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TheScientist101

Tips on "getting into" Intellectual Property law

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Any engineering degree will put you one up on someone who does not have a STEM background. 

That being said, almost all IP lawyers I know with an engineering degree have it in mechanical, electrical, software or chemical.

The true benefit to having that type of background is that you are not "afraid" of science and you come into the practice with the confidence that you can learn it. I would imagine that someone with a civil engineering background could be of value with mechanical engineering patents (but I'm not sure about how those two fields intersect - I would imagine a basic understanding of mechanics and materials are important to both).  

I don't think that a P. Eng is particularly valuable - I personally do not know any lawyer who also had their P. Eng. I can't offer any advice about keeping the professional designation - perhaps someone else on the forum with more experience in that area could chime in. 

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Thank you for your insight. Google searches for "LL.B. and P.Eng." and "J.D. and P.Eng." don't turn up many results and, as you have mentioned, most have a mechanical or electrical engineering background. I am trying to determine whether the P.Eng. designation would be an asset at all in my case.

I will keep doing my research and would love to hear from others on this forum.

 

 

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22 hours ago, WPI1234 said:

Thank you for your insight. Google searches for "LL.B. and P.Eng." and "J.D. and P.Eng." don't turn up many results and, as you have mentioned, most have a mechanical or electrical engineering background. I am trying to determine whether the P.Eng. designation would be an asset at all in my case.

I will keep doing my research and would love to hear from others on this forum.

 

 

I have received a PM from a member indicating that they know several older lawyers who have their P. Eng designation. So, apparently obtaining it, maintaining the designation and practicing in law can be a thing. 

However, I'm still unsure about whether having the P. Eng offers additional value or use to a firm or a lawyer over and above an engineering degree. It's certainly not a "requirement" the same way that having a PhD is generally a requirement for patent prosecution (I know that because I know many engineers who do not have a P. Eng but who do prosecution). In litigation, it is definitely not required (or, even marketed the same way that a PhD is). 

In terms of the usefulness of the designation when applying to firms, I'm not even sure that the P. Eng would give you a leg up on the competition. It could, but I'm honestly unsure. Again, if anyone with more experience wants to chime in, please do! 

 

Edited by TheScientist101
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3 hours ago, TheScientist101 said:


In terms of the usefulness of the designation when applying to firms, I'm not even sure that the P. Eng would give you a leg up on the competition. It could, but I'm honestly unsure. Again, if anyone with more experience wants to chime in, please do! 

 

No personal experience, but I feel that the work experience associated with having a P Eng would be more relevant than the designation. 

As for maintaining it, can't comment on liability, but would be surprised if anything you did as a lawyer would ever wander into an engineering opinion. Either way, your firm probably wouldn't pay your fees so you'd have to decide if maintaining it was worth it.

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Hi there!

I am starting 1L in the fall. I have an undergrad STEM background (also worked on some research projects in undergrad) and I am interested in pursuing IP law.

I will be attending Osgoode and would like to stay around Toronto (most of my family lives here) so I'm wondering if I should participate in the 1L IP Ottawa recruit? How would experience in Ottawa translate in Toronto (I'm under the impression that opportunities are pretty region specific, but I might be mistaken).

My second question is, for Toronto, are there 1L IP summer firm job opportunities? 

I also understand from OP that IP law in Canada is a small bar and it is difficult to break into. Is a lack of demonstrable interest (moots, RAs, courses as mentioned) or general competition (lots of law students interested in IP) a greater reason for this difficulty?

My final question is whether patent lawyers are also required to be patent agents to practice IP?

Will appreciate your input, many thanks!

 

 

 

 

 

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11 hours ago, misssnowflakes said:

I will be attending Osgoode and would like to stay around Toronto (most of my family lives here) so I'm wondering if I should participate in the 1L IP Ottawa recruit? How would experience in Ottawa translate in Toronto (I'm under the impression that opportunities are pretty region specific, but I might be mistaken).

There are 1L IP positions in both Toronto and Ottawa but, there tend to be many more spots in Ottawa. For example, full service firms in Ottawa participate specifically in the IP recruit and they hire between 2-4 1Ls. To my knowledge, full service firms in Toronto do not specifically hire 1L IP students (I could be wrong on that though, perhaps someone else on here could elucidate). The 1L IP hiring in Toronto tends to be from IP boutiques (such as Bereskin Parr, Smart & Biggar and Ridout & Maybee).

Given the small number of spots in Toronto for the 1L recruit, getting a position can be very difficult and if your goal is to crack into the field then it's advisable to capitalize your chances and also apply to Ottawa. The caveat being that the Ottawa recruit happens before the Toronto recruit. If you don't apply to Ottawa and put all of your "eggs" in the Toronto basket then you really could be up the creek (I know several colleagues who did that and regretted it in the end). 

All of that being said, remember, if you apply to Ottawa firms they want to hear how much you love Ottawa and that you are willing to build your career in the city. Once you get through your summers and your articles and even if you accept an associate position there, you can always canvass for opportunities in Toronto firms for a lateral. IP experience is IP experience - if you are getting it at a top tier boutique or a National/International full service, it's pretty easy to lateral. 

 

11 hours ago, misssnowflakes said:

I also understand from OP that IP law in Canada is a small bar and it is difficult to break into. Is a lack of demonstrable interest (moots, RAs, courses as mentioned) or general competition (lots of law students interested in IP) a greater reason for this difficulty?


It's difficult to break into because it is a small bar. It's also difficult to break into because many positions require the requisite background and not a lot of law students come from a hard science background (even fewer have grad degrees in those areas). I caution that grad degrees are not required, it's just more likely that you will get an interview if you have one. Finally, if you are a new call applying to IP spots and you don't have any IP experience from your summering/articles and you have no demonstrated knowledge in the relevant legislation - well, no one is going to look at you. Unfortunately, even when you get to the new call stage, you have to have some experience, so, if you strike out in the 1L IP recruit or landing a 2L or articling IP spot, it can be very difficult for you to get hired in an IP position after law school. 

 

11 hours ago, misssnowflakes said:

 

My final question is whether patent lawyers are also required to be patent agents to practice IP?

Only if you want to prosecute patents. Some places are old school and still make their litigators get it (as a "right" of passage), but most places won't make you do it anymore. 

 

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@TheScientist101 Great info! Thanks for your insight:)

 You have convinced me to give the 1L Ottawa IP recruit a shot!

If I may ask, could you shed some light on the recruit process in terms of rounds of interviews, what they're looking for in candidates etc.?

Many thanks!

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On 8/1/2019 at 7:21 PM, misssnowflakes said:

Hi there!

I am starting 1L in the fall. I have an undergrad STEM background (also worked on some research projects in undergrad) and I am interested in pursuing IP law.

I will be attending Osgoode and would like to stay around Toronto (most of my family lives here) so I'm wondering if I should participate in the 1L IP Ottawa recruit? How would experience in Ottawa translate in Toronto (I'm under the impression that opportunities are pretty region specific, but I might be mistaken).

My second question is, for Toronto, are there 1L IP summer firm job opportunities? 

I also understand from OP that IP law in Canada is a small bar and it is difficult to break into. Is a lack of demonstrable interest (moots, RAs, courses as mentioned) or general competition (lots of law students interested in IP) a greater reason for this difficulty?

My final question is whether patent lawyers are also required to be patent agents to practice IP?

Will appreciate your input, many thanks!

 

 

 

 

 

Hello!  I was in your shoes over a decade ago, so thought I would add my two cents, in case it is helpful.  I have a B.Sc. in Chem, studied law at UofT, spent my first few years of practice at a Bay Street firm, and am now practicing at a mid-sized regional firm in Western Canada.

I did not participate in the 1L recruiting in Ottawa, but can confirm what TheScientist101 said about 1L recruitment in Toronto.  At the time, if you wanted to article at an IP boutique in Toronto, you essentially had to secure a 1L position at the boutique, as they would typically do most of their hiring at 1L, and keep those students through to the end of articles.  And, in those days, it seemed to be a requirement that you needed an M.Sc. or Ph.D. in your technical discipline, in order to get into a boutique firm (except for, perhaps, those with engineering backgrounds, for whom a B.Eng. was often sufficient).  I tried to get hired at an IP boutique, and had a lot of great interviews at several of those firms in Toronto, but ultimately was not hired, and I think it was that I didn't have an advanced science degree that kept me out.  All of my peers who did secure those 1L jobs, had the advanced science degrees.

On the other hand, I ended up at a Bay Street firm with a significant IP practice, and in hindsight I think that was the better option.  In addition to experiencing many different types of IP work (from TM prosecution to assisting with M&A transactions having significant IP components, drafting licensing agreements, participating in patent, copyright and trademark litigation), I also had the opportunity to experience general corporate and litigation files, and access to CPD on a wide variety of topics.  In the end, although I practice IP law exclusively at this point in my career, I think that the broader experience, in my earlier years, has made me a more well-rounded lawyer.  This isn't to knock the experience at IP boutique firms, which offer a wide variety of exciting and engaging files to work on, but just offering some perspective on what it is like to gain experience at a general service firm.  Many of my friends who ended up at IP boutiques found that they were sometimes pigeonholed into a particular type of IP law once they became an associate (such as, only doing trademarks, or only prosecuting patents for mechanical inventions, for example), which is another factor to consider, if your interest is gaining experience in IP law more broadly.

If you end up considering opportunities at larger firms with an IP practice, I found the key was to really do your homework and find out what type of work is available in the firm's IP department.  Almost all of the large and medium, full service firms will claim to have a significant IP practice, but in some cases the "IP practice" amounts to a couple of IP lawyers who happen to do a lot of IP-heavy transactional work, and there is very little (or no) IP litigation or IP trademark/patent prosecution work.  So, if you are interested in experiencing the various types of IP, you need to do your due diligence to figure out which of the full service firms you are going to target.

Also, don't be discouraged if you don't land a 1L position.  There are few positions out there (such as in Toronto), and it is highly competitive.  I didn't land a 1L job, so I found a research assistant position at the law school over my 1L summer, and then secured a good 2L position.  

As far as interviews go, you should do everything you can to demonstrate your interest in IP law.  I understand that Osgoode offers many extracurricular activities relating to IP, so I suggest you get involved in as many of those activities as possible.  Take all the IP courses you can get your hands on (in the 2nd and 3rd years).  Do the IP moot (I can't recall what it is called, but there is one).  Write some papers, submit articles to the IP blog.  And, at least before 2L interviews begin (if you don't succeed in securing a 1L position), try networking with IP professionals and find yourself a mentor or two.  There used to be a group called the Toronto IP Group, which was a group of IP professionals based in Toronto, they would periodically hold networking events and I'm certain that students were able to get a membership and attend - these types of social events can be a great way to meet professionals in the field.  Another way to connect with a mentor is to check into whether Osgoode has an alumni mentorship program.  They had one at UofT, which paired law students with law alumni, and they would try to match you with your field of interest.  Through this program, I met an IP lawyer who offered me some great advice over the years, and continues to offer advice and insight to me today, over a decade after we first met.  If you connect with someone, be sure to follow up and invite them out for a coffee.  Ask them questions about their career and what it took them to get there.  If you schedule such a meeting, be prepared to ask focused questions and be considerate of their time.  It sounds like a lot of work, and it is, but you would be surprised about the valuable career information and advice that you can gain from this type of networking.  And if you are like me (kind of bookish and introverted), this won't come naturally to you... but it is a skill you can develop, and it is great to start building those relationships now.

Wishing you the best of luck!  Ah, to be a student again...

 

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On 2/18/2019 at 2:38 PM, TheScientist101 said:

I have many colleagues who articled in IP and do not have advanced degrees. An advanced degree (really a PhD) is only necessary in sciences if you aim to be a patent prosecutor.


Just note that, for the reasons discussed above (i.e. many firms like their articling students to be able to help out with prosecuting work) if you do have an advanced degree it is likely that you will get more interviews for summering and articling positions than those who do not have those types of degrees. 

Having a major research project is nice because it gives you something to discuss in your cover letter and during the interview. However, actually doing something in IP (that list is repeated several times above) before you apply would be more valuable.

All of that to say that having an advanced STEM degree is by no means necessary to being hired on for an IP spot.  It just looks better if you do. From my own experience, when considering 1-5 year calls in IP patent litigation, approximately 70% of them have either an engineering degree or an advanced STEM degree. In terms of copyright/trademark litigation likely 50% have advanced STEM degrees and If you're talking Patent prosecutors in the sciences - I don't think I have ever met one without a PhD. 

Sorry to jump in here, but just to confirm- it's basically impossible to become a patent prosecutor if you don't have a Phd? I'm a JD candidate but only have my undergrad degree in science, I should probably forget about prosecution and focus on litigation? Thank you so much for your help in advance! 

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18 hours ago, megatakep3 said:

Sorry to jump in here, but just to confirm- it's basically impossible to become a patent prosecutor if you don't have a Phd? I'm a JD candidate but only have my undergrad degree in science, I should probably forget about prosecution and focus on litigation? Thank you so much for your help in advance! 

It's not impossible, it's just less common. Again, largely a selection bias. I believe the requirements are upper level degree OR law degree. Employer preference may lean towards PhD but I doubt it's a hard and fast rule most places. 

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18 hours ago, megatakep3 said:

Sorry to jump in here, but just to confirm- it's basically impossible to become a patent prosecutor if you don't have a Phd? I'm a JD candidate but only have my undergrad degree in science, I should probably forget about prosecution and focus on litigation? Thank you so much for your help in advance! 

Yeah, like @TKNumber3 said - I am hesitant to say "never", however, in the hard sciences (biochem, organic, immunology etc.) I have not met a prosecutor who does not have a PhD. Engineering is another thing - I have met some who graduated with an engineering degree, worked in the industry for some time and then came to law/prosecution. To date, every job posting I've seen for a hard science prosecution position also requires a PhD. 

Still, it would technically be possible to be hired on as a prosecutor if you get hired on at a firm as an IP student and they throw you some prosecution work and you excel at it. Even if you have "only" a B.Sc it is very likely that you will be asked to help out with some prosecution work.

Also, I caution your statement "should probably forget about prosecution and focus on litigation" -- if you are at a firm as an IP student it is most likely that they will ask you to do it all. Don't turn down prosecution work just because you think you have a better shot at a litigation hire. As a student you are expected to do it all, and to do it all with enthusiasm. If you start turning down work it will look poorly on you over all. What you can do is poke your head into some of the litigation partner's offices and let them know you are interested in litigation and you'd be happy to help them with any work they might have for you.  

Edited by TheScientist101

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