IP Law Without the Background? Forum

[cantyoloforever]

I'm an English major without any background in computer science or engineering. My professional career so far has been primarily focused on writing content and doing SEO/PPC work for small Internet marketing agencies. However, I am about to start a job for a very large search engine company doing some content strategy and social media advertising. I really like this company, and am thinking of down the road about whether or not I could be a viable candidate for their corporate counsel after school. So here are my questions:

1. Would an Internet company's corporate counsel include more than IP lawyers? I'd imagine that would be the case, but I know very little about this subject (which is why I'm asking questions )

2. Do you need a specific background for IP law?

3. How unusual is it for someone to work for a company's corporate counsel after immediately graduating law school? Do they usually need to have work experience at a firm before having a role of that nature?

[tomwatts]

1. Would an Internet company's corporate counsel include more than IP lawyers? I'd imagine that would be the case, but I know very little about this subject (which is why I'm asking questions )

As far as I know, yes. Some companies have their own in-house IP specialists, but I think basically every company of significant size needs at least one lawyer (and usually more) who deals with the business's contracts, employment matters, etc.

2. Do you need a specific background for IP law?

Depends on what kind. The people who actually draft applications for patents ("patent prosecution") need a technical background (bio/chem/comp sci usually). Patent litigators (people who manage lawsuits relating to patents) benefit from a technical background, but it's not strictly necessary. Soft IP (copyright/trademark/etc.) generally doesn't depend on a technical background, although a technical background is useful in some areas of copyright (e.g., copyright in software).

My guess — having seen the inside of only one such place — is that working in the general counsel's office at a tech company is probably going to be the sort of job where some background in IP law is relevant, but you don't need a lot of technical background also unless you're actually litigating patents on their behalf, and maybe not even then.

3. How unusual is it for someone to work for a company's corporate counsel after immediately graduating law school? Do they usually need to have work experience at a firm before having a role of that nature?

Unusual but not unheard of. It's definitely more common to go to a transactional/corporate department in a law firm first and then go in-house, but I did meet a person who went in-house immediately. I wouldn't count on being able to do this unless you have a special arrangement, but it sometimes does happen.

But you might want to talk to the people who actually work in the general counsel's office and see what they say (about all of this), because they most likely have more direct understanding of your company and the companies like it than, well, anyone else would, really.

[SFSpartan]

1. Yes, most tech companies have more than IP lawyers. Other roles include corporate counsel (someone that does a combination of business and law - generally sourcing and working with outside counsel on M&A deals in a larger company), employment, land use (for very large companies), etc. I'm not sure how many employees Google has (I'm assuming this is where you got a job, given that MSFT and Google are really the only search engines in town now that Yahoo got sold). However, Facebook has at least 90 attorneys in house - they likely perform a variety of functions.

2. To do patent work, you need a specific background. Technically, all you need is a B.S. (and there are ways around that requirement), but practically, that degree probably needs to be in C.S. or E.E. unless you're doing a bunch of biotech work. The reason for this is that law firms tend to only hire people with these backgrounds to do patent work. Ultimately, though, this goes back to the wants/desires of law firm clients - most of them want people with substantive technical training to do their patent prosecution and litigation. For trademark and copyright stuff, you don't need a technical background. However, these "soft IP" jobs are hard to get, as there aren't very many of them.

3. Outside of a few companies (i.e. HP) that have a formal program to hire and develop in-house talent out of law school, it is extremely unusual to see a non-patent lawyer get hired in-house right out of law school. This type of thing tends to be more common with patent lawyers because a company can send one of its own engineers to law school and be confident that they are hiring someone that knows their business. Outside of that limited circumstance, 3-5 years in a large law firm is pretty standard for in house corporate counsel.

To get a better idea of how your company hires its attorneys, use LinkedIn. You can set yourself to private, search for all the people that work at your company, and then narrow the search parameters so that you are only looking at the folks that provide legal services. Looking at their profiles and seeing where they worked, and for how long will provide you a better answer to question #3 than TLS will be able to.

[cantyoloforever]

But you might want to talk to the people who actually work in the general counsel's office and see what they say (about all of this), because they most likely have more direct understanding of your company and the companies like it than, well, anyone else would, really.

I'm somewhat nervous bringing it up, as I don't know if the company would freak out if they knew I was planning on going to law school.

Thanks for your insightful info!

[cantyoloforever]

To get a better idea of how your company hires its attorneys, use LinkedIn. You can set yourself to private, search for all the people that work at your company, and then narrow the search parameters so that you are only looking at the folks that provide legal services. Looking at their profiles and seeing where they worked, and for how long will provide you a better answer to question #3 than TLS will be able to.

That is a very good idea.

Thanks for your post! I feel like I have much clearer picture of this avenue.

[philipthegreat]

1. Would an Internet company's corporate counsel include more than IP lawyers? I'd imagine that would be the case, but I know very little about this subject (which is why I'm asking questions )

Yes, absolutely. In fact, there's a good chance they would hire outside IP counsel and their corporate counsel would be more generalized. Check the LinkedIn profiles of attorneys at some tech companies. You'll probably see a mix, they need people that do cyberlaw, privacy, compliance, employment, etc.

2. Do you need a specific background for IP law?

There are two major divides in IP. First is between "hard" and "soft" IP. In general, patents are "hard" and copyright/trademark/trade secret are "soft." The other is between IP litigators (the people who go to court to argue about who stole who's IP) and people that apply for patents (patent prosecutors, who have to take a separate patent bar) or trademarks/copyrights (not a specialized bar). There aren't really any specialized requirements for soft IP beyond the usual good grades and demonstrated interest in the field.

You NEED a technical background to prosecute patents. Generally a B.S. fulfills the requirements to sit for the patent bar. However, getting a job is a different animal entirely. For engineering/computer science a bachelor's is usually enough to land a job. For bio/pharma/chemistry you are in a much better spot with a masters/PhD.

For patent litigation, a technical background is helpful. I think there is a balancing test - better grades/school can make up for a less technical background and vice versa. Grades/school probably matter more at big firms and technical background probably matters more at IP boutiques.

3. How unusual is it for someone to work for a company's corporate counsel after immediately graduating law school? Do they usually need to have work experience at a firm before having a role of that nature?

Fairly unusual, but depends on the company and the position. I would say the firm--> in house route is far and away more common (corporations don't really want to train junior lawyers); but going directly in house is not unheard of. This might be more of a self selection thing than an actual requirement, as most top students seem to opt for the firm jobs, which pay better and supposedly offer better training for new lawyers.

I believe your real question is "how can I get in house at a large tech company?" I doubt that hard IP is the way to go for somebody with a BA in English, unless you get top grades in a top school and can convince a large firm to let you on their patent litigation team. The safest and most conventional route would be to go to a good law school, make high enough grades to get into a large firm or prestigious boutique that services tech companies, spent a 3-5 years at the firm, then start looking for in-house positions.

Source: I'm a B.A. in bio, I would technically qualify for the patent bar. I didn't get much interest from firms looking for IP specific hires (litigation or prosecution). I'm doing general corporate practice but for tech and biotech companies. I go to a law school with a fairly large cohort of IP-focused students. Most of my friends in IP are doing patents and have technical backgrounds (like I said, undergrad degrees in engineering/CS or grad in bio/chemistry).

[cantyoloforever]

1. Would an Internet company's corporate counsel include more than IP lawyers? I'd imagine that would be the case, but I know very little about this subject (which is why I'm asking questions )

Yes, absolutely. In fact, there's a good chance they would hire outside IP counsel and their corporate counsel would be more generalized. Check the LinkedIn profiles of attorneys at some tech companies. You'll probably see a mix, they need people that do cyberlaw, privacy, compliance, employment, etc.

2. Do you need a specific background for IP law?

There are two major divides in IP. First is between "hard" and "soft" IP. In general, patents are "hard" and copyright/trademark/trade secret are "soft." The other is between IP litigators (the people who go to court to argue about who stole who's IP) and people that apply for patents (patent prosecutors, who have to take a separate patent bar) or trademarks/copyrights (not a specialized bar). There aren't really any specialized requirements for soft IP beyond the usual good grades and demonstrated interest in the field.

You NEED a technical background to prosecute patents. Generally a B.S. fulfills the requirements to sit for the patent bar. However, getting a job is a different animal entirely. For engineering/computer science a bachelor's is usually enough to land a job. For bio/pharma/chemistry you are in a much better spot with a masters/PhD.

For patent litigation, a technical background is helpful. I think there is a balancing test - better grades/school can make up for a less technical background and vice versa. Grades/school probably matter more at big firms and technical background probably matters more at IP boutiques.

3. How unusual is it for someone to work for a company's corporate counsel after immediately graduating law school? Do they usually need to have work experience at a firm before having a role of that nature?

Fairly unusual, but depends on the company and the position. I would say the firm--> in house route is far and away more common (corporations don't really want to train junior lawyers); but going directly in house is not unheard of. This might be more of a self selection thing than an actual requirement, as most top students seem to opt for the firm jobs, which pay better and supposedly offer better training for new lawyers.

I believe your real question is "how can I get in house at a large tech company?" I doubt that hard IP is the way to go for somebody with a BA in English, unless you get top grades in a top school and can convince a large firm to let you on their patent litigation team. The safest and most conventional route would be to go to a good law school, make high enough grades to get into a large firm or prestigious boutique that services tech companies, spent a 3-5 years at the firm, then start looking for in-house positions.

Source: I'm a B.A. in bio, I would technically qualify for the patent bar. I didn't get much interest from firms looking for IP specific hires (litigation or prosecution). I'm doing general corporate practice but for tech and biotech companies. I go to a law school with a fairly large cohort of IP-focused students. Most of my friends in IP are doing patents and have technical backgrounds (like I said, undergrad degrees in engineering/CS or grad in bio/chemistry).

Sorry for the delay in response! This was a super thorough post, so I want to thank you for taking the time to answer my questions. Sounds like doing IP law is probably not the path I should take haha