Re: An IP gripe

On 8/19/99, Mark Lemley <mlemley[_at_]mail.law.utexas.edu> wrote (inter alia):
>
> The ideal IP attorney has a Ph.D. in a science field, *and* is a great
> writer and speaker *and* has natural poise. In the real world, though,
> there are far too many people who make it through college in a science
> field who can't write a sentence in English to save their lives. They
> are not the ones you want explaining your patent case to a jury composed
> of retired postal workers. If I had to choose between a lawyer who
> knew the science cold and a lawyer who could write, I'd take the latter.
>
> Having said all this, I should note two things: (1) I am a former
> patent litigator without a technical background, so my bias should
> be obvious; and (2) whatever I think the world *should* look like,
> Carl pretty accurately describes the way it *is*.

At the risk of a post that sounds too much like simply "me too", I can second Mark Lemley's experience--and his comparison between the world as it is and as it should be.

When I was a law student looking for a clerkship in an IP firm, I found it difficult because my degree was in the liberal arts, albeit supplemented with more courses in science than the minimum requirements. When interviewing for the position which I eventually received, the interviewer assured me that IP law was more about law than the IP, and what the firm wanted for clerks was good potential lawyers. The judge and jury aren't techies, and the lawyer needs to explain it the science to them in ways they can understand.

The firm hired two clerks for the summer: a 2L with a non-tech background (me) and a 1L who had an engineering degree and had worked for the PTO as an examiner. I ended up working on trademarks and what little copyright work the firm had at the time (in an area the firm had neglible experience), plus much research and writing on procedural matters for litigation. The other clerk worked mostly on patent applications.

When it came time to make long-term employment offers, however, the fact that I didn't have a technical background was a sticking point. It was primarily a patent firm, with some trademark specialists, too. It was willing to take a chance on expanding its horizons, but the flood of patent prosecution work dictated what direction its practice took. It was good experience, but I stopped banging my head against the wall looking for non-technical patent litigator work.

So now I'm primarily a music lawyer, who also does trademark in various fields.

M.

S. Martin Keleti
<keleti[_at_]manifesto.com> Received on Fri Aug 20 1999 - 18:04:12 GMT