handling prosecution, maintenance and enforcement of active trademark. applications and registrations worldwide for large brands that operate at a global scale.
5. IP related deal making and negotiations
Licensing and assignment deals are lucrative. Lawyers who are good at this work are operating at the top of the food chain. You should definitely aim to develop such skills and work in profiles that involve such work.
Here are some things you need to learn to do:
- Negotiating patent license or assignment agreements by contacting potential competitive patent holders identified during competitive patent analysis.
- Averting costly trade secret litigation by identifying employee misconduct and negotiating release of information.
- Identifying and negotiating successful franchise opportunities.
- Negotiating out-of-court settlements in litigations that result in long winded court proceedings or temporary stalemate.
6. IP due diligence
Can you conduct the due diligence of the IP portfolio of a target company during a merger or acquisition? Such services are required before an IPO of a tech, pharma or media company as well. You may have to create specific patent, trademark, copyright, trade secret, licensing, and confidentiality due diligence programs. For patent heavy companies, analysing IP portfolios and coming up with a detailed report can run into very large bills. IP due diligence during M&A and investment activities is definitely an exciting area of work for IP lawyers.
Even in-house patent lawyers should do internal due diligence with an aim to reduce expenses and identify litigation targets through review and pruning of existing patent portfolios.
7. Media and content licensing work
Media is the fastest growing industry across the world and it is also heavily IP driven. Content is king, but the lawyers provide the muscle in this battle. Good for us. Here are some skills you may want to learn:
- Drafting and negotiating domestic/international entertainment distribution deals for traditional media, VOD, and Internet.
- Sports event related licenses and sponsorship deals that have become key to mass advertising
- Enforcing your copyright across the world – as global content becomes popular at a local level. Can you enforce copyright in a sub-saharan country or a central asian kingdom? You may be called upon to do so.
8. Drafting patent applications, claims, and amendments
Drafting patent claims is a critical job – and getting it wrong can be very costly. Experienced inventors and executives will go with highly trusted plus tried and tested experts only. Hence, if you can build a reputation for drafting good patent applications, which includes drafting claims of invention as well as amendments, you are likely to be in great demand. You are also likely to draw top packages amongst IP lawyers. It is possible to do this work even if you are not a lawyer or a licensed patent attorney, as many experts do, as inventors can file for patents in their own name. Expertise from domain experts, engineers, and scientists are often sought.
Rarely you can find a patent attorney or a lawyer who is good at chemical, mechanical, biotech, software, and pharmaceutical patents all at the same time. Often, there are experts who specialize in one or two areas.
Apart from technical drafting skills, lawyers often add value by doing administrative tasks such as monitoring the progress of invention disclosure drafts to assure timely completion and subsequent evaluation for filing of patent applications.
9. Preparing and filing provisional patent applications and design applications
Provisional patent applications as well as design applications are not drafted by top patent lawyers, and juniors often get a first shot at drafting these. Hence, knowing how to draft provisional patent applications and design applications is an important skill for baby IP lawyers. If you can show during an internship or an interview that you already possess these skills, it will go a long way towards securing you a job.
10. Grey market monitoring and IP raids
IP infringements and grey market goods cause a massive loss to trademark and patent owners. Grey market sales of copyrighted content is also a serious concern.
In the USA alone, it is estimated that brands lose $63 billion from gramarket diversions.
Given the massive scale of grey markets on the internet as well as physical locations, it is a priority for many large companies to fight grey market infringement of IP. IP law firms make a pretty penny from IP monitoring services as well as conducting raids that keep such grey market activities in check, protecting the market of IP owners. You may have to obtain Anton Pillar or John Doe orders from local courts and cooperate with the local law enforcement to make these raids successful.
Do you want someone to teach you these skills?
If you are a young IP lawyer, or someone dreaming of a high-flying IP law career, learning these skills can be life changing.
However, it is very hard to learn these skills, and very few people ever get a chance to learn these things.
At LawSikho we have changed that. We have two courses that will be a gamechanger for you if you want to have a career in IP laws.
One course we have launched in collaboration with one of USA’s top 10 IP law schools, ranked 8th in fact, and you will get to learn from top US academicians and leading IP law experts from around the world. Check it out for yourself: https://lawsikho.com/course/certificate-course-in-intellectual-property-prosecution
This is the only batch of this course, and there are just 100 seats. I would say this is a once in a lifetime opportunity to get a certificate from a US law school of this stature. It is also highly subsidized – you will never find a course certified by a US law school at this price.
You must also check out another IP and Media Law course we offer, here: https://lawsikho.com/course/diploma-intellectual-property-media-entertainment-laws
You can learn most advanced IP law skills and start to turn your life around, immediately.
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