Subject Overview

Intellectual Property Law Subject Overview


Intellectual property is the study of law relating to certain products of the mind, usually patented inventions, copyrighted expressions, the trademarks used to symbolize commercial goodwill, and secret information used for competitive advantage.

These and related areas tend to be called intellectual property not just because they are products of the mind. After all, it takes a lot of smarts to wisely invest in the stock market, determine where to drill for oil, or figure out how to get people to pay $7 for a cup of coffee. Rather, these areas are intellectual property because, unlike real or personal property, they do not depend on the creation, possession, or even existence of any physical thing in the real world.

The increasingly technological nature of our environment has made intellectual property a more significant factor in the business and legal worlds in recent years. Consequently, intellectual property has become a more attractive and lucrative practice area. South Texas College of Law Houston offers a number of courses to prepare students in this dynamic field.

Among the most frequently asked questions from students intrigued by intellectual property is whether they need a technical background to practice in this area. The answer depends upon what aspect of intellectual property the student hopes to practice. It is true that a significant number of IP professionals represent inventors as they apply for patents. To do so—that is, to prosecute the patent for that client—the U.S. Patent and Trademark Office (USPTO) requires that practitioners be admitted to the patent bar. With rare exception, one must have an engineering degree or its equivalent to sit for the patent bar exam.

To practice in any other area of intellectual property, there is no special bar exam, and no particular background or degree is required. Even in patent-centered areas such as patent litigation or certain technology transfers, no particular background is required.

The foundational courses for anyone hoping to make a career of intellectual property are Patent Law, Copyright Law, and Trademarks & Unfair Competition. Even if you do not have the technical background or have no wish to practice patent law of any kind, it is still strongly suggested that you take Patent Law.

Similarly, even if your engineering background suggests you will devote your practice career almost entirely to patent law, it is important that you be versed in copyright and trademark law. As a practice reality, you may often confront issues that touch on more than one area of intellectual property. As an employment reality, you may find that your client or employer expects you to offer an informed judgment even when the matter does not concern your primary area of focus. That is why the pathway for the IP specialist includes all three of the basic courses.

Additionally, the accompanying pathway recommends Administrative Law because many intellectual property attorneys regularly interface with administrative agencies such as the USPTO—at the very least, the work of IP attorneys can be impacted by agency rules and decisions.

The accompanying pathway also recommends Corporations and Agency & Partnership because it is almost always through the vehicle of a business entity that strategy and decision making regarding IP matters takes place. For this reason, students interested in intellectual property would benefit from reviewing the Business & Corporate Law Subject Overview.

Sometimes intellectual property courses are devoted not to a particular statutory regime, but to a practice area where these concepts are brought into play. Thus, there are courses in IP litigation, IP licensing, computer law, entertainment law, sports law, or international business, where IP law plays a significant role.

Such specialized courses may be especially helpful if you are aiming for a particular kind of IP career. Often these more specialized courses will have a core IP course or the IP survey course (not designed for the would-be IP professional) as a prerequisite, but not always. You should carefully read the course descriptions as you are making your curricular plans.

Patent Law Career Descriptions

A patent is the legal right provided by a government to control the use of an invention. If you decide to become a patent lawyer, you may be involved in a variety of different areas of patent-law work. Some patent practitioners choose to specialize in only one of these areas, whereas other patent practitioners may be involved in more than one of these areas. These areas include patent prosecution, patent litigation, opinion work, and transactional work. Each of these areas is described below.

Patent Prosecution

The process by which inventors obtain patents is called patent prosecution. If you work in patent prosecution, your job will involve interacting with your client and the USPTO to procure patents for your client. You will begin by working with an inventor to understand the ins and outs of his or her invention. You will then prepare a patent application, which is a highly detailed document that thoroughly describes and claims the invention. You will file this application with the patent office, and you will then interact with a patent examiner by responding to the examiner’s office actions.

You will have great use for your persuasive writing skills as you respond to these office actions with arguments as to why the claimed invention deserves patent protection. Eventually, if all goes well, the examiner will issue a notice of allowance, which means that you have successfully obtained a patent for your client.

Some patent prosecutors practice in-house and prosecute patents exclusively for their employer corporations. Other patent prosecutors work as outside counsel for law firms and are hired by a variety of corporations or individuals to obtain patent rights for them.

As noted above, to work in patent prosecution and practice before the USPTO, you must first pass an exam commonly known as the patent bar exam. To qualify to take this exam, you must meet the patent office’s requirements by having a particular technical background. Practice before the patent office is the only area of patent law in which a technical background is absolutely essential.

Patent Litigation

After the patent office issues a patent, the patent gives its owner the right to exclude others from making, using, selling, offering to sell, or importing the claimed invention. If someone else does any of these things without the patent owner’s consent, then the patent owner may sue that person for patent infringement.

If you work in patent litigation, you will represent patent owners and accused infringers in patent-infringement lawsuits. Just like in other types of litigation, you will be involved in activities such as the drafting of pleadings; the discovery process, which includes taking depositions; trial preparation; settlement negotiations; and, if your case does not settle first, preparing and then examining witnesses at trial. Good writing skills are critical because you will have to draft, among other documents, motions for summary judgment, motions to compel, motions in limine, and trial briefs.

Although patent litigation is similar in many ways to other types of litigation, patent litigation can be particularly complex. You must not only know and understand patent law—which itself can be complicated—but you must also become knowledgeable about the area of technology that is the subject of the lawsuit. These complexities make patent litigation an exciting and rewarding career for many.

Most patent litigators work as outside counsel for law firms and represent a variety of clients in patent-infringement lawsuits. Some corporations employ patent litigation specialists whose jobs involve overseeing and managing outside counsel involved in patent litigation. The attached pathway recommends, at minimum, Federal Courts and Civil Pretrial Advocacy for students who wish to pursue a career in litigation.

Opinion Work

For a variety of reasons, clients may seek what is known as an opinion letter relating to patents. For example, a client may want an opinion as to whether the product he or she wishes to manufacture will infringe a particular patent, as well as whether that patent is invalid because it fails to meet the requirements of patentability. Such an opinion letter may help the client avoid a charge of willful infringement and enhanced damages if the client ultimately gets sued for patent infringement.

If you do opinion work, you will have to study the claimed invention and become well versed in the technology involved. You will then have to study the potentially infringing product and apply principles of patent law to determine whether the product infringes the patent in question.

To determine whether the patent is likely invalid, you will also have to study what is called prior art—evidence that someone else created the invention or an obvious variation of it before the inventor named on the patent did—and then apply legal principles to conclude whether the patent office should have ever allowed the patent to issue in the first place.

You will then need to use your writing skills and draft a letter that describes in detail why your opinion is correct—complete with citation to the facts and legal authority that supports your position. These letters are a derivation of the client letters drafted in Legal Research & Writing II.

Transactional Work

Another area of patent law involves transactional work. If you do transactional work, you will work on negotiating deals involving patent licenses. A patent license allows a patent owner to grant someone else the right to practice his or her claimed invention. Often, such a license is limited in terms of the scope of what can be done or the geographical area in which it can be done.

You will work with your client to determine what licensing terms will be acceptable to him or her. Then, you will negotiate these terms with counsel who represents the other party. Your writing skills will come into play, as well, when you draft the terms of the license. Attorneys involved in transactional work include both in-house counsel and outside counsel. Students interested in transactional work should consider taking Contract Building Blocks or Contract Negotiations & Drafting.

Copyright, Trademark, and Other Nonpatent-Related IP Practice Areas

Intellectual property practice outside of patent law does not typically involve a complicated or prolonged application process. Though registration of copyright interests or trademarks is often advisable, it is not (unlike with patent) actually necessary to secure rights. Indeed, for trade secrets there is not, nor could there be, a registration process at all, even an optional one. For this reason, the IP practitioner outside of patent law does not mainly focus on seeking or securing IP rights.

There is a broad spectrum of IP areas outside of patent law. The different areas of focus you choose might affect the choices you make in your law school course selection, the clerking or internship opportunities you might seek, or the professional contacts you might cultivate.

The differences between copyright and trademark are discussed below, along with the types of work attorneys practicing in these fields might be involved in. Following this discussion is an overview of the courses that might benefit students interested in litigation versus transactional work and an overview of the most common venues where you might practice as an IP attorney.

Copyright and Trademark

A copyright is created when there is an original work of authorship fixed in some medium of expression. It can include works of art, music, literature, and even computer programs.

Attorneys working in the field of copyright often represent authors, music labels, performers, or other artists. Their responsibility is to protect their clients’ copyrights. This can involve the filing of copyright registration documents, as well as initiating litigation designed to protect their clients’ interests against potential infringers. Concurrently or separately, attorneys may be required to defend their clients against someone claiming copyright infringement.

In addition to defending against copyright infringement claims, attorneys may also be responsible for counseling businesses (or others) on how to avoid copyright infringement in the first place. In this respect, practice in the field of copyright can be a full-time focus or a subset of more numerous practice areas that emerge in an attorney’s representation of a client’s general business interests.

A trademark refers to something, such as a jingle, word, or symbol, which identifies the goods of a person or company, and distinguishes those goods from others. Examples include the label brand or logo of almost any product, such as the McDonald’s golden arches and the NBC chimes.

The main purposes of trademark protection are to protect the interests of trademark holders and to protect consumers from confusion. In this respect, trademark infringement is often seen as a form of unfair competition, which may include false advertising, interference with business relationships, and the misappropriation of trade secrets.

Attorneys working in the field of trademarks may have one or several responsibilities, including the prosecution of trademark applications before the USPTO. Consequently, unlike attorneys practicing copyright exclusively, attorneys involved with trademarks must be familiar with the practice procedures applicable to the USPTO.

Attorneys may also be responsible for initiating litigation against infringing parties. As with copyright, trademark attorneys may be responsible for counseling their clients on ways to avoid possible trademark infringement and ultimately defending their clients’ interests if someone claims infringement. Outside of litigation, attorneys may draft agreements related to the licensing and assignment of trademarks.

Litigation vs. Transactional Practice

Many IP practitioners do both IP litigation as well as transactional work. It is common that attorneys will start out doing licensing or other transactional work in a certain area, such as computer technology, and take on a litigation role only later in their careers.

Experienced litigators do sometimes add IP as a specialty later in their careers, even though they did not cultivate that subject-matter in law school or while they initially built a reputation as a skilled litigator. Still, it is probably more typical for IP litigators to begin their careers in IP generally rather than focusing on litigation from the start.

An IP litigator must have all the skills of any good courthouse lawyer. If IP litigation is the career option you see for yourself, you should consider advocacy training, pretrial litigation classes, and course work in IP. At the very least, Civil Pretrial Advocacy is recommended for the would-be litigator. For additional information, please consult the Civil Litigation & ADR Subject Overview.

If, on the other hand, you do not envision nor desire a career in litigation, you may want to focus more on transactional skills courses, as well as IP-related specialty subjects such as licensing, internet, or sports law. As noted above in the context of patent careers, the accompanying pathway recommends that, at minimum, students interested in transactional work take Contract Building Blocks or Contract Negotiations & Drafting. You should also consult the Business & Corporate Law Subject Overview for additional information.   

Law Firm vs. In-House Counsel

This is not a pressing decision that most students need to make when formulating their curricular design. The same IP course work that would prepare you for one work environment would put you in good stead for the other.

Many companies do not hire in-house counsel right out of law school, preferring to have someone already experienced in firm practice. But some companies are willing to provide the novice lawyer with training at the company, and you may have the chance to clerk or intern (or to be an initial hire) with a company having a strong IP interest.

Most IP attorneys practice at a firm. This is certainly true for the IP attorney whose practice is not centered on patent law. Much of the IP work, especially in large urban areas, is done in sizable law firms that specialize either exclusively or largely in IP work of various kinds. Alternatively, there are many large firms with several subject matter focuses that have a department dedicated to IP work.

Although most IP work takes place in large firms or specialized departments, there are exceptions. Some so-called boutique firms may not be especially large but focus on IP or even a certain kind of IP work. The particular focus of firms that specialize in one kind of IP work is often based on the business interests of the community that the firm serves. For example, while Houston is a much larger city than Austin, boutique firms that focus on copyright work in the music industry are more likely to be located in Austin.

If your career plans will take you to a specific geographic area, this may in large part determine the kind of IP employment opportunities, patent or otherwise, that you are likely to find.