Re: An IP gripe

On 8/19/99, Rod Dixon <rod[_at_]cyberspaces.org> wrote:
>
> On Wed, 18 Aug 1999, Carl Oppedahl <carl[_at_]oppedahl.com> wrote:
> >
> > I have followed this thread for a while, hoping I would not have to
> > be the one to say "look to see where the money is". Thank you, Mark,
> > you saved me from having to do it.
> >
> > Look in the help wanted advertisements placed by law firms. They
> > *never* say "copyright lawyer needed". They *always* say "electrical
> > engineer needed, admitted to practice before the USPTO". Or instead
> > of "electrical engineer" it says chemical or mechanical engineer or
> > biotech PhD.
> >
> > Or listen to the telephone calls from headhunters. They are invariably
> > offering jobs requiring a technical degree and admission before the
> > USPTO, and almost never offer trademark or copyright jobs.
> >
> > For one point of view on this subject, see "What are the job prospects,
> > in the non-patent areas of IP law, for lawyers who do not have technical
> > backgrounds?" at <http://www.patents.com/opportun.sht#nt>.
>
> May I politely urge you to update the web page you created, if you are
> going to refer others to it?
>
> I realize the web page constitutes your opinion, but it reads as a
> very dated, one sided, commentary. Sure, many Internet companies need
> patent lawyers, but many do not (there isn't that much innovating going
> on in Cyberspace).

[your statement about what clients need]

> Instead, many of these companies need lawyers who understand
> copyright, trademark, and a host of other areas of the law currently
> referred to as cyberlaw, but more appropriately described as whatever
> an in-house counsel does (for a new technology company).

[your statement about job prospects]

> I would encourage law students, whether they are "techies" or not to
> consider this emerging area of law practice in addition to traditional
> IP law, if that is suitable to their interest.

You conflate two distinct things. First, what clients need. Second, what the job prospects are for various categories of would-be law students. These are quite distinct, having almost nothing in common other than that law firms are involved. The web page that you suggest needs updating ("Career Opportunities in Intellectual Property Law") is directed solely to the second subject.

Of course you are correct to say that lots of new companies need copyright and trademark advice. But I was on the telephone just yesterday with a trademark client who wanted to file a trademark application, and to advise the client fully it was necessary that I ask whether the product for which trademark is sought used an IDE cable or a SCSI cable to connect the hard disk drive to the computer. Not until after I posed this question did the client appreciate that this mattered. A non-techie trademark lawyer would not have known to ask this question.

Last month I was drafting a lengthy document for transfer of a domain name for an enormous amount of money. Fully one-third of the words in the document were directed to which day the DNS operated by the new owner would be set up and how we would confirm that its contents match those of the old DNS, and then to which day the COM zone file entry for the domain name would be updated, and then to which DNS entries (MX, A, CNAME) the new owner would or would not be permitted to modify in the next several years. A non-techie "cyberlaw" lawyer would not have known how to draft this one-third of the document. If the "cyberlaw" lawyer on the other side of such an agreement didn't understand these techie issues, then the other side would be greatly disadvantaged in a way that they would only appreciate (if ever) over the course of the next several years.

Some time ago a new client came to our firm, unhappy because they wished to patent something in their software and feared it was too late to file the patent application. Heretofore they had been advised by a firm containing no lawyers admitted to practice before the patent office, and for several years they had been protected only by a series of copyright registrations, trademark filings, and license agreements. As it turns out, the software likely would have been a good candidate for patent protection if only they had filed their patent application a couple of months earlier. But regrettably their software had gone on the market some thirteen months prior to their consulting our firm. The statutory bar of 35 USC sec. 102 had come and gone before our firm was involved, and it was too late for us to do any good.

In the wake of State Street and the recent wave of Internet-related, software-related, and business-model-related patents, there are many, many new companies which previously gave no thought to patents but suddenly now wish they had been thinking of patents from the beginning of their companies. And keep in mind that State Street did not change any law at all -- people were getting such patents ten years ago and more (e.g. the Merrill Lynch cash management account patent). State Street merely engendered headlines that made companies take notice.

Clients clearly need to be advised by counsel who know how to fire all the weapons in the armory.

Turning now from the first question (what clients need) to the second (what the career opportunities are). In my posting I characterized the help-wanted advertisements, and I didn't see you disputing my characterization. I characterized the telephone calls placed by the headhunters, and I didn't see you dispute that.

You're a professor at a law school. I have taught in a law school too, though not the same one you teach at. At the law school where I taught, I saw no hint or suggestion in the placement office of any job openings asking for "cyberlawyers", nor any job postings for non-technical IP (e.g. copyright, trademark) job openings. I did, however, see postings for job openings at IP firms where one of the requirements was a technical degree such as electrical engineering or a biotech degree.

I'm a partner in an intellectual property law firm. I get piles of resumes every month. The resumes from people with non-technical backgrounds exceed those from people with technical backgrounds by at least five to one. I speak with partners at other intellectual property law firms and they report similar imbalances. This imbalance occurs even though on our web site we tell people not to bother to send their resume if they haven't a technical background, and I wonder if the imbalance would be more extreme if our web site didn't say that.

Carl Oppedahl
<carl[_at_]oppedahl.com> Received on Fri Aug 20 1999 - 15:40:14 GMT