Why is a science background required for IP work?

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eric922
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Why is a science background required for IP work?

Postby eric922 » Thu Mar 28, 2013 8:39 pm

I did a quick search of the forums, but couldn't find an answer to this question and maybe it's just so basic that no one has needed to ask before me, but why is a science background necessary for patent work? I could understand why it would be helpful in some cases, but aren't patents and intellectual property just another branch of law? I mean I don't need to be a business major to go into corporate or finance legal work. Again sorry if this is a really basic question, but it's just something I'm curious about it.

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bk1
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Re: Why is a science background required for IP work?

Postby bk1 » Thu Mar 28, 2013 8:52 pm

You mean patent, not IP generally.

It's required for patent prosecution because you need to pass the patent par and to sit for the patent bar you need to have taken certain science courses.

It's not required for patent litigation. However it does tend to be heavily referred (often being a de facto requirement at some firms). I'm not 100% sure but I believe the reason for this is twofold: (1) patents often have complex technical details meaning that those with science backgrounds can more easily understand them, especially if it is a background in the field that the patent is in, e.g. software, and (2) it helps the firm market itself to clients by showing the expertise of its lawyers through science/engineering degrees.

jingyuan
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Re: Why is a science background required for IP work?

Postby jingyuan » Thu Mar 28, 2013 11:23 pm

Agree with bk1. And just want to add a little reason, when you want to practice IP law, especially patent law as a lawyer, your background of technology will certainly do you a favor in certain circumstances. However, we are not experts in all fields of technology, so it might be more important for us to learn before or through case to case, and to me, the ability to learn is more significant.

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laxbrah420
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Re: Why is a science background required for IP work?

Postby laxbrah420 » Thu Mar 28, 2013 11:26 pm

bk1 wrote:You mean patent, not IP generally.

It's required for patent prosecution because you need to pass the patent par and to sit for the patent bar you need to have taken certain science courses.

It's not required for patent litigation. However it does tend to be heavily referred (often being a de facto requirement at some firms). I'm not 100% sure but I believe the reason for this is twofold: (1) patents often have complex technical details meaning that those with science backgrounds can more easily understand them, especially if it is a background in the field that the patent is in, e.g. software, and (2) it helps the firm market itself to clients by showing the expertise of its lawyers through science/engineering degrees.

What about trademark prosecution?

run26.2
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Re: Why is a science background required for IP work?

Postby run26.2 » Thu Mar 28, 2013 11:34 pm

jingyuan wrote:Agree with bk1. And just want to add a little reason, when you want to practice IP law, especially patent law as a lawyer, your background of technology will certainly do you a favor in certain circumstances. However, we are not experts in all fields of technology, so it might be more important for us to learn before or through case to case, and to me, the ability to learn is more significant.

I won't disagree that the ability to learn is highly important. But I think your statement requires more explanation. Sure, anyone can learn the technology, and we all will most likely encounter some new technical material when doing patent work. But if you already have a science degree, there is a much greater chance that you have a foundation for what you are learning, i.e. you are much more likely to already understand, or at least have encountered, some of the basic aspects of the technology in question.

Even if you have a superior ability to learn, the time constraints of the case may not afford enough time for someone with no familiarity with the technology to acquire a degree of familiarity that would make them more useful than someone who is slower on the uptake but already has a more advanced understanding of the technology.

jingyuan
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Re: Why is a science background required for IP work?

Postby jingyuan » Thu Mar 28, 2013 11:41 pm

laxbrah420 wrote:
bk1 wrote:You mean patent, not IP generally.

It's required for patent prosecution because you need to pass the patent par and to sit for the patent bar you need to have taken certain science courses.

It's not required for patent litigation. However it does tend to be heavily referred (often being a de facto requirement at some firms). I'm not 100% sure but I believe the reason for this is twofold: (1) patents often have complex technical details meaning that those with science backgrounds can more easily understand them, especially if it is a background in the field that the patent is in, e.g. software, and (2) it helps the firm market itself to clients by showing the expertise of its lawyers through science/engineering degrees.

What about trademark prosecution?


Trademark prosecution, in my understanding, does not require the technology background.

jingyuan
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Re: Why is a science background required for IP work?

Postby jingyuan » Thu Mar 28, 2013 11:50 pm

run26.2 wrote:
jingyuan wrote:Agree with bk1. And just want to add a little reason, when you want to practice IP law, especially patent law as a lawyer, your background of technology will certainly do you a favor in certain circumstances. However, we are not experts in all fields of technology, so it might be more important for us to learn before or through case to case, and to me, the ability to learn is more significant.

I won't disagree that the ability to learn is highly important. But I think your statement requires more explanation. Sure, anyone can learn the technology, and we all will most likely encounter some new technical material when doing patent work. But if you already have a science degree, there is a much greater chance that you have a foundation for what you are learning, i.e. you are much more likely to already understand, or at least have encountered, some of the basic aspects of the technology in question.

Even if you have a superior ability to learn, the time constraints of the case may not afford enough time for someone with no familiarity with the technology to acquire a degree of familiarity that would make them more useful than someone who is slower on the uptake but already has a more advanced understanding of the technology.


I agree with you on the point that a background with technology can be helpful in certain cases, because we are more familiar with the topic, and more able to understand with fewer time-consuming explainations. And my point is that, if you, or anyone who want to practice law like a patent lawyer, do not know much about science or technology, it is OK, and you can choose one field that is familiar to you, as at some point, we do know something about today's technology,though we are not expertise.

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J-e-L-L-o
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Re: Why is a science background required for IP work?

Postby J-e-L-L-o » Sat Mar 30, 2013 3:45 pm

jingyuan wrote:And my point is that, if you, or anyone who want to practice law like a patent lawyer, do not know much about science or technology, it is OK, and you can choose one field that is familiar to you, as at some point, we do know something about today's technology,though we are not expertise.


wow, that's one long sentence

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laxbrah420
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Re: Why is a science background required for IP work?

Postby laxbrah420 » Sat Mar 30, 2013 3:50 pm

what i don't get is why science background is required for IP pros but not litigation? I get that the USPTO doesn't wanna deal with scrubs and so the negotiation process is better done by someone who understands the concepts/whatever behind what's trying to be claimed...but then all of a sudden, if there's infringement, an english major is just as qualified as the scientist to argue why or why not the claim was sufficiently definite or whatever? I'd think that the advantage that a science background provides is pretty constant throughout the whole process

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bk1
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Re: Why is a science background required for IP work?

Postby bk1 » Sat Mar 30, 2013 3:54 pm

laxbrah420 wrote:what i don't get is why science background is required for IP pros but not litigation? I get that the USPTO doesn't wanna deal with scrubs and so the negotiation process is better done by someone who understands the concepts/whatever behind what's trying to be claimed...but then all of a sudden, if there's infringement, an english major is just as qualified as the scientist to argue why or why not the claim was sufficiently definite or whatever? I'd think that the advantage that a science background provides is pretty constant throughout the whole process

On one hand, patent litigators face the possibility that they will have to explain their reasoning to a jury of laymen or a judge who likely lacks a technical background.

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rinkrat19
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Re: Why is a science background required for IP work?

Postby rinkrat19 » Sat Mar 30, 2013 3:54 pm

Watch a bunch of non-IP law students try to calculate the tip at a restaurant and then ask yourself if you want them anywhere near your highly technical patent. :P

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laxbrah420
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Re: Why is a science background required for IP work?

Postby laxbrah420 » Sat Mar 30, 2013 4:02 pm

rinkrat19 wrote:Watch a bunch of non-IP law students try to calculate the tip at a restaurant and then ask yourself if you want them anywhere near your highly technical patent. :P

We left a restaurant the other day after sitting down because they said they wouldn't split checks at the end :lol:

LaBarrister
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Re: Why is a science background required for IP work?

Postby LaBarrister » Sun Mar 31, 2013 10:31 am

J-e-L-L-o wrote:
jingyuan wrote:And my point is that, if you, or anyone who want to practice law like a patent lawyer, do not know much about science or technology, it is OK, and you can choose one field that is familiar to you, as at some point, we do know something about today's technology,though we are not expertise.


wow, that's one long sentence


I feel like this person had just learned what a comma was but hadn't figured out how to use one yet.

run26.2
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Re: Why is a science background required for IP work?

Postby run26.2 » Sun Mar 31, 2013 8:16 pm

jingyuan wrote:
run26.2 wrote:
jingyuan wrote:Agree with bk1. And just want to add a little reason, when you want to practice IP law, especially patent law as a lawyer, your background of technology will certainly do you a favor in certain circumstances. However, we are not experts in all fields of technology, so it might be more important for us to learn before or through case to case, and to me, the ability to learn is more significant.

I won't disagree that the ability to learn is highly important. But I think your statement requires more explanation. Sure, anyone can learn the technology, and we all will most likely encounter some new technical material when doing patent work. But if you already have a science degree, there is a much greater chance that you have a foundation for what you are learning, i.e. you are much more likely to already understand, or at least have encountered, some of the basic aspects of the technology in question.

Even if you have a superior ability to learn, the time constraints of the case may not afford enough time for someone with no familiarity with the technology to acquire a degree of familiarity that would make them more useful than someone who is slower on the uptake but already has a more advanced understanding of the technology.


I agree with you on the point that a background with technology can be helpful in certain cases, because we are more familiar with the topic, and more able to understand with fewer time-consuming explainations. And my point is that, if you, or anyone who want to practice law like a patent lawyer, do not know much about science or technology, it is OK, and you can choose one field that is familiar to you, as at some point, we do know something about today's technology,though we are not expertise.

In biglaw (unless you are at a big boutique, such as Fish, Finnegan), I don't think you have the luxury of choosing a field in the way you reference. It's not like there are 50 cases all of which the firm needs help on.

Maybe you're talking about a smaller firm. But if you're at a smaller patent boutique, it is much more likely that a higher percentage of the work is going to be patent prosecution, for which you will need a science background. So I'm not really sure what you are talking about. Maybe there are a handful of jobs where a person wouldn't need a science background and where she/he would be able to choose a particular "field," but someone would probably fall into one as opposed to being an English or History major and choosing to do this.

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RELIC
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Re: Why is a science background required for IP work?

Postby RELIC » Sun Mar 31, 2013 8:35 pm

eric922 wrote:I did a quick search of the forums, but couldn't find an answer to this question and maybe it's just so basic that no one has needed to ask before me, but why is a science background necessary for patent work? I could understand why it would be helpful in some cases, but aren't patents and intellectual property just another branch of law? I mean I don't need to be a business major to go into corporate or finance legal work. Again sorry if this is a really basic question, but it's just something I'm curious about it.

Most Big Law IP departments are staffed with about 1/2 to 2/3 full of lawyers with technical backgrounds. The other half have no technical background but usually know the law pretty well. As one partner told me, "You can know the technology or you can know the law. No one expects you to be an expert at both." So even the most prestigious firms do not necessarily require you to have a technical background to work in IP. But they usually only recruit people with technical back grounds because those lawyers are in short supply.

09042014
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Re: Why is a science background required for IP work?

Postby 09042014 » Sun Mar 31, 2013 8:35 pm

laxbrah420 wrote:what i don't get is why science background is required for IP pros but not litigation? I get that the USPTO doesn't wanna deal with scrubs and so the negotiation process is better done by someone who understands the concepts/whatever behind what's trying to be claimed...but then all of a sudden, if there's infringement, an english major is just as qualified as the scientist to argue why or why not the claim was sufficiently definite or whatever? I'd think that the advantage that a science background provides is pretty constant throughout the whole process


It's probably just because regular judges hear patent cases, not an agency like the USPTO which can place limitations.

iconoclasttt
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Re: Why is a science background required for IP work?

Postby iconoclasttt » Sun Mar 31, 2013 11:21 pm

eric922 wrote:I did a quick search of the forums, but couldn't find an answer to this question and maybe it's just so basic that no one has needed to ask before me, but why is a science background necessary for patent work? I could understand why it would be helpful in some cases, but aren't patents and intellectual property just another branch of law? I mean I don't need to be a business major to go into corporate or finance legal work. Again sorry if this is a really basic question, but it's just something I'm curious about it.


There are a few possible questions implicit in the original one:

1. Why, as a policy matter, is a science background necessary to practice before the USPTO?
2. Why, as a practical matter, is such a background necessary for effective patent prosecution?
3. Why is such a background less necessary for patent litigation?

Quick thoughts on each:

1. The USPTO considers having the appropriate undergraduate technical education to establish a minimum degree of competence necessary to practice before the office, kind of how most states consider an ABA-accredited law degree to be a necessary (though not sufficient) condition to sit for the bar. Having the credential doesn't mean you'll necessarily be a good prosecutor, but it provides some level of assurance that you won't be a complete danger to the public.

2. Drafting and prosecuting a patent requires understanding the invention well enough to translate its essential characteristics into legal terms. It's simply not possible to do this well without having sufficient technical skill to appreciate the full breadth of the invention not merely as the inventor may have conceived it, but in variations the inventor may not originally have contemplated. Drafting and prosecuting a patent actually involves very little "law" relative to technical expertise, which is why non-attorney agents with solid experience can do as well as attorneys in some firms--at least for routine prosecution.

3. Once the patent issues, the meaning of the claims is fixed. In litigation, the primary technical task is proving one question: does the accused product/method fall within the scope of the asserted claims? (A secondary task involves proving that whatever prior art asserted as the basis of an invalidity defense doesn't fall within the scope of those claims.) Although there are a lot of nuanced legal questions in play here, the technical issues tend to be more circumscribed (since the patentee is concerned with the accused products and not the universe of possible products that might fall within the scope of the invention). Also, in litigation, there are often one or several technical experts who consult/testify on technical matters, which is rare in prosecution. Thus, although a technical background helps in litigation, there are usually enough bodies involved that a given attorney doesn't end up carrying that much of the technical workload.

(Where I'm coming from: 10+ years prosecution/counseling/post-issue practice; 8+ years prior engineering experience; undergrad and graduate engineering degrees.)




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