IP lawyers practice in law firms (including large and medium-sized law firms, smaller boutique IP firms, and solo practices), in-house practices of corporate law departments, the legal departments of large research universities, government agencies such as the U.S. Patent & Trademark Office, and, in some instances, nonprofits that specialize in issues related to intellectual property. In a typical day, IP attorneys may represent clients in federal and state court or before the U.S. Patent and Trademark Office and International Trade Commission. They may draft licensing and purchase agreements. They may write briefs, take depositions, interview witnesses or appear in court. They may advise clients on strategies to grow the value of their IP portfolios.
IP attorneys typically specialize in one or two areas of intellectual property, although some attorneys take on a broader range of IP cases. The three primary areas of practice are: (1) patents (utility), (2) copyright, and (3) trademarks. Design patents and trade secrets are also important areas of IP practice.
Patent attorneys concentrate on protecting inventions. Many patent attorneys have undergraduate and often advanced degrees in the sciences, computer science, or engineering. In order to practice before the U.S. Patent Office (USPTO) and prosecute utility patent applications, individuals must have an undergraduate degree with a major in one of the sciences (Category A) designated by the USPTO or in another subject (Category B) with sufficient hours of study in the sciences. For more information, visit http://www.uspto.gov/ip/boards/oed/exam/OED_GRB.pdf.
However, a science degree is not required for attorneys who want to litigate patent cases in court. While a science or technical background is often helpful, a number of patent litigators have no formal science degree. Patent attorneys represent clients from various industries, ranging from biotechnology and bioscience, pharmaceuticals and nanotechnology to software development, medical devices, automotive and electronics.
Copyright attorneys deal with cases involving the protection of works of expression, including films, books, music and computer programs. Copyright attorneys represent clients in publishing, fine arts, music, television, film and entertainment, as well as tech companies and Internet service providers that must handle notices of infringement from copyright holders under the Digital Millennium Copyright Act. No science background is required.
Trademark attorneys protect the marks of a company's identity, including its name, visual identity, and associated phrases and slogans. Trademark practice typically involves filing for registrations of trademarks in the U.S. Trademark Office and other countries, policing unauthorized third-party uses of a client's trademarks that might be infringing, and litigating trademark infringement claims in court. No science background is required.
Two other areas of IP practice are also important. Design patents involve protection of designs of items, especially commercial products. Attorneys file for design patents with the Patent Office. Attorneys who file for design patents must also pass the patent bar and fulfill the requisite science background discussed above for utility patents. Trade secrets involve protection under state law for secret formulas, recipes, processes, and other know-how. Trade secrets often relate to inventions, the same subject matter as the patent system.