The Myth About Practicing IP

I was recently visiting a relative in the hospital when the attending physician struck up a conversation with my family.  When he found out that I am an attorney, he asked about my area of practice.  I told him that I practice product liability defense and intellectual property litigation.  He then asked me the following question, a variation of which has been posed to me dozens of times over the past five years:  “What type of engineer are you?”

I am an English major, and I practice IP litigation.  Not only do I not have a science background, but I made a concerted effort to avoid science classes in college.  Law schools precipitate a myth that you can’t practice IP without a science background.  It’s a myth because it’s not true.  I’m proof.  (Disclaimer:  it is true that you can’t prosecute patents before the U.S. Patent and Trademark Office without a science background.  But patent prosecution is only one part of IP.)

I vividly remember the first time that I read a patent.  The claimed invention was a component of a bike pedal.  I’m familiar with bike pedals; I’ve even used them.  But reading the claims alone, divorced from the drawings, I would have had zero idea that the patent was describing a bike pedal.  I was dumbfounded.

The reason that you need attorneys like me to practice IP is because I am not the only one who is dumbfounded when presented with patent claims.  There is a very good chance that your jury is not made up of engineers.  There’s an equally good chance that your judge is not an engineer.  And yet, whether a defendant is infringing a patent and whether a patent is invalid as anticipated or obvious are questions of fact that go to trial.  Attorneys like me can explain to a fact finder how to answer those questions—in a language that the fact finder will understand.

While I’ve litigated patents, most of my IP practice consists of trademark, trade secret, copyright, and domain name litigation.  Most of my cases bear little or no relation to hard science.  I regularly appear before the Trademark Trial and Appeal Board, English major and all.  And I’m not the only one.

Law students, if you’re interested in IP, take IP classes, regardless of your major in college.  With small exception, you can and should practice whatever type of law you want.


This Post Has One Comment

  1. N. Denver

    Most attorneys I know who practice in IP found it invaluable to take IP courses in law school because it’s not the easiest field to jump into without a foundation.

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