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(Message started by: Phillip Raymond on Aug 8th, 2005, 3:05pm)

Title: HELP - how to get into IP
Post by Phillip Raymond on Aug 8th, 2005, 3:05pm
Ok - I apologize in advance for my ignorance to a lot of the subject matter I am going  to get into.  I am trying to get into IP law and am getting a lot of different pieces of advice. ANY and ALL helpful advice would be more than welcome.  Here is my situation:
I graduated from a tier 1 law school a few years ago with a JD/MBA (the MBA had a IT component) - I have since been a financial analyst in Europe and come back and passed the NY and NJ bars.  I have a background in Licensing, trademarks and copyrights (and even a bit in patents) because I clerked at an international hotel franchisee for a summer in law school and spent my last year in school at the ITC as a law clerk preparing memos for the OUII.  I am finding it next to impossible to restart my career into IP because I became was an analyst out of school.  I have a chance to get an LLM in either european IP or IT law next year in Stockholm and have been accepted for a summer program for scholars at the WIPO in Switzerland.  I am also in the midst of completing 30 units of biology to sit for the patent bar next year.  After all that I can qualify for the UK bar exam next year so that I could practice in the EU.  Is all of this or some of this completely pointless to get into the field?  

I would love to work with an international law firm consulting international clients on how to navigate all areas of the IP field on both continents.   Am I just doing all of this for naught - are my plans pointless or do they make me more marketable?  I know that many people say that taking  the patent bar utilizing otion B under the USPTO OED guidelines makes me totally unmarketable but I am trying ANYTHING to get into the field.

PLEASE - any advise about any parts of my plan would really be helpful.  I am a bit lost about it all.  Thanks.

Title: Re: HELP - how to get into IP
Post by Sudgee on Aug 9th, 2005, 9:51pm
Honestly your chances of doing patent law is lower that the average person graduating with a BS in any technical and science field and then getting a JD degree that concentrates in patent law.  From your posting it seems that you are more qualified at probably doing some aspect of corporate law as opposed to patent law.  From the advice of actual patent lawyers I have spoken to, law firms usually look for people whose education and experience chronologically sum up in a way that shows they are qualified to become a patent attorney.  From your comments, it looks as if while you went to law school your plans were to become something other than a patent attorney and now your trying to get into the patent field.  An MBA degree does not add to your qualifications as a patent attorney but since you may already have it you should use it to some advantage.  Your best bet right now would probably be to get into a general practice law firm that does some type of intellectual property from which you can get some experience.  Since you have long finished law school, taking backward steps to try and edge your way into the patent law field would hurt you more than help you.  Right now you should continue your field of practice and try and work along with someone who's a patent attorney so you can build your experience from there.

Good luck.

Title: Re: HELP - how to get into IP
Post by Phillip Raymond on Aug 10th, 2005, 11:09am
Right - I wouldn't want to get into patent law per se - more into the non-technical IP areas (copyright and trademark, etc.) - I was just wondering if passing the patent bar would help make me more marketable in those areas.

Title: Re: HELP - how to get into IP
Post by Eliz on Aug 10th, 2005, 12:28pm
I would think not.  The patent bar has pretty much nothing to do with copyrights or trademarks.  

Title: Re: HELP - how to get into IP
Post by freemode on Aug 11th, 2005, 9:59pm
since you've already have JD and bar qualification, why not try to join a firm like Baker & McKenzie to be an associate specialized in trademark and copyright?

In a general law firm, there is not so big a difference between trademark, copyright and patent in its IP practice, although generally it's better for you to have technical background to practice patent law. But, in a law firm, they need a laywer, not a technical specialist...

I think your major problem is that your past experiences are too diversified, while i think the value of a lawyer is built up on concentration in a special area...

Just personal opinion for your reference.

Title: Re: HELP - how to get into IP
Post by alleygator on Aug 14th, 2005, 2:31am

I'm a patent litigator, and here's my opinion:

- no reason not to be able to get into IP, so long as you understand that you shouldn't expect any credit for your years as a financial analyst; you don't have any actual legal experience, so you'll have to start as a first / second year associate

- similarly, you don't really have any IP experience per se... that summer internship isn't going to impress anyone in the field.  The most it shows is an interest in the field. Again, it's just a matter of understanding that you're inexperienced in the field, so you'll have to start as a first year.

- don't underestimate the value of your MBA and finance experience.  There has been a lot of finance-related patent work lately at some firms, due to business method patents, and there are no truly qualified patent attorneys to do the work (before, there was never a "finance to patent law" career path).  There aren't a lot of firms that do this sort of work, but some of them do.  

- skip grad school... useless

- the WIPO internship could be very good. It's a well-known institution, so it could be the brand-name you need on your c.v. to land interviews. Plus you get to spend the summer in Geneva (but isn't the summer close to over?)

Good luck!

Title: Re: HELP - how to get into IP
Post by Phillip Raymond on Aug 18th, 2005, 11:43am
Wow - very very helpful and thoughtful advice.  Do you think that sitting for the patent bar is essential to practice business methods patent litigation - and what firms have practices in this area?

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