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by Wendy Oliveras | March 31, 2009

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As the demand for IP attorneys rises both here and abroad, the need for knowledgeable IP recruiters has grown tremendously across all sectors of the legal industry. After countless discussions with managing partners of IP and general practice firms, their views on IP recruiting have become clear: the prevalent mindset is that since IP is so specialized -- most patent attorneys have science degrees -- a recruiter representing IP candidates for new job opportunities should possess some relevant knowledge in the field. As founder of Oliveras & Company, Inc., a national legal recruitment company, I've been able to offer my clients and candidates that relevant knowledge: Oliveras' specialization in IP recruitment is based on nearly a quarter-century of hands-on IP experience. The connections I have forged during that time have proven invaluable in placing IP attorneys. However, I often wonder about those legal recruiters that have no IP-placement experience or relevant field knowledge. This article is intended to provide some basic guidance for IP attorneys looking to lateral, as well as recruiters lacking IP-placement experience.

Challenges

Recruiting a candidate, regardless of that candidate's background or experience, has its inherent challenges. With respect to the IP recruitment market, recruitment can have several additional challenges. For example, IP practices, as opposed to general practices, often have needs in specific areas of expertise. Obviously, a firm that is deficient in patent lawyers with pharmaceutical backgrounds will not hire a patent lawyer with a background in engineering.

I've found that the initial problems a recruiter may encounter can often be chalked up to one of three factors: (a) lack of familiarity with IP; (b) lack of firsthand work experience or background in IP; or (c) a sense of fear of the intricacies of the IP field. While these can all be overcome, some recruiters miss out on work for reasons beyond their control: like the candidate! Some candidates specifically prefer to use only recruiters with a strong knowledge of the IP field. One candidate, asked about his preference, explained that using a recruiter with a background in IP "just seem[ed] to make the process flow easier&everyone seem[ed] to be on the same page." So how can a legal recruiter without a background in IP represent candidates efficiently? I hope that, by reading this article, recruiters and hiring professionals will be able to gain an edge in IP recruitment.

Certainly, one can argue that a recruiter does not necessarily need a particular background in order to successfully represent a candidate. While this is true to some extent, the reality is that the IP field is a unique and intricate one. Naturally, it would be to the recruiter's and candidate's advantage to be on the same page, to both know the basic terms of IP, and to appreciate the nature of the work. Additionally, a recruiter should possess certain other skills that play an essential part in effectively recruiting candidates. Like any other profession, there are definite acquired skills that promote successful recruiting techniques: boldness, approachability, openness, patience, and of course, persistence. Equally important are honesty, integrity, and reliability.

The Field

Intellectual property is an all-encompassing term for the product of creative thought. Intellectual property law is the term for the apparatus that affords legal protection to creative endeavors. Patent law offers opportunities for inventors to protect their inventions and/or license them across the globe. IP attorneys play important roles by representing clients -- by guiding and assisting them in procuring and obtaining patent and trademark protection, and going to court for them when necessary. In an increasingly technological age, IP attorneys are in high demand in law firms and corporate legal departments because of their specialized backgrounds and expertise.

Common Terms

The building blocks of IP are (i) patents, (ii) trademarks or servicemarks, and (iii) copyrights. According to the United States Patent and Trademark Office ("U.S.P.T.O."), a patent is described as a legal instrument describing an invention that excludes other persons from making, using, offering for sale, selling, or importing the invention. Note that there are three types of patents: utility, design, and plant. Utility Patents may be granted to anyone who invents or discovers any new and useful process, machine, article of manufacture, or composition of matter, or any new and useful improvement thereof. Design patents are granted to anyone who invents a new, original, and ornamental design for an article of manufacture. Finally, plant patents are granted to those who invent or discover and asexually reproduce any distinct and new variety of plant.

There are certain prerequisites for obtaining a patent. In order for an invention to be patentable it must be "novel" as defined by patent law this means that the invention cannot be patented if: "(a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent," or "(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country more than one year prior to the application for patent in the United States&" Basically, if the invention has been described in a printed publication anywhere in the world, has been in public use or on sale in this country, or if it was known or used by others in this country before the date that the applicant made his/her invention, the invention cannot be patented.

A trademark is described as a word, name, symbol, or device that is used in trade with goods to indicate the source of the goods and to distinguish them from other goods (e.g., Coca-Cola, Nike, Sony). A servicemark is the same as a trademark, except that it identifies and distinguishes the source of a service rather than a product. The terms "trademark" and "mark" are commonly used to refer to both trademarks and servicemarks. Furthermore, trademark rights can be used to prevent others from using a confusingly similar mark, but not to prevent others from making the same goods or from selling the same goods or services under a clearly different mark.

A copyright is a form of protection provided under Title 17 of the U.S. Code to the creators of "original works of authorship," including literary, dramatic, musical, artistic, and certain other intellectual works. This protection is available to both published and unpublished works. Copyrights are registered by the Copyright Office of the Library of Congress. See www.copyright.gov for more details and information regarding copyright protection.

As far as the U.S.P.T.O. is concerned, its main function is to administer the relevant patent laws and to determine if patent applicants are entitled to patents under the law. The U.S.P.T.O. publishes issued patents, most patent applications filed on or after November 29, 2000, at 18 months from the earliest filing date, and various publications concerning patents; records assignments of patents. The Patent Office also maintains a search room for the use of the public to examine issued patents and records, and supplies copies of records and other papers on demand. The U.S.P.T.O. also registers trademarks. However, the U.S.P.T.O does not have jurisdiction over questions of infringement and the enforcement of patents. For further detailed information about the U.S.P.T.O. and intellectual property matters, please visit their website at www.usptp.gov.

There are two main components to IP law: prosecution and litigation. Prosecution is the procurement of patents, trademarks, or copyrights. For example, "patent prosecution" relates to work that involves the drafting, finalizing, and filing of the actual patent application with the U.S.P.T.O. Note that a patent application contains a specification, claims, and an abstract which summarizes the invention. Formal drawings are also usually attached to promote a visual understanding of the invention. Each application is assigned to a Patent Examiner who works in a specific "Art Unit" at the U.S.P.T.O. A patent attorney handles all of the prosecution matters that the assigned Patent Examiner initiates, particularly the Office Actions, which are the official views of the Patent Office on the application. The Office Actions relate the Examiner's objections, rejections, or other information about the application. The entire prosecution process can be very time-consuming, taking up to several years.

IP litigation, however, can entail virtually any matter touching on intellectual property. Someone may sue another for infringement of a patent, trademark, or copyright. Many cases are related to the intellectual property rights of pharmaceutical companies with regard to the drugs they produce. A lawsuit initiated by a single affected patient can easily develop into a class action lawsuit where the drug patent is challenged. Litigation is inherently uncertain, and is incredibly costly, with legal fees ballooning very rapidly, very often.

Beyond litigation and prosecution is the "transactional" side of IP. This work involves licensing, due diligence, and advising clients on the propriety or feasibility of procuring IP protection or a potential litigation. Note that some IP attorneys have experience in IP prosecution, litigation, and transactional matters, while some specialize in just one. While some IP attorneys specialize in prosecution work, they may have little, or even no experience in litigation or transactional matters -- and as a result, may want nothing to do with such work.

Not surprisingly, the IP industry is as broad as the technologies it encompasses. Inventions, obviously, occur in every industry, including but not limited to the pharmaceutical, chemical, life sciences, biotechnology, electrical engineering, mechanical engineering, technology, nanotechnology, and computer science fields. Most IP attorney positions require scientific or engineering backgrounds before acquiring a law degree. For example, degrees in electrical, mechanical, or chemical engineering are common among patent attorneys. The same is true for science fields such as biology, chemistry, biochemistry, pharmaceutical, medicine, biogenetics, or biotechnology.

Tips for Success

Once you have a better understanding of the appropriate IP field and appreciate its importance in recruiting IP candidates, heed these tips as you go forward:

Know the IP Market:

Find out which firms or corporations are seeking IP professionals, and in which fields they're looking. For example, common IP positions include associate, partner, patent agent or scientific advisor, Of Counsel, U.S.P.T.O. Examiner, paralegal, legal secretary, and docket clerk. Familiarize yourself with the differences between cultures in IP law firms (called "IP boutiques"), IP practice groups in general practice law firms, and corporations. Learn where the geographic IP niches are, since there are many IP candidates who are open to relocation. Case in point -- San Diego is well-known for being a biotech niche area. And above all, network, network, network! Go on the web and explore the goings-on in the great world of IP. Attend seminars, if you can, and ask relevant questions.

Know Your Client:

Talk with managing partners of law firms, in-house counsels, legal administrators, other corporate legal recruiters, and hiring executives to feel out the market and discover their professional goals in growing an IP practices. Find out which IP positions are open, and when they need to be filled. If a firm or company has an IP opening, ask if a certain technical background and level of experience is specifically required. Gather as much information about the position and prerequisites as you can. This, in turn, will help you narrow your candidate search. Also ask about the practice's goals with respect to growth, diversifying, and direction.

Know Your IP Candidate:

There are several types of IP candidates out there. Regardless of their level of experience, the best way to get to know your candidate is by meeting face-to-face and asking questions. Suggested questions are: What is your technical background? Do you specialize in prosecution or litigation or both? What direction do you want to take your career? Ask questions about why they are exploring other opportunities or why he/she wishes to leave the firm or company, if applicable. Ask about their geographic background, preference, and so on. Build a rapport with the candidate and client so that you are comfortable discussing the actual work involved. Don't be afraid to ask questions and never be dishonest about what and how much you know about the IP field. Make sure you and the candidate are a "good fit."

Conclusion

The IP field is a unique one. With respect to IP recruitment, it is important and beneficial for a search consultant to learn and understand the basics of IP, differentiate the types of IP positions and careers that are available, and fine-tune their recruiting abilities to help successfully increase the client's and candidate's chances of finding a proper fit. Go out of your way to locate stellar IP candidates and proudly represent them. A search consultant can better assist everyone by acquiring the knowledge and understanding of what actually goes on behind the scenes in the IP field. Many good recruiters have shied away from IP recruitment because they perceived it to be too esoteric, or perhaps found the prospect of dealing with cerebral scientific professionals intimidating. However, with an open mind, and a broad knowledge of IP matters (and an appreciation of their relevance to successful IP recruitment), such misgivings can be overcome.

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