Intellectual Property Law if Not Qualified to Sit for the Patent Bar

[FalconJimmy]

I've danced around this topic a few times before, but I'm curious as to the prospects of working in IP if you are not qualified to sit for the patent bar.

The facts are these:

1.  I have an undergrad degree in Information Systems.  I have a graduate degree with an Information Technology emphasis.

2.  For those not familiar, computer degrees generally come in 3 varieties:
a.  Computer Engineering - from a college of engineering
b.  Computer Science - usually from a math department
c.  Information Technology - usually from a college of business

It's not unusual to attend a school where all 3 degrees are offered.  The first two, because they involve calculus, are generally eligible for the patent bar.  Information Technology generally is not.

So, my question is this:  it seems like IT and related issues are a hot area within IP.  Is it realistic to work in IP without being eligible to be a patent attorney?

I know it's technically possible, but is it something that actually happens?

Would be interested in any input from folks with firsthand knowledge or an informed opinion.

[john4040]

Happens, though not often.  I'm litigating patents, have tech-related work experience, but no tech degree.

You'll have to go to an IP hotbed.  California, Texas, Delaware, and Virginia are hot right now.  If you have more questions, message me.

[FalconJimmy]

Happens, though not often.  I'm litigating patents, have tech-related work experience, but no tech degree.

So, is there a key here?  Or is it just something where you stumble into it?

It's amazing to me how often what a person does in the law ends up coming down to dumb luck.  For instance, a friend of mine worked big law.  Got her first assignment in the securities litigation part of the firm.  That's what she did from then on. 

Are there things you can do to steer your career this direction?  Would some employers prefer to see a person with previous IT experience? 

Tomorrow is first day of class.     I've got time to figure it out.  This would be an interesting dovetailing of my previous education and my future education, though.

[FalconJimmy]

You'll have to go to an IP hotbed.  California, Texas, Delaware, and Virginia are hot right now.  If you have more questions, message me.

Good to know.  I figured this would be something that might be centered in/near silicon valley.  I like Texas, too. 

Not that interested in relocating, but for the right situation, who knows.

[john4040]

My course load was IP-centric.  IP firms will be skeptical of you if you don't at least take a patents course.  Play up your IT experienc in cover letters.  You will have to convince them that you can understand the technology and lingo.  Once you're in, you're good to go.

Edit: This is something I've always wanted to do.  I never had any interest in patent prosecution.

[FalconJimmy]

My course load was IP-centric.  IP firms will be skeptical of you if you don't at least take a patents course.  Play up your IT experienc in cover letters.  You will have to convince them that you can understand the technology and lingo.  Once you're in, you're good to go.

Thanks.  My school actually offers an IP concentration.  Looking at the other concentrations available this is the only one I'd be very interested in. 

So, basically, if I wanted to pursue this, get that IP concentration, then beat the bushes emphasizing my IT background?  Makes sense. 

[john4040]

Yes.  You can check PACER (maybe through your school) to see which type of cases prospective firms are working on.  If you're looking to do copyright or TM, there's no set background...  Just take (c) and TM courses to show an interest.

[Morten Lund]

So, my question is this:  it seems like IT and related issues are a hot area within IP.  Is it realistic to work in IP without being eligible to be a patent attorney?

I know it's technically possible, but is it something that actually happens?

It all depends on what exactly you mean by "working within IP," of course, but I would go so far as to say that many, perhaps even most, lawyers that do significant IP work are not admitted to the patent bar.  Many don't have any particular technical background, either.

First note:  Remember that "IP" includes trademarks and copyright, which has no particular relationship to the patent bar.
Second note:  IP litigators, including patent litigators, are usually litigators first and second - they just happen to do IP litigation.
Third note:  IP issues are ever-prevalent in a wide variety of practice areas, so it is quite possible to practice IP law without practicing "IP law."
Fourth note:  Do you really want to do IP law, or do you really want to work with tech?  Securities, financing, M&A - those and others can be completely tech-centric practices without ever coming close to IP law.
Fifth note:  Have you looked into qualifying for the patent bar by adding some courses?  With some technical classes under your belt, it might not take much to get a qualifying degree.

That said, my experience has been that the IP practices of large firms hire both "patent IP" and "non-patent IP" lawyers, and do so separately.  IP litigators are usually hired as litigators, but perhaps with an eye toward patent litigation down the road.  But firms do hire non-patent lawyers for IP-centric practices, all the time.