Thoughts on more specialized IP law?

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Poldy
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Thoughts on more specialized IP law?

Postby Poldy » Mon May 18, 2015 4:08 pm

Anyone have some insight on more specialized types of patent law practice? By this I mean no EE/CS type work. Are the industry specific IP law practices typically pretty strong or is it a crap shoot outside of software and computer work? I'm patent bar eligible but I'm still working in figuring out if that's the area I want to focus on.

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ExBiglawAssociate
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Re: Thoughts on more specialized IP law?

Postby ExBiglawAssociate » Mon May 18, 2015 7:10 pm

Others may disagree, but I would aim for something other than patent work. CS patents are an especially bad field to be in at the moment. Alice has essentially prompted the USPTO to shut down entire software patent art units. No software patents = no software patent litigation in the future. 20 years from now, there may be almost no (enforceable) software patents at all. The hardcore EE stuff is a much better place to be, but people like Obama and John Oliver seem to be hating on the patent system these days, mostly because they don't understand it. Politics may squash what has been the greatest catalyst of innovation of all time: the US patent system.

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haus
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Re: Thoughts on more specialized IP law?

Postby haus » Mon May 18, 2015 9:41 pm

While Obama surely has many faults, I doubt the the inability to understand the patent system is one of them.

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Re: Thoughts on more specialized IP law?

Postby lukertin » Mon May 18, 2015 9:57 pm

Biglaw_Associate_V20 wrote:Alice has essentially prompted the USPTO to shut down entire software patent art units.

ooc where did you hear this?

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Poldy
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Re: Thoughts on more specialized IP law?

Postby Poldy » Mon May 18, 2015 9:58 pm

This post is about patent work outside of CS/EE so software patents aren't really in the discussion too much.

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FSK
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Re: Thoughts on more specialized IP law?

Postby FSK » Mon May 18, 2015 10:01 pm

There's like 15 lawyers in DC/NY that do copyright royalty board adjudication & ratemaking proceedings as a huge part of a soft IP lit/transactions practice. That shit is sweet. Summer at Jenner/MSK/A&P/Covington/Arent Fox (or a few others) & meet them.

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ExBiglawAssociate
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Re: Thoughts on more specialized IP law?

Postby ExBiglawAssociate » Mon May 18, 2015 10:15 pm

RancidSumo wrote:This post is about patent work outside of CS/EE so software patents aren't really in the discussion too much.


my bad. lazy reading (and i have a terrible cold right now, which probably isn't helping)

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ExBiglawAssociate
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Re: Thoughts on more specialized IP law?

Postby ExBiglawAssociate » Mon May 18, 2015 10:18 pm

haus wrote:While Obama surely has many faults, I doubt the the inability to understand the patent system is one of them.


I mean, I'm sure he understands the basics, but he has no idea what he's doing with the moves he's made vis-a-vis the new head of the USPTO and his all-out assault on patents enforceability. This shit is going to have dramatic effects that are completely unnecessary. The Fed Cir and district courts are already pwning all of the shitty method patents with Alice. We don't need all the extra bullshit in the latest Senate or House proposals that Obama has backed.

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ExBiglawAssociate
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Re: Thoughts on more specialized IP law?

Postby ExBiglawAssociate » Mon May 18, 2015 10:19 pm

lukertin wrote:
Biglaw_Associate_V20 wrote:Alice has essentially prompted the USPTO to shut down entire software patent art units.

ooc where did you hear this?

Patent attorney who works in said art units, Docket Navigator, some of the comments in Patently-O, maybe some other attorneys, etc.

totesTheGoat
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Re: Thoughts on more specialized IP law?

Postby totesTheGoat » Tue Jun 16, 2015 6:40 pm

3600 is dead in the water. Nothing is getting through in the 3600s. I've gotten post-Alice 101s allowed in 2600s, but that didn't start happening until they put out the supplemental Examiner guidance in the Dec-Jan timeframe.

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ExBiglawAssociate
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Re: Thoughts on more specialized IP law?

Postby ExBiglawAssociate » Tue Jun 16, 2015 10:13 pm

totesTheGoat wrote:3600 is dead in the water. Nothing is getting through in the 3600s. I've gotten post-Alice 101s allowed in 2600s, but that didn't start happening until they put out the supplemental Examiner guidance in the Dec-Jan timeframe.


3620/80/90 are dead for sure. surprised to hear the rest of 3600 is dead

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Re: Thoughts on more specialized IP law?

Postby totesTheGoat » Wed Jun 17, 2015 12:40 am

Biglaw_Associate_V20 wrote:
totesTheGoat wrote:3600 is dead in the water. Nothing is getting through in the 3600s. I've gotten post-Alice 101s allowed in 2600s, but that didn't start happening until they put out the supplemental Examiner guidance in the Dec-Jan timeframe.


3620/80/90 are dead for sure. surprised to hear the rest of 3600 is dead



It may be hyperbole from partners I've been talking to. Their 3600 clients are financial companies, so i'm sure they're getting a skewed picture.

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lacrossebrother
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Re: Thoughts on more specialized IP law?

Postby lacrossebrother » Wed Jun 17, 2015 1:02 am

i feel like if youre a good patent litigator and then there's no more patent lit cases, you can just go litigate anything else.

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Re: Thoughts on more specialized IP law?

Postby orangered » Wed Jun 17, 2015 1:17 am

RancidSumo wrote:Anyone have some insight on more specialized types of patent law practice? By this I mean no EE/CS type work. Are the industry specific IP law practices typically pretty strong or is it a crap shoot outside of software and computer work? I'm patent bar eligible but I'm still working in figuring out if that's the area I want to focus on.


You seem to be using "IP" and "patent" as synonyms, but they're not coterminous. Intellectual property can generally be protected in one of four ways: patents, trademarks, copyrights, and trade secrets.

Within patent law, the main divisions are patent prosecution (e.g., getting patents), patent litigation (e.g., lawsuits), and a grey area in the middle for post-grant proceedings (e.g., IPRs). If you're not interested in EE/CS work (or technical work more generally), you probably don't want to do prosecution or post-grant work. Patent litigation often deals with technology, but the work itself is often not very technical.

Trademarks are somewhat similar in that there is trademark prosecution and trademark litigation. Neither needs or uses any sort of technical background. I don't know anything about copyright work. Trade secret work runs the gamut from being the most technical of all to being entirely non-technical.

Generally speaking, for patent prosecution your technical background is most important. For patent litigation it's a "soft" (which can be more or less important depending on the firm). For every other IP practice, firms care about your law school and your grades.

In terms of which practice areas are "strong," that depends on your definition. If you're looking for the easiest area to get a job in, it's directly proportional to the amount of technical expertise needed. In other words, it's really easy to get a job in prosecution assuming you have the background and are willing to use it (though it sounds like you're not). In my experience, it's hardest to get a job in "soft" IP areas because then you're competing with all the English and Poli Sci majors who did really well in law school.

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Re: Thoughts on more specialized IP law?

Postby Poldy » Wed Jun 17, 2015 1:28 am

orangered wrote:
RancidSumo wrote:Anyone have some insight on more specialized types of patent law practice? By this I mean no EE/CS type work. Are the industry specific IP law practices typically pretty strong or is it a crap shoot outside of software and computer work? I'm patent bar eligible but I'm still working in figuring out if that's the area I want to focus on.


You seem to be using "IP" and "patent" as synonyms, but they're not coterminous. Intellectual property can generally be protected in one of four ways: patents, trademarks, copyrights, and trade secrets.

Within patent law, the main divisions are patent prosecution (e.g., getting patents), patent litigation (e.g., lawsuits), and a grey area in the middle for post-grant proceedings (e.g., IPRs). If you're not interested in EE/CS work (or technical work more generally), you probably don't want to do prosecution or post-grant work. Patent litigation often deals with technology, but the work itself is often not very technical.

Trademarks are somewhat similar in that there is trademark prosecution and trademark litigation. Neither needs or uses any sort of technical background. I don't know anything about copyright work. Trade secret work runs the gamut from being the most technical of all to being entirely non-technical.

Generally speaking, for patent prosecution your technical background is most important. For patent litigation it's a "soft" (which can be more or less important depending on the firm). For every other IP practice, firms care about your law school and your grades.

In terms of which practice areas are "strong," that depends on your definition. If you're looking for the easiest area to get a job in, it's directly proportional to the amount of technical expertise needed. In other words, it's really easy to get a job in prosecution assuming you have the background and are willing to use it (though it sounds like you're not). In my experience, it's hardest to get a job in "soft" IP areas because then you're competing with all the English and Poli Sci majors who did really well in law school.


I know the difference between the various IP areas. My concern is what industries are employing lots of patent attorneys. I have an engineering degree but it is highly specialized (petroleum) so general EE/CS doesn't apply to me.

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Re: Thoughts on more specialized IP law?

Postby orangered » Wed Jun 17, 2015 1:38 am

Biglaw_Associate_V20 wrote:Others may disagree, but I would aim for something other than patent work. CS patents are an especially bad field to be in at the moment. Alice has essentially prompted the USPTO to shut down entire software patent art units. No software patents = no software patent litigation in the future. 20 years from now, there may be almost no (enforceable) software patents at all. The hardcore EE stuff is a much better place to be, but people like Obama and John Oliver seem to be hating on the patent system these days, mostly because they don't understand it. Politics may squash what has been the greatest catalyst of innovation of all time: the US patent system.


This is more than a bit hyperbolic. It's true that the standards are tighter than they were in the State Street Bank days (what a travesty of a decision), but they damn well should be considering the garbage that got through the PTO in the 90s and early 00s. People like John Oliver are hating on patents not because they took a sudden interest in IP law, but because the system created ridiculous situations where mom and pop shops were sued for using a scanner or conducting a transaction over the internet. The patent system was becoming a tax on business rather than a motivation for innovation, so I'm glad things are changing.

I am a patent prosecutor and I can tell you first-hand that inventions that should get patents are still getting patents, even software inventions. Alice, Octane, and IPRs just represent a correction back to a patent system that actually "promote[s] the Progress of Science and useful Arts."

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orangered
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Re: Thoughts on more specialized IP law?

Postby orangered » Wed Jun 17, 2015 1:47 am

RancidSumo wrote:I know the difference between the various IP areas. My concern is what industries are employing lots of patent attorneys. I have an engineering degree but it is highly specialized (petroleum) so general EE/CS doesn't apply to me.


In my experience petroleum engineering can still be a valuable background in prosecution insofar as you have experience with chemical engineering and mechanical engineering, both of which are doing pretty well. Petroleum may not be as "hot" of a degree as EE but it by no means prevents you from working as a prosecutor, and in fact is definitely better than a Bio or Chem degree if all you have is a BS.

You can certainly get a job in patent litigation (or soft IP), but they will care about your technical background less and your law school and grades more.

Hope that helps.

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ExBiglawAssociate
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Re: Thoughts on more specialized IP law?

Postby ExBiglawAssociate » Wed Jun 17, 2015 8:06 pm

orangered wrote:
Biglaw_Associate_V20 wrote:Others may disagree, but I would aim for something other than patent work. CS patents are an especially bad field to be in at the moment. Alice has essentially prompted the USPTO to shut down entire software patent art units. No software patents = no software patent litigation in the future. 20 years from now, there may be almost no (enforceable) software patents at all. The hardcore EE stuff is a much better place to be, but people like Obama and John Oliver seem to be hating on the patent system these days, mostly because they don't understand it. Politics may squash what has been the greatest catalyst of innovation of all time: the US patent system.


This is more than a bit hyperbolic. It's true that the standards are tighter than they were in the State Street Bank days (what a travesty of a decision), but they damn well should be considering the garbage that got through the PTO in the 90s and early 00s. People like John Oliver are hating on patents not because they took a sudden interest in IP law, but because the system created ridiculous situations where mom and pop shops were sued for using a scanner or conducting a transaction over the internet. The patent system was becoming a tax on business rather than a motivation for innovation, so I'm glad things are changing.

I am a patent prosecutor and I can tell you first-hand that inventions that should get patents are still getting patents, even software inventions. Alice, Octane, and IPRs just represent a correction back to a patent system that actually "promote[s] the Progress of Science and useful Arts."


There have always been ridiculous patents coming out of the PTO (and, in my opinion, there always will be). I agree that the 90s/early 00s produced way too many shitty patents. I am just worried that Alice is throwing the baby out with the bath water. Just yesterday, we saw a precedential opinion come out that applied Alice to the biotech sector in a rather alarming (and, some would argue, new) way. Also, as I said in another thread, almost every key precedential case coming out of the CAFC these days is going against patentees. It might be death by a thousand cuts, even if you consider all of the Section 112, etc. cases as having only minor impacts.

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Re: Thoughts on more specialized IP law?

Postby alphasteve » Wed Jun 17, 2015 9:12 pm

RancidSumo wrote:This post is about patent work outside of CS/EE so software patents aren't really in the discussion too much.

Pharma is is big and continuing practice. You will most likely always see Hatch Waxman litigation for decades to come, and the IPR world is heating up in Pharma, though BigPharma is trying to basically exempt them from that all together.




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