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 Post subject: A day in the life of an IP lawyer
PostPosted: Thu Feb 02, 2006 8:30 am 
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Posts: 58
Hi Ken,

You mentioned in another thread that you practiced several years with Wilson Sonsini Goodrich & Rosati, and that you now have your own trademark practice. Would you mind sharing with us your experience working for a big law firm in Silicon Valley and comparing it to having your own practice?

I am sure many members are interested in IP law and would like to know what a typical day working in the field is like.

Thanks!


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 Post subject: IP Law - an exciting career path
PostPosted: Fri Mar 03, 2006 3:25 am 
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Intellectual property law ("IP") consists of 3 main branches - copyright, trademark, and patent law. Copyright law deals with protecting written work (books), recordings (songs), and visual arts (paintings, etc.). It can also be used to protect software code, but now this is generally covered under patent law, which offers more stringent protection. Patent law covers inventions and recently has been expanded to protect business ideas, such as Amazon's 1 click shopping (as a controversial example of a business patent that has been approved). Trademark law protects brands and logos, examples would include the brand name NIKE and the Nike Swoosh logo.

IP law is a booming field, as the information technology age has continually expanded the need for, scope of, and value of intellectual property. While Silicon Valley, where I practiced, is the hub of IP law, other IP centers include Boston, Austin, San Diego, and New York. (For those who do not know, Silicon Valley is about 1 hour south of San Francisco. Palo Alto, where Stanford is located, is the heart of it).

I practiced law with Wilson Sonsini Goodrich & Rosati, the largest law firm in Silicon Valley. I did both trademark prosecution and litigation. Prosecution is where you actually work with clients on developing brands, providing risk analysis and strategies to mitigate risk, and then file and oversee the application process with the US Patent and Trademark Office. Trademark litigation is when two companies are suing each other over who has superior rights to a trademark or examine whether any defenses are available to the infringing party.

Both prosecution and litigation have their own pros and cons. Prosecution is enjoyable because you get to brainstorm with your clients during the initial phase of trademark development and clearance, but the filing of the marks is pretty mechanical and generally done by paralegals.
Trademark litigation can be exciting as you prepare briefs and argue your case in front of the judge (as you get more senior, most of your first two years you watch the senior partner present the case while you do the legwork and brief writing). However, litigation involves large amounts of stress and a high workload (working through the night on occasion) as case deadlines approach.

Patent law is also divided up into prosecution (getting the patent filed and approved) and litigation. To practice patent prosecution one must have a scientific background (such as engineering or chemistry) and pass the patent bar, a smaller version of the bar on US Patent law procedures. Patent prosecution lawyers are very in demand because few attorneys have the scientific background to practice patent law.

Patent litigation does not require that one have a scientific background, but it certainly helps.

Copyright attorneys generally focus upon copyright litigation, as copyright prosecution is very easy and always done by paralegals.

IP licensing, that is working with companies such as Intel, and licensing their technology or trademarks, is also a very large field in addition to prosecution and litigation.

I highly recommend IP law to all, for I feel it is the most exciting field of law out there at present as we continue to live in a world dominated by technology. Law schools that excel at IP law are first and foremost, Berkeley's Boalt Hall, secondly Stanford, and then there is a big drop, but other strong IP law schools include George Washington, Columbia, NYU, and Franklin Pierce.

IP law is at a crossroads at present, for while it is a means to protect intellectual property, the reason for its creation was to spur new technology by offering authors a means to protect and profit from their creations. Ironically, IP law may now be so stringent that it is hindering more than helping spur new innovations.

The following article, written by yours truly, explores how trademark law needs to be reformed to again incentivize innovation.

http://www.registeringatrademark.com/re ... -law.shtml

Another article I wrote conveys the basics of trademark law (actually quite fascinating and intuitively easy to understand) by explaining how to create a protectable trademark:

http://www.registeringatrademark.com/pr ... mark.shtml

Even for those who do not anticipate practicing IP law, I recommend that you take an Intro to IP course for you will likely find it quite fascinating.


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 Post subject: MLBrandow
PostPosted: Tue Apr 04, 2006 11:34 pm 
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Location: Florida State University
would one need a Masters or PhD in that scientific field or just a basic fundamental understanding?


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 Post subject: Intellectual Property Law Background
PostPosted: Thu Apr 06, 2006 1:06 am 
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To practice trademark or copyright law does not require that one have a scientific background. However, to become a member of the Patent Bar and practice patent law does require that one have a thorough understanding of scientific principles. A Masters or Ph.D. is not needed, for a bachelors of science will suffice.

Note that in patent litigation, where issues of patent infringement are decided in front of a court, being a member of the patent bar is not necessary, although it is a plus. To practice patent prosecution, where one works on patent applications with the Patent office seeking to have the applications become registered patents, does require membership to the patent bar.

The patent bar is in addition to the regular bar and is a course in learning about the rules and regulations of the US Patent and Trademark Office. Patent attorneys are very sought after and do quite well financially so this is an attractive option for anyone who has a scientific background.


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 Post subject:
PostPosted: Thu Apr 06, 2006 2:00 am 
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So what benefit would a PhD provide? Would the litigating lawyer be able to actually help conduct research himself? Or would it be counter-productive, basically qualifying the person to work two jobs when he can only work one.

Although it's not necessary, is there a signficant jump in salary for having one person posess that much knowledge in both relative fields? Or are there any other significant advantages?

How many hours a week does an IP Lawyer put in? I saw an ad for a patent lawyer for a firm swearing 1600 hours a week for $150k/yr. Is this a norm for the field due to its relative scarcity of applicants?


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 Post subject: Intellectual Property Law - Ph.D benefits
PostPosted: Wed Apr 19, 2006 2:21 am 
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Having a Ph.D. or Masters in a scientific field is an advantage for a patent lawyer. That being said, it is certainly not worth the extra time to pursue this advanced degree, for the time required to get a degree will is greater than the marginal benefit.

There is a shortage of patent lawyers, in large part because so few engineers and scientists are attracted to law. Thus, the few that do focus upon IP law have many job offers that come their way. Because of the supply/demand issues, patent lawyers are the very rare attorneys who can make a lot of $$ while not working slavish hours. The ad for $150K for 1600 billable hours is quite common for patent attorneys.

When you do see patent attorneys with Ph.D.s or Masters, they generally received these degrees first and realized that they could make $50K a year as an academic researcher (it is very hard to get a job as a tenure track professor in any field these days), or make $150K+ as a patent attorney, and then the decision becomes quite clear cut.

Due some research on patent law first though, while the theory of turning inventions into registered patents may sound exciting, it actually is a very tedious and detail oriented process. That being said, I think all branches of IP law (including trademark and copyright law) are growing fields that promise both a lot of future demand for attorneys and also will greatly impact society. I personally feel it is the most exciting area of law to practice, even with the details that need to be mastered.

U.C. Berkeley's Boalt Hall and Stanford are clearly the 2 best places to learn IP law, with many graduates (including myself), then practicing IP law in Silicon Valley (which is 1/2 south of San Francisco).


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 Post subject: Trademark Law Overview
PostPosted: Tue May 30, 2006 12:58 am 
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Because I love trademark law (it is what I practice), I thought others might enjoy learning more about the basics of trademark law. Just click on the article below that I wrote to learn more:


http://www.registeringatrademark.com/tr ... sics.shtml

Overall, intellectual property law is very exciting and fulfilling for most who practice it.


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 Post subject:
PostPosted: Tue May 30, 2006 12:10 pm 
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Is patent law the only branch of IP that requires a BS in college? I am interested in IP but do not have the science background.


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 Post subject: IP law - except for patent law open to all
PostPosted: Tue Jun 06, 2006 1:48 am 
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IP is a very exciting and growing field of law, so thankfully only patent law requires a Bachelor of Science (BS). Technically, only patent prosecution (where attorneys turn an application into a registered patent) requires a BS, patent litigation can be practiced by those without a BS. However, a BS is helpful in patent litigation, even if not required.

Trademark law, which I practice, does not require a BS. Nor do copyright law or trade secret law. Thus, if you do not have a background in engineering, thankfully most fields of IP law are open to you.


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 Post subject: Santa Clara
PostPosted: Fri Jun 16, 2006 11:34 am 
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Ken,

What is the reputation of Santa Clara's program for technology in the Silicon Valley area. Given that you worked for the largest firm and now are in your own practice I figure you must have strong insights on the Schools reputations.


Thanks,
Jeff


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 Post subject: Santa Clara Law School - a great IP option
PostPosted: Sun Jun 18, 2006 1:25 am 
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Hi Jeff,

I put forward my thoughts on Santa Clara Law School in another thread that you started, but I did want to state that I think it is an excellent law school (especially in IP) and also offers a good quality of life. It is very well respected within Silicon Valley and those who do well at Santa Clara generally have some good options with the large paying big firms. I wrote a detailed profile and interviewed the Dean of Santa Clara, all of which can be viewed at:

http://www.top-law-schools.com/santa-cl ... chool.html


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 Post subject: Registeringatrademark.com
PostPosted: Thu Jun 29, 2006 10:21 pm 
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Refreshing to see that the info on registeringatrademark.com is very readable and easy to understand. Thanks. Keep up the good work.


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 Post subject: Registering A Trademark
PostPosted: Fri Jun 30, 2006 1:25 am 
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Thank you Jeff. While I do seek to write clearly and effectively, part of your compliment must be passed on to the legal principles of trademark law itself. The goal of trademark law is to avoid "consumer confusion," where one product passes itself off as another. (Cheaply made shoes stealing the Nike swoosh for example).

Because the law focuses upon consumers' reaction and possible confusion, trademark law is actually very intuitive and can be easily understood by an intelligent person in a few hours. I enjoy giving seminars to business people on trademark law and within a short period I know by the questions being asked that the principles have been understood.

Needless to say, there are a lot of subtle points of law that make trademark law very exciting that cannot be conveyed in one article, but as a whole it is a fun area of law and actually getting a lot of attention now because Internet domain names function as trademarks.

Intellectual property is currently an exciting field of law, but I think this trend will only continue as more and more of our valuable inventions are not tangible products but intangible ideas that need protection.

As many know, Boalt Law School (where I graduated from in 1998) has the best intellectual property program in the nation. Stanford is the second best.


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 Post subject:
PostPosted: Sat Jul 01, 2006 5:51 pm 
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Ken,
What are your thoughts on DePaul or Franklin Pierce?


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 Post subject: Franklin Pierce Law School & DePaul University Law Schoo
PostPosted: Tue Jul 18, 2006 1:38 am 
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Franklin Pierce Law School had the number 1 ranked intellectual property program for many years. This was when IP law was not as vibrant and thriving of a field. While still respected and considered to be a top 10 law school for IP, overall I think the heavy weights on the coasts will continue to put distance between their programs and that at Franklin Pierce Law School.

That being said, for those who are interested in IP and will not be attending a top 100 law school, Franklin Pierce offers a great specialty program and has a strong regional reputation (competition is a bit weak in New Hampshire).

Depaul University Law School also has a strong IP program, but generally ranked just below Franklin Pierce Law School. Additionally, Depaul University Law School does not have the reputational legacy that Franklie Pierce Law School does for IP. Additionally, Depaul University Law School is an urban campus, mainly just a cluster of buildings in downtown Chicago, so not a good law school for those seeking a collegial environment.

In sum, I think both Franklin Pierce Law School and Depaul University Law School have strong fields in IP, but Franklin Pierce has the slightly better IP program. The very distinct locations (cold but beautiful Concord, New Hampshire vs. downtown Chicago) ensure that any student considering these two law schools visit them both, for locational desires will play a large role what law school is more attractive.

Also, for regional law schools, your best employment prospects are generally in your local market, where your reputation is most known and alumni can help each other out. For this, Depaul Law School offers a better and more thriving legal market.


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 Post subject:
PostPosted: Tue Jul 18, 2006 10:12 am 
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Hey Slam,

I'm not Ken, but I am starting at DePaul in the fall. I have an ME degre, and have practiced in the field for the last 4 years, so I also am very interested in IP law.

I agree with most of what Ken said, but just wanted to add a couple things specifically about DePaul. I don't know much about Pierce, so I can't add much on that front.

I only aplied to DePaul because they sent me an application fee waivor, and I only considered it after I was accepted and they gave me a lot of money to go there... but at this point I am glad that I did.

I was accepted at a bunch of schools (U. Georgia, Georgia State, Wake Forrest, Temple, Loyola Marymount, Chicago-Kent, and Santa Clara - waitlist at Wisconsin), and visited most of them. After my visits DePaul went from an also ran to one of my final 2 choices. Wisconsin was my first, and then DePaul. these were the two schools that I felt most comfortable with the people, and the environment.

Focusing in on DePaul, Ken is correct that is located in chicago's Loop right in the heart of the city, all of the buildings for the law school (2) are located right next to each other, and connected. the surronding area is made up mostly of other DePaul buildings and students. I have never been a city guy (Undergrad at Clemson University in SC... definition of a college town) but I definately felt comfortable in the environment, and the energy of the area was electric. I would say that if you are interested in the slightest, a visit is definately worth it!

As for the IP program, I found it very extensive, and very active. They have 4 or 5 professors dedicated almost exclusively to the program, and there are tons of classes for someone that will want to specialize in this area. They also have an IP legal clinic, and a 1L IP legal writing program that has been integrated with thier 1st year legal writing class. I personally found both the IP legal clinic and this IP writing program very apealing, especially since they work extremely hard to place the participants in solid (paying) 1L assignments with large firms in the city, and from what I can tell they have a pretty good placement rate. (Especialy considering how competitive those 1L jobs are!)

Below is a link to more info on DePaul's CIPLIT program:

http://www.law.depaul.edu/institutes%5Fcenters/ciplit/default.asp

A DePaul degree is not as prestigious as one from Boalt, Stanford, GW, or Columbia (The top 20 IP giants), but DePaul is is still a great school, now back in the US News top 100 after some setbacks with their facility upgrades in the late 90's. It's regional reputation is very good, and the alumni base is quite substantial.

My reasoning for choosing DePaul was very simple. If I wasn't going to go to a top 20 school, the other schools are regional schools. If I am going to go to a regional school, Chicago would be a great area to be in, with an incredible legal market. Factor in the quality IP program and the money that I was given, and DePaul became a good choice for me.

I have to say this though, if I could have been accepted at Northwestern, GW, Stanford, or Boalt, I would have chosen any of them over DePaul, but for a regional school, it is a great option.

I hope this helps!


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 Post subject:
PostPosted: Mon Jul 31, 2006 4:02 pm 
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Hey Ken and Cspin16,
Thanks for the feedback. I am also considering Chicago Kent. Can anybody give me any feedback regarding the quality of life, education, career prospects of going there? How does Chicago kent measure up to De Paul?


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 Post subject: science vs. prestige
PostPosted: Mon Aug 14, 2006 6:57 pm 
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Ken,

I'm not sure if you're actively participating in the board anymore, but I thought I'd give it a try.

First, I wanted to supply you with a bit of my background. I'm currently finishing up my Ph.D. in condensed matter physics. My area of expertise is in nanotechnology and specically my background involves electroactive organics manipulated at the nanoscale level. I've published approximately 20 papers, delivered several research talks (including speaking at Cambridge University, UK), chaired research sessions, and served as a referee for two prestigious journals.

I am one of those few scientist/engineering types who also loves the law. In fact, I had at one point planned on law school, but took another path to pursue my other love, physics. After quite a bit of experience I have decided to move on and am now trying to couple my science background with a future legal career.

I'm currently considering law school, but have not yet made my final decision. Due to family obligations I will be attending one of two law schools in the midwest. I have narrowed it down to Creighton University or the University of Nebraska. No, neither of these schools is Harvard or Yale, but they do compete well and in the midwest they are two of the top dogs. My question to you is do you think that my physics/engineering background can help compensate for the lack of prestige in my law school choices.

Any insight or advice you can give me would be greatly appreciated!

Thank you,

Matt


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 Post subject: Patent Lawyers in Strong Demand
PostPosted: Tue Aug 15, 2006 1:14 am 
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Hi Matt,

As a father myself, I certainly understand that family comes first and thus you are limited to applying to Nebraska law schools.

The good news is that with your strong background coupled with the strong demand for patent attorneys, which is only increasing, you will be in high demand upon graduation. This is the case even graduating from Creighton University Law School or the U. of Nebraska. I highly recommend the latter over the former, for the U. of Nebraska is a better law school with much cheaper tuition.

However, my qualifier is that you will be in high demand in areas that traditionally seek and employ patent attorneys such as Silicon Valley, Boston, Washington D.C., Austin, Seattle, etc. If you will still be bound to practice law in Nebraska after graduation then I cannot predict how you will fare. For as you surely know, Nebraska is not a hub of high tech and consquently, there are few firms that I know of who employ patent attorneys. The good news is that I anticipate there also being a small number of patent attorneys seeking to fulfill those jobs, so you may still be fine.

If you are willing to move anywhere in America upon graduation, no need to research any further as you will have many jobs to choose from. However, I anticipate that you may still have to stay in Nebraska and if this is the case you will need to do some research regarding the job market for patent attorneys in Nebraska.

Best of luck. I know that with your background you will be a fine IP attorney, the only question to explore is what option(s) will you have if you must practice law in the Corn Husker State.

-Ken


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 Post subject: science vs. prestige- follow up
PostPosted: Tue Aug 15, 2006 12:52 pm 
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Ken,

Thank you very much for the reply. Your advice is very helpful! If you don't mind also have a few follow up questions for you.

I do understand that the University of Nebraska is better than Creighton, but the degree of that difference seems to differ depending on who I'm speaking with at the time. In published ratings I usually see UNL at about the 70 to 80 range and Creighton right around 95 to 100 range. As far as cost difference goes I don't think that will be such a big issue. Based on my LSAT scores and grades Creighton told me I should qualify for enough scholarship money to cover the difference (and probably more) between the two schools. In the end I want to make the decision based solely on quality and how it will relate to my future career.

So, my question has to deal with the strength of patent law at each school. I understand this may be better answered my advisors and faculty at each school, but I wanted to get your take on the importance of the issue. It is my belief that patent law is a little stronger at Creighton. One of the adjunct professors at Creighton has a burgeoning patent law practice in Omaha. On the other hand, it is my understanding that at UNL they don't actually have a "patent law" course to speak of, but they suggest that I could take that course at another university (probably Creighton) if I desired. So, in a nutshell, what is more important the strenght of patent law program (and potential contacts) or the overall prestige of the institution?

Also, I was going to mention that moving out of Nebraska in the future is a possibility. Somewhere in the midwest would be a likely destination. Denver, Minneapolis, Kansas City, St. Louis are all possibilities. But from the little amount of searching I've done I have found a decent number of patent law jobs in Omaha/Lincoln, but nothing compared to what I would find on the coast. However, as you previously mentioned the competition for these relatively few jobs will be proportionally smaller than coastal competition.


Thank you for all your help! You've been a great help!

Matt


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 Post subject: University of Nebraska Law School v. Creighton Law School
PostPosted: Fri Aug 18, 2006 1:42 am 
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Hi Matt,

As a general rule, I recommend that when applicants are faced with the choice of whether to go to the better overall law school or the better law school for the specialty that they are interested in, I recommend going to the better overall law school. This is because most applicants will change their minds and switch their field of interest while in law school or can still take some classes in their field at the better overall law school, but just not as many.

However, this analysis does not really apply to patent law and consequently not to you. With your specialized background, patent law will be the only area of law that can hold your interest and it also is the best field to utilized your background. Given the high demand and salaries for patent attorneys, I recommend that those who can become patent attorneys go that route.

I am somewhat but not totally surprised that the University of Nebraska Law School does not have a patent class. At Boalt, there were about 3-4 classes on different facets of patent law per semester. However, the Internet revolution has not yet made its rounds to the University of Nebraska Law School.

It sounds like Creighton University Law School has a better, if not stellar, patent law program. Additionally, the connections you can hopefully make from the adjunct professor may be of some value.

Because you will be able to do more research on the two law schools, the decision is best determined by you. However, the following would be instrumental in the decision making process:

1) How many classes in patent law can you take at Creighton University Law School if you went to the University of Nebraska Law School? Just one, or would they let you take other offerings.

2) What are the chances you will stay in Nebraska? If high, then the local IP attorneys will know and respect the program at Creighton University Law School. However, the farther you stray the lesser known Creighton will be and the somewhat national name (thanks to a good football program) of the University of Nebraska Law School will carry more weight.

To end on a positive note, I would not be too concerned for there is no wrong choice here. With your strong background coupled with the high demand for patent attorneys that is only increasing, you will have good employment prospects no matter where you go.

I would apply to both law schools, see if you get any money from the University of Nebraska Law School (sounds like money from Creighton Law School is expected) and then make your decision after doing a lot of due diligence. I would contact patent attorneys in Omaha as well as other cities you may be living in, such as Denver, to see if they can offer you any advice. If you find attorneys you have something in common with (such as you both attended the same college), they will generally give you 15 minutes of their time.

My only real concern is that you also research patent law to make sure that you like it. Most of my friends who do patent law are quite happy, but a minority did get bored with it and wanted to be doing the scientific work rather than protecting it. I think you have already examined this and are confident in your liking patent law, but I did want to mention this just in case.

Best of luck and please keep me informed.

Cheers,

Ken


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 Post subject: Santa Clara Law School is an excellent IP Law School
PostPosted: Sat Sep 23, 2006 11:56 pm 
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I just completed an interview with the Dean of Admissions at Santa Clara University and will post this soon. They are widely regarded as one of the best law schools in intellectual property. Below is an in-depth profile I have written which includes interviews with their Dean and Dean of Intellectual Property:

http://www.top-law-schools.com/santa-cl ... chool.html


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 Post subject:
PostPosted: Sun Sep 24, 2006 1:36 pm 
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If I were to go to Santa Clara, would I be limited to getting a job in that area? Is Santa Clara well known enough to get decent job prospects else where?

Thanks,
Steve


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 Post subject:
PostPosted: Sun Sep 24, 2006 2:38 pm 
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One Plus about New Hampshire is that there is no sales tax. I grew up in Massachussetts, 10 minutes from the border, Also the New Hampshire coast is nice, Overall its a nice state for being the "lost southern state".
//My two cents


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 Post subject:
PostPosted: Mon Nov 20, 2006 7:58 pm 
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Ken, I realize you specialize in trademark law, but I'm interested to hear about your insight into the other areas of IP. I realize one must have an engineering/science background in order to practice patent prosecution, but what I haven't been able to get my arms around is specifically how this is translated. For example, my undergrad is in Economics, not what anyone would consider engineering or science. However, I have 10 years in software development (programming, design, etc.) and a handful of patents under my belt. Do you suppose that my experience alone could compensate for a lack of that computer engineering degree? I appreciate any thoughts you have about this.


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