Intellectual Property

In a nutshell

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“There are multiple categories of IP lawyers,” Bill Streff of Kirkland & Ellis says. Patent attorneys form the largest group, while those working on trademark, copyright and – to some extent – trade secrets matters constitute a smaller percentage of BigLaw IP practitioners.

Patent infringement litigation is the most high-end, complex type of work and accounts for the bulk of firms’ IP load. Other attorneys may focus on the prosecution or application of patents, though in-house attorneys or patent prosecution boutiques will often handle this type of work. An evolving area in patents is 'interference' work, which concerns patent owners with potential alleged infringers or other parties claiming 'first invention'. Trademark attorneys handle the prosecution and clearance of new trademarks, as well as litigation in relation to trademark infringement and unfair competition. A subspecialty within trademarks is advertising and promotions. Copyright lawyers focus on the registration of copyrights with the US Copyright Office and the litigation of copyright disputes in federal court. No technical background is required. Applying for copyrights is considerably simpler than it is for trademarks and patents.

Another area that can be considered under the IP umbrella is trade secrets, whose lawyers work to protect clients’ most fundamental business secrets –the recipe for Coca-Cola, for example.

Pharmaceutical and medical device companies form a major client base for IP lawyers, as companies try to protect their patents on drugs, treatments and technical products.

What IP lawyers do

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Patent litigation  

  • Engage in written correspondence to see if the alleged infringement can be resolved through a license and royalty agreement or other amicable resolution.
  • If not resolved, then attorneys representing the patent owner file an infringement claim.
  • Defense lawyers respond with a counterclaim saying their client has not infringed or that the patent is invalid and not enforceable.
  • Engage in discovery. Attorneys must examine public records held in the US Patent & Trademark Office (USPTO) that document the correspondence between the patent holder and the USPTO, familiarize themselves with the product or products that are allegedly infringing, and determine what damages have been incurred by the patent holder. On average, discovery will take three years.
  • Choose experts and file their reports.
  • Engage in paper discovery. Prepare interrogatories, requests for admission, and document requests seeking more information about the other side’s positions.
  • Take depositions of the inventor(s), marketing executives, patent prosecutors, product managers and engineers.
  • Plaintiff attorneys file experts’ infringement and damages reports, and defense attorneys file an invalidity report. Both sides file responsive reports.
  • Engage in summary judgment motion phase.
  • Engage in a Markman hearing, during which the judge interprets the language of the claims, ruling on any disagreements between parties on their interpretation. Markman hearings can take place any time before the case goes to the jury, but usually occur before trial.
  • Hold a pretrial conference.
  • Go to trial, normally in front of a jury. This takes between four and ten days.
  • Receive final judgment. Handle post-trial motions. The losing side has a certain number of days to file for appeal.

Realities of the job

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  • You do not need to be a member of the patent Bar to appear in federal district court on a patent case, though you do need to be a member of a state Bar and have a member of the district court Bar move your admission pro hac vice.
  • In order to become a member of the patent Bar, you must pass an exam administered by the USPTO, which requires you to have completed a minimum number of technical or scientific courses in college or university.
  • Most patent attorneys have a technology background, either academic or work-related, and many have a Master’s degree or PhD.
  • The most important materials in discovery are the files held by the USPTO. Next in line is the product that is allegedly infringing, as well as any prior art that anticipates or renders obvious the claimed invention. (This is a term of art that covers prior patents, disclosures, articles, dissertations, lab notebooks and inventions by others before the alleged invention date by the patenter. Usually documents but can also be testimony.)
  • Patent owners can file claims in any district court they want; some districts are considered more patent-friendly and are therefore more popular than others. Among the popular jurisdictions are the Eastern District of Texas (EDTX); Austin, Texas; Delaware; the Eastern District of Virginia (EDVA); Madison, Wisconsin; Los Angeles and San Jose, California. The EDTX is easily the hottest of them all.
  • Some courts are known as 'rocket dockets' for the speed with which they conduct trials. Unsurprisingly, this makes them popular. The EDVA is considered the original rocket docket, with the EDTX a close second, though after a glut of cases the latter has slowed down. Madison also moves along at a reasonable clip.
  • An increasing number of infringement claims are being brought by what are colloquially known as 'patent trolls' (the preferred nomenclature is 'non-practicing entities'). These companies or individuals own or have licenses to patented inventions that they do not manufacture or use. Nonetheless, they aggressively and opportunistically allege infringement of these patents, which often affects multiple defendants. BigLaw firms tend not to represent them.
  • Experts are used in all jurisdictions and cases for infringement, invalidity, damages and sometimes patent law.
  • Every patent infringement appeal is filed with the US Court of Appeals for the Federal Circuit. If parties don’t like the result there, the only option is to file a petition for certiorari with the Supreme Court, which has taken more patent cases in the last decade.
  • Overseas companies and inventors view the USA as a prime venue for patent litigation.
  • Every patent case is different and completely dependent on discrete and specific facts. In order to be a successful patent litigator, you must master the details and understand all aspects of the law, which will enable you to make strategic decisions about what arguments to pursue.
  • Patent cases bring great risk to Fortune 500 companies, which can incur enormous damages dating back up to six years from the filing of the complaint. For startups and smaller companies, obtaining injunctive relief to stop infringement is a priority in litigation.
  • As a result of globalization, the current manufacturing and importation process has become enormously complicated and creates considerable challenges for patent owners seeking royalties or compensation at all levels of the manufacturing and distribution chain.

Current issues

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  • There’s a push from judges and litigants to streamline discovery to expedite cases and minimize costs. This move would ideally reduce the discovery period from three years to two.
  • The Northern District of Illinois has the potential to become a popular jurisdiction, since the judges there have “done a very good job of creating a finely tuned set of rules for patent cases,” according to Bill Streff of Kirkland & Ellis.
  • 2011 saw controversy over the US government's SOPA and PIPA acts, which ignited debate over questions relating to IP, censorship and corporate and government control over the internet. After widespread protests, and an infamous 'black out' on Wikipedia and other sites, the legislation was withdrawn. The topics, however, remain high on the political agenda.
  • IP litigation, which hasn’t been as affected by the recession as other areas, has increasingly been seen as a cash cow by firms eager to prop up flagging revenues. As such, more and more have been investing in the area throughout the economic downturn.
  • Clients frequently turn to big firms, instead of boutiques, to handle complex, high-stakes, multipatent litigation, while many of the boutiques have long-standing clients for whom they perform a great deal of prosecution and licensing work.

What top IP lawyers say

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Bill Streff, partner and co-leader of the IP group, Kirkland & Ellis

“I love the technology. It’s great to work with companies and their engineers to learn in-depth about their cutting-edge technology. The breadth of technology covered by patents that are litigated is amazing. Cases can involve satellites, tractors, microprocessors, DRAM, microcontrollers, or soda machines. It’s a blast to learn about what makes things work. It’s like your own personal Discovery Channel 'How Does It Work?' You never know what technology will be next."