|Career Development Office||Faculty|
Intellectual property is a diverse area of practice. Intellectual property law establishes legally enforceable property rights in various intangible things:
- Technology and inventions (patent and trade secret law)
- Works of expression such as books, music, and films (copyright law)
- Brand names and symbols (trademark law)
With some limited exceptions, intellectual property law is federal law. In the modern economy, there is considerable demand for attorneys who specialize in transactions and litigation concerning intellectual property, and most attorneys who advise business clients are likely to run into intellectual property issues in their practice from time to time.
Intellectual property lawyers are a subset of commercial lawyers, and the types of institutions in which they work are similar to those in which other civil litigators and transactional lawyers work (private law firms and in-house legal departments, in particular). In addition, there is a small but increasing number of nonprofit organizations engaged in advocacy and impact litigation relating to intellectual property, and there are a small number of government positions available within the United States Patent and Trademark Office, the United States Copyright Office, and on Congressional staffs.
Among law firms, there are many firms that specialize in intellectual property practice areas exclusively, and other firms that maintain a practice in one or more intellectual property fields as part of their general transactional and/or litigation practices. Some specialized practice areas include:
- Patent prosecution (the process of obtaining a patent from the United States Patent and Trademark Office)
- Patent, copyright, and/or trademark litigation in the federal courts
- International trade and customs enforcement proceedings (ITC)
- Advising businesses and individuals engaged in the development of intellectual property (including negotiating employment agreements, joint venture agreements, and the like)
- Intellectual property licensing
- Trademark registration and maintenance
Importantly, only one of these specialties—patent prosecution—requires any formal technical training beyond the JD and admission to a state bar (though some employers that do not exclusively focus on patent prosecution nevertheless require or strongly prefer such technical training).
Intellectual property practice can be further subdivided into various areas of specialty, typically organized around particular types of clients and their needs. Some examples are set forth below:
Patents are integral to companies ranging in size from small start-ups to global giants and with products areas as diverse as pharmaceuticals, computer software and hardware, biotechnology, agriculture, cosmetics, and solar energy (to name a few). Patent lawyers are retained for a variety of purposes, from counseling clients on patent infringement and licensing issues, to helping prepare and prosecute U.S. patent applications, to coordinating with foreign counsel to help clients obtain foreign patents, and more generally, to informing clients about the vagaries of U.S. and foreign patent law. Recently, the demand for lawyers with expertise in the area of patent law has surged, due in part to the 2011 America Invents Act, which substantially reformed the U.S. patent system. Patent lawyers specializing in patent litigation help companies enforce and defend their patent rights in a variety of jurisdictions, including federal district courts, the Federal Circuit, and the United States International Trade Commission. While a science background can be helpful for pursuing a career in patent law, it is not necessary for many areas of patent litigation and counseling.
Entertainment, Media & Arts Law
Lawyers who work in entertainment, media and/or arts law practices draw upon their expertise in copyright and trademark law, as well as in other legal areas, such as laws relating to publicity and privacy rights, defamation, and false advertising. They provide an ever-evolving range of services in the digital economy, and they are increasingly asked to advise on the international implications of contemplated business activities. Media lawyers typically start their careers at law firms of varying sizes. At this stage, lawyers try to seek out any work that might enable them to develop skills and client contacts in the desired fields. This foundation will greatly help them to move in-house (for example, at music, publishing, technology or telecommunications companies, or at licensing clearinghouses); to IP boutique firms; or to specialized departments in larger firms. These early years are also critical for building standard litigation or corporate law skills, which form the backbone of a media or arts law practice. On the litigation side, for example, lawyers draft and respond to cease and desist letters, engage in full-fledged litigation, and negotiate settlement agreements that relate to charges of copyright infringement in “old” and “new” media. On the transactional side, for example, lawyers negotiate and draft licensing, branding, development, and distribution agreements. In recent years, lawyers have been called upon to provide counsel on many sorts of new media issues, from drafting a company’s social media policies to reviewing websites before they are launched to the public.
General Business Practice
Many small- to medium-sized businesses face intellectual property issues as they grow and develop. From concerns over employees taking valuable proprietary information to a competitor, to protecting the value of a company’s investments in branding and marketing, to negotiating the pitfalls of e-commerce, to nurturing a company from start-up to sale of the business, nearly every business client will require legal advice from an attorney who understands intellectual property law. Such understanding is often important in drafting employment contracts, as well as agreements between a client and its customers or partners. The ability to register and maintain a trademark with the United States Patent and Trademark Office will be valued by many business clients. But perhaps most importantly, a familiarity with intellectual property issues will enable a general business lawyer to recognize when a client is confronting an intellectual property issue, and will be able to either develop sufficient expertise in that issue to advise and represent the client or will know to recommend that the client seek out the services of a specialist.
All are strongly recommended and should be taken early in the upper-level years.
Advanced coursework that will build your substantive knowledge in this pathway.
Coursework to hone your writing skills and develop a portfolio of practicing writing in your field.
Courses that will develop your oral advocacy, ADR, and other skills necessary for practice.
Externships place students in a wide variety of not-for-profit, government, public interest, and private organizations and firms, where they work directly under the supervision of a practicing attorney. The external placements are bolstered by an in-school seminar in which students analyze their practical experiences and gain skills necessary for the profession. Sample placements in this pathway include:
Students should seek out connections with practitioners and other students, both internally and externally. Adjunct professors can be an excellent resource both for guidance and for employment opportunities. The professional bar associations also welcome student participation and offer reduced membership rates for students. Some bar sections and committees look for students to provide research or other assistance on projects. St. John’s faculty are also an essential resource. Students should make an effort to get to know faculty who teach and have experience in their chosen areas. Finally, students should connect with other students who share similar interest through student organizations and attendance at Law School events.
- American Intellectual Property Law Association
- New York Intellectual Property Law Association
- Copyright Society of the USA
- Federal Bar Association, Intellectual Property Section
- International Trademark Association
- American Bar Association Section of Intellectual Property Law
- New York State Bar Association Intellectual Property Law Section
- National Association of Patent Practitioners
- NYC Bar Committees:
- Art Law Committee
- Communications & Media Law Committee
- Copyright & Literary Property Committee
- Entertainment Law Committee
- Fashion Law Committee
- Information Technology & Cyber Law Committee
- Patents Committee
- Sports Law Committee
- Trademarks & Unfair Competition Committee
- Women in the Profession Committee (Women in IP Subcommittee, which hosts a breakfast series with outstanding networking opportunities each Spring)
- Nassau County Bar Association Committees
- Intellectual Property Law Committee
- Sports, Entertainment, and Media Law Committee
Part-time students should spread out the suggested path below to account for their expected date of graduation.