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TheScientist101

Tips on "getting into" Intellectual Property law

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Over the past year I have been fielding a lot of questions about practicing Intellectual Property (IP) law so I thought I would start a post to provide advice and to answer questions generally.

As an overview, IP generally encompasses patents, copyrights, trademarks, industrial designs and plant breeders’ rights (PBR). Practices focused in the realm of patents and trademarks are broadly divided between prosecutors and litigators. Prosecutors are responsible for drafting patent and trademark applications and they go back and forth with the examiners at the Canadian Intellectual Property Office (CIPO). Litigators come in at the other end. After a patent or trademark issues and they go to court to argue issues of validity and infringement (and in the case of trademark law – passing off or goodwill). You can be both a prosecutor and a litigator, but generally speaking most practices have a focus.

Now, if you’re interested in IP there are many steps you can take while in law school to set yourself up for practicing in that area. Many people say that you have to have a STEM background to get into the field, but that’s not exactly true. A STEM background is almost always essential for getting into patent prosecution. Additionally, although a STEM background is valuable (but not essential) to patent litigation, it will be difficult (but not impossible) to get hired into one of these positions without it (more on that below).  For Trademarks and copyright a STEM background is not required, and I have many colleagues who practice in these areas who went to school for history, arts, design etc. That being said, it is still difficult to get that starting position without a STEM background, so you’ll have to find a niche spot at a firm where they are not looking for you to also practice in patents.

The IP bar in Canada (and really throughout the world) is very small. As an example, I would guess there are probably less than 700 IP litigators throughout Canada. As a function of the small size of the bar, it can be difficult to “break” into it. Therefore, if you want to practice IP in Canada, it is absolutely essential that you at least article at an IP firm, or within an IP department of a full-service firm. The best way to accomplish this is to land a 1L or 2L summer spot at one of these types of firms. I know that it sounds ridiculous, but I cannot over-emphasize enough the importance of landing one of these spots. At my firm we get many inquiries from called lawyers who try to spin themselves as being interested in IP, yet because they have no experience in the field we don’t even look at them.

The only exception to the rule above is if you have clerkship experience at the FC, FCA or SCC combined with a demonstrated interest in IP (i.e. courses and activities in law school).

As an addendum to landing a spot as an 1L the best place to do this is the Ottawa IP recruit where multiple firms hire between 1-5 1Ls. The recruit happens in early fall and applications are generally due before Thanksgiving. If you are going to law school with a genuine interest in IP then go in ready to apply to this. Set up a meeting with CDO immediately, have them help you with your application materials and send in the applications as early as you can (I know from experience, through the recruiters eyes the earlier the better). 

So, how do you get a summer spot at one of these kinds of firms? Well, having a STEM background helps, a lot. The thing is that even if you only want to practice in trademark law, when you are hired as a summer student it is expected that you will do work in all of the IP areas that the firm practices. If the firm practices in patent matters (which generally all firms do) then you would likely be required to have that STEM knowledge. The higher the degree the more interview opportunities you will likely acquire.

In addition to educational background show interest in IP. Do an IP moot, volunteer at an IP clinic, or RA with an IP prof. Take IP courses. If you can do all of those, all the better.

If you do not have a STEM background then your best bet would be to get an articling gig at a full service firm that also has an IP department. For example, at some firms all of the articling students rotate through each department so even if you were hired in general litigation you can still get some IP experience and apply back to the IP department for associateship. You can also endeavor to practice in an area that closely aligns with IP so that you can eventually transition into that area. For example, a lot of IP disputes include commercial litigation – if you start out in commercial litigation at a firm with an IP department then you may be able to eventually transition into IP.

I think that’s probably the best advice I have for now – but I’m happy to answer questions.

Edited by TheScientist101
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8 hours ago, Deadpool said:
...Thoughts on this?

It can be difficult to be a patent lawyer in Canada (as I've discussed above, the bar is small and breaking into it can be a challenge).

However, it sounds like this poster would be more interested in being a patent agent (not a patent lawyer). Patent agents prosecute patents, and they do not need to have a JD qualification to do it. Often patent agents have higher level post-secondary education (usually a PhD or a P.Eng) or a background in science and significant experience (For example, an electrical engineer that spent 10 years at a tech company). 

In order to be a patent agent without a JD you would apply to the firm to be a patent agent trainee and then work with assisting in patent drafting while preparing to write your patent agency exams. The patent agent exams are notoriously difficult. They consist of 4 papers - if you pass 1, you don't have to write it again, but passing all 4 is very, very difficult (I believe it's about a 3% pass rate). Patent agent trainees are usually in that position for 2-4 years (namely because there is only one sitting for the exams per year and it usually takes a minimum of 2 years to pass), if you've gone 4 years and haven't passed the exams yet the firm may cut you. 

Once one becomes a full patent agent they can start their own patent prosecution practice. I know many very successful patent agents who are not lawyers (some of whom are equity partners at large national and international firms). 

The caveat of course is that if one takes this route they do not become a lawyer, they cannot litigate and the bounds of the legal advice they can offer is quite restricted. It's a good option if a scientist or an engineer is looking for career options where their educational background is valuable but they have no interest in practicing law. 

As for European patent attorney requirements - I'm not very familiar on that front - but on the surface it seems as though the role described in the post is that of a patent agent and not a patent "attorney". I would imagine that in order to litigate a patent in Europe one would need a law degree. 

Edited by TheScientist101

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15 minutes ago, TheScientist101 said:

...

However, it sounds like this poster would be more interested in being a patent agent (not a patent lawyer). Patent agents prosecute patents, and they do not need to have a JD qualification to do it. Often patent agents have higher level post-secondary education (usually a PhD or a P.Eng) or a background in science and significant experience (For example, an electrical engineer that spent 10 years at a tech company). 

In order to be a patent agent without a JD you would apply to the firm to be a patent agent trainee and then work with assisting in patent drafting while preparing to write your patent agency exams. The patent agent exams are notoriously difficult. They consist of 4 papers - if you pass 1, you don't have to write it again, but passing all 4 is very, very difficult (I believe it's about a 3% pass rate). Patent agent trainees are usually in that position for 2-4 years (namely because there is only one sitting for the exams per year and it usually takes a minimum of 2 years to pass), if you've gone 4 years and haven't passed the exams yet the firm may cut you. 

...

[portion only quoted]

You've given good advice and are currently in the field, unlike me, so if we disagree at some point, people should know whose opinion to prefer... :rolleyes:

I was motivated to post because of @Deadpool not their fault but the poster they quoted, if someone in Canada who wants to work in Canada in the field of patents asks about becoming a patent attorney, my immediate reaction is they haven't done even a modicum of research to know that here they're patent agents. It's like if someone says they want to go to law school and become an attorney here in Ontario (albeit not quite as bad).

I am actually a patent attorney, but that's because I'm a US citizen and with an engineering degree had the requisite requirements to write the US patent agent exam (and there, if you are admitted as an attorney in a US jurisdiction, as I am in NY, you're admitted by the USPTO as a patent attorney rather than a patent agent). So I just took a day trip, didn't bother staying over, didn't take a course, just read some books and the MPEP. It was so much easier than the Canadian exams it was like a joke. Multiple choice exam on computer at a Prometric centre, which has the entire MPEP available as a searchable PDF (hmm, let me search for this phrase the question uses, if I'm not 100% sure of the answer...) and you get an informal score report immediately.

Because at the time I was curious, my slight research (not to be relied upon, due also to passage of time!) was that US employers looking for patent agents were very, very picky. For instance, they wanted a patent agent biology Ph.D. whose research had focused on X, not just a biology Ph.D.

I only tried the Canadian patent agent exam years after leaving an IP firm (i.e., I had the requisite experience with patent drafting over two years or whatever to write, though my focus had been litigation, just not recent experience), more to see, hey, can I (and the 2-day course in Gatineau from IPIC was at the casino hotel :uriel: ) after a couple of tries while I had one or two marks over 60 I could retain for future writing and hit 50s in others, it was difficult enough that I thought the time and money involved made it not worth it (whether or not, as my ego suggests, I would have ultimately qualified is beside the point, the costs of doing so for what was for me a marginal return made it not worth it - and meeting people who'd been senior associates when I articled, people who owned their own firms employing lawyers and patent agents, till trying to pass, made me think, if I don't need this, why keep trying?). So kudos to those who qualify, but I think the exams are far more difficult than they should be (I mean, not just because I didn't pass, but for other reasons including the stats you cite!).

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25 minutes ago, epeeist said:

I only tried the Canadian patent agent exam years after leaving an IP firm (i.e., I had the requisite experience with patent drafting over two years or whatever to write, though my focus had been litigation, just not recent experience), more to see, hey, can I (and the 2-day course in Gatineau from IPIC was at the casino hotel :uriel: ) after a couple of tries while I had one or two marks over 60 I could retain for future writing and hit 50s in others, it was difficult enough that I thought the time and money involved made it not worth it (whether or not, as my ego suggests, I would have ultimately qualified is beside the point, the costs of doing so for what was for me a marginal return made it not worth it - and meeting people who'd been senior associates when I articled, people who owned their own firms employing lawyers and patent agents, till trying to pass, made me think, if I don't need this, why keep trying?). So kudos to those who qualify, but I think the exams are far more difficult than they should be (I mean, not just because I didn't pass, but for other reasons including the stats you cite!).

This is important. If you don't plan on prosecuting patents I would suggest the time, money and effort required to pass the exams is not worth it.

I've heard a lot of discussion in the past about the difficulty of the exams. The main justification is that it "self-limits" the field. I guess if you pass it's pretty good job security (because those in the "club" are few), but I hear you - they are very, very difficult.

Also another point about firms being picky regarding their agents - in Canada this is also true if you do not have a JD. I know one firm I was at put out a posting for a Patent Agent Trainee where a PhD in the field (a broad field, think "chemistry") was required - they received almost 200 applications, many of which were from non-lawyers. 

The volume of applications allows the firm to be picky. The reason I say it's easier if you "have a JD" is because, if one has the requisite background (i.e. a PhD or an engineering degree) then you can get into prosecution through summering at the firm. Also, in the situation where you are purely applying for a patent agent trainee from outside the firm, in my experience the hiring committees tend to favor applicants with JDs (because there is more you can do at the firm than prosecute patents). 

Edited by TheScientist101

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I currently practice in the field - and everything TheScientist101 said is correct (all of it, every sentence)

I would just note to what has been said above:

1) In Europe, the equivalent of a patent agent is called a patent attorney. I have no idea why.

2) Realistically, if you want to work as a patent agent job without a JD - it's becoming very difficult, especially at the bigger firms. Some people, back in the day, broke-in and are now partners. Now a days, I'd say most major firms will ask (or at least highly if not extremely strongly prefer) the JD, barring an exceptional candidate. I know that at many firms, 90% of associates doing drafting/prosecution are JDs. But this has just been my observation (obv, exceptions apply).

 

 

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Thanks a lot for the information. It gives me a good idea on the the IP job market. I have Master’s in Electrical engineering and an 8 year experience in large multi-national semi-conductor company. I hope to eventually practice IP law. I have a specific question: What affect will UBC law school have on my chances of getting into IP? Does IP job market have disproportionately high concentration of graduates from a particular law school or do all the law graduates have an equal opportunity? 

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1 hour ago, nnnnnnn said:

 What affect will UBC law school have on my chances of getting into IP? Does IP job market have disproportionately high concentration of graduates from a particular law school or do all the law graduates have an equal opportunity? 

UBC has a great IP program - they have done very well at the Oxford IP moot the past couple of years and many of their graduates are practicing IP on Bay street. 

Other schools that come to mind are Osgoode, Western, UofT, Windsor (and of course the best of all) - Ottawa U (I say that as a very proud alumnus). 

Oh, I can't forget UNB (often over-looked) but Prof. Norman Siebrasse is there and he is basically an IP God (who is regularly cited by the SCC). 

The trick isn't always going to an "IP" school per se but instead its important to employers that their candidates have a demonstrated interest in IP. This is easier to do at schools that offer a variety of IP courses, have IP clinics, participate in IP moots and have IP RA positions (the schools named above all have these kinds of opportunities). 

Edited by TheScientist101

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4 minutes ago, TheScientist101 said:

UBC has a great IP program - they have done very well at the Oxford IP moot the past couple of years and many of their graduates are practicing IP on Bay street. 

Other schools that come to mind are Osgoode, Western, UofT, Windsor (and of course the best of all) - Ottawa U (I say that as a very proud alumnus). 

Oh, I can't forget UNB (often over-looked) but Prof. Norman Siebrasse is there and he is basically an IP God (who is often cited by the SCC). 

The trick isn't always going to an "IP" school per se but instead its important to employers that their candidates have a demonstrated interest in IP. This is easier to do at schools that offer a variety of IP courses, have IP clinics, participate in IP moots and have IP RA positions (the schools named above all have these kinds of opportunities). 

Thanks for the response. It is good to hear that UBC graduates are successfully pursuing IP law careers.

 

I understand that most Canadian school are regionally locked, is that not the case with IP law? 

 

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I don’t see any IP-law specific programs at UBC.

 

I believe business law clinic at UBC  encompasses IP law. I see one professor , Graham Reynolds, specializing in IP law. I am not sure of the RA opportunities available though, I have to check.

 

I heard that IP firms generally look for a PhD graduates. Will employers looks at my  experience for 8 years as comparable to a PhD degree? 

Thanks

 

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18 minutes ago, nnnnnnn said:

Thanks for the response. It is good to hear that UBC graduates are successfully pursuing IP law careers.

 

I understand that most Canadian school are regionally locked, is that not the case with IP law? 

 

Best practice is to go to school where you want to practice (that's not just for IP that's for every area). However, most large IP markets (Vancouver, Calgary, Ottawa and Toronto), recruit Nation wide. 

My only real experience is in Ottawa and Toronto. Firms in Ottawa really care that you want to stay there. Usually an indicator of this is if you go to school in Ottawa. As a result about 50% of IP students in Ottawa also go to Ottawa U. For the remainder (i.e. students who are attending schools outside of the region), many of them will boast of a "connection" to the city (their partners, their families, they did their undergrad there etc.). For the ones who don't have a connection, firms really just want to hear them say "I love the city, I want to start my life here".  

In Toronto - the firms don't care. It's expected that you want to be here because it's Toronto. They recruit far and wide and if you're the best candidate they will hire you full stop. 

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5 minutes ago, nnnnnnn said:

I don’t see any IP-law specific programs at UBC.

 

I believe business law clinic at UBC  encompasses IP law. I see one professor , Graham Reynolds, specializing in IP law. I am not sure of the RA opportunities available though, I have to check.

 

I heard that IP firms generally look for a PhD graduates. Will employers looks at my  experience for 8 years as comparable to a PhD degree? 

Thanks

 

The higher your degree the more attractive you are to firms (see my original post about why this is). Generally speaking the "higher degree" factor is really only helpful in getting you in the door (i.e. your first interview), after that it's almost a non-factor (unless the firm is specifically looking for a patent prosecutor in a specific scientific area). 

For engineering I've almost never seen a striation between B. Eng, P. Eng or PhD in engineering. If they want an engineer the B. Eng is sufficient. 

Graham Reynolds is awesome btw - he would be great to learn from and if you go to UBC try to connect with him and see if he needs an RA. 

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Thanks a lot. This is great information as should be very helpful :) I will definitely contact him Prof. Graham Reynolds when I start law school. 

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