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Intellectual Property

Overview

Intellectual Property practice generally falls into one of three buckets: transactional IP, IP litigation, and patent prosecution. It is rare for an attorney to work in both IP transactions and litigation at a large firm but more common in smaller practices. Transactional IP attorneys work on transactions to license intellectual property assets or in support of M&A transactions to handle the IP-related issues in such deals. IP litigators work on disputes involving patents, copyrights, trademarks, and trade secrets. Patent prosecution involves assisting clients in obtaining patents from the Patent and Trademark Office. Patent prosecutors are required to have a science degree and to pass the Patent Bar examination. Patent lawyers evaluate whether their client’s request impinges on other intellectual property, defend against opposition to client’s applications in administrative trials, and oppose applications that impinge on the client’s intellectual property. Lawyers working in “hard IP”—patents and biotech assets—are often required to have a technical background even if not practicing before the patent bar and an undergraduate or graduate degree in science or engineering is helpful. IP lawyers need to fully understand the technologies, products, and businesses of their clients to represent their clients well.

Featured Q&A's
Get an insider's view on working in Intellectual Property from real lawyers in the practice area.
Nicholas Plassaras, Associate
Fenwick & West LLP

Describe your practice area and what it entails.

My practice involves a mix of litigation and IP counseling work. On the litigation front, I help clients assess the legal and strategic components of initiating or responding to a lawsuit, I write briefs and other documents submitted to the court, as well as assist in any related research, and I manage various other case-specific tasks. On the counseling front, I identify copyright, trademark, and other IP-related risk and then help in-house counsel educate their business teams, product developers, and marketing departments on ways to achieve their goals in light of that risk.

What types of clients do you represent?

I represent a variety of technology clients, but the majority of my clients are from the video game space. As a life-long gamer, being able to work alongside some of the biggest names in the industry is a real treat!

What types of cases/deals do you work on?

I work primarily on cases involving copyright, trademark, unfair competition claims, and the right of publicity. My counseling work also overlaps with each of these areas. In addition to that, I help many of our clients register their copyrights with the U.S. Copyright Office.

How did you choose this practice area?

I was honest with myself about what I was passionate about. The intersection of law and tech fascinated me in law school, and intellectual property law seemed liked the most interesting way to get involved in that area. And my natural interest in the gaming space made for the perfect fit.

What is a typical day like and/or what are some common tasks you perform?

My day generally involves some combination of case management (planning for deadlines; managing and delegating tasks), writing tasks (letters, briefs, research summaries), and calls with clients. I also often help draft guidance that clients can use to help inform their internal teams.

What training, classes, experience, or skills development would you recommend to someone who wishes to enter your practice area?

There are a number of very helpful legal blogs out there that do a great job of keeping me up to date on the latest substantive developments. Beyond that, I’ve found that clients really appreciate when you, as their lawyer, really “get” how their industry works and what their product or service does. So if you’re passionate about a particular industry (like I am), I encourage you to try and keep a finger on the pulse of the market. It can really help inform your overall work. 

What is the most challenging aspect of practicing in this area?

Clients in this space are often at the cutting edge of tech, which usually means they’re at the bleeding edge of the where the law is. Bridging that gap can be challenging (but exciting!) because there aren’t always clear answers. But empowering clients to be leaders in these areas can be a very rewarding experience.

What do you like best about your practice area?

The types of clients I get to work with, especially those in the video game industry. As a consumer and admirer of so many of my clients’ businesses, it’s a true privilege to be able to work with them in tackling some of their most pressing problems.

What misconceptions exist about your practice area?

Sometimes people are surprised to learn that my practice is so video-game focused. But the video game industry is one of the largest and fastest-growing entertainment industries, and it faces some of the most complex, interesting, and impactful legal issues.

What advice do you have for lawyers without technical or science backgrounds who want to practice in IP?

In almost all instances, you don’t need it, so don’t worry. Unless you plan on practicing certain types of patent law, a technical or science background isn’t a requirement. Being a good writer, a fast learner, and an effective communicator is much more important.

Nicholas Plassaras, Associate—Litigation

Nicholas Plassaras focuses on intellectual property litigation and counseling, with an emphasis on copyright, trademark, false advertising, right of publicity, and complex commercial litigation matters. An active member of the Video Game Bar Association, Nicholas works closely with Fenwick’s video game clients, advising them at all stages of game development, marketing, and dispute resolution. He provides strategic counseling on IP enforcement, new business models, and branding strategy. Nicholas also regularly assists clients with IP management, including copyright registrations, recordations, and assignments.

Amanda K. Murphy, Ph.D., Partner • Daniel C. Tucker, Associate
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP

Describe your practice area and what it entails.

Amanda: My practice focuses on assisting our clients to protect their most valuable assets, evaluating which technologies they should take to market and clearing their pathway to market by providing patentability and freedom-to-operate opinions, preparing and prosecuting U.S. and foreign patent applications, and challenging and defending patents before PTAB.

Dan: My practice includes patent litigation in U.S. district courts, post-grant proceedings before the United States Patent & Trademark Office (PTO), and appeals to the Federal Circuit from both the district courts and the PTO.

What types of clients do you represent?

Amanda: I represent a range of clients, including small startup companies, research foundations, and large biotechnology and pharmaceutical companies.

Dan: I represent mostly large multinational organizations that are innovating across a broad range of industries and technologies. This includes companies in the wireless, semiconductor, Internet, shipping/logistics, medical device, and consumer technology industries. While much of my work is on behalf of U.S.-based companies, a large amount is also on behalf of companies based in Europe and Asia.

What types of cases/deals do you work on?

Amanda: My practice involves an equal balance between contentious and non-contentious proceedings before the USPTO, including supplemental examinations, ex parte reexaminations, reissues, IPRs, and PGRs.

Dan: I work primarily on contentious patent disputes between our clients and another party. Often, this will include an underlying district court patent litigation where the plaintiff/patentee is alleging that the defendant infringes its patents (I have represented both plaintiffs and defendants). It also usually involves co-pending challenges to the validity of those patents in post-grant proceedings at the PTO. I also handle the appeals of district court and PTO cases.

How did you choose this practice area?

Amanda: I first became interested in patent law as an undergraduate when I learned that the HIV genome had been sequenced and patented. Realizing the key role that patents play in incentivizing pharmaceutical companies to invest in the research and development of new life-saving technologies, I knew I had to be a part of that process. As a first step toward that goal, I completed a Ph.D. in biochemistry studying retrovirology. I then joined Finnegan and have been assisting companies with their intellectual property needs ever since.

Dan: After working in engineering for several years, I decided I needed something more exciting. While I loved technology (I’m an electrical engineer by training), I also have always loved to write. Patent law seemed like a promising fit for those two passions. So I took a job as a patent agent at a boutique law firm outside of Washington, DC, for a little over a year to test the waters. That experience convinced me that patent law was a fun and exciting career, so I applied to law school and never looked back.

What is a typical day like and/or what are some common tasks you perform?

Amanda: Most days involve a mix of teleconferences with clients, inventors, and experts to develop technical and legal positions; internal strategy meetings with other members of the firm to coordinate efforts on projects; and time spent in front of the computer researching and preparing written work product.

Dan: A great thing about this job is that there isn’t a “typical day.” In any given month, I’ll have days where I’m drafting a motion, preparing for an oral argument, giving a speech on patent law to colleagues or clients, or traveling across the country (or world) for a deposition or hearing. These wildly different tasks keep life interesting and force you to continually develop and improve a wide set of skills.

What training, classes, experience, or skills development would you recommend to someone who wishes to enter your practice area?

Amanda: An advanced technical degree and strong persuasive writing skills are essential for a career in patent counseling, portfolio management, and patent prosecution. Courses that offer practical experiences in drafting legal documents and oral advocacy will be the most valuable.

Dan: Aside from one or more patent law classes, I think that evidence and administrative law classes are a must. Evidence is required for any litigator, and with the American Invents Act passed in 2012, there have been and will continue to be many interesting administrative law questions surrounding patent law. Classes, training, and student groups that improve oral and written advocacy are also important.

What is unique about this practice area at your firm?

Amanda: Finnegan is unique because it is a full-service IP-only law firm. Our professionals have experience in almost every area of technology, and we practice all aspects of IP law—from patent prosecution, licensing, and litigation to copyrights and trademarks. We are IP experts because that is all we do.

Dan: There are two related aspects that make Finnegan unique in IP. First, our depth of technical and IP-related legal knowledge is unparalleled. We have more than 300 professionals who are focused almost exclusively on IP. This means that whatever problem you encounter during a particular case, someone else at the firm has been through that same problem or a similar one. Second, we have a level of collegiality that I don’t think exists at many large firms. This means that not only does someone at the firm likely know the answer to your question, but they also want to help you. Couple these two things together—depth of knowledge and collegiality—and the end result is a place uniquely positioned to tackle the most complex IP issues while developing top-notch IP attorneys.

What are some typical tasks that a junior lawyer would perform in this practice area?

Amanda:    One of Finnegan’s unique strengths in the patent prosecution and counseling areas is its deep bench of technical specialists and student associates. These more junior members of the firm work directly with in-house counsel and inventors under the supervision of more senior attorneys at the firm on all aspects of patent prosecution, including drafting patent applications, responding to office actions, analyzing prior art, and conducting examiner interviews.

Dan: This varies based on an attorney’s specific practice area, abilities, and experience before joining the firm, but I would generally say that the sky is the limit. As an example, just this year I worked with a second-year associate who not only prepared motions before the district and papers in several post-grant proceeding before the PTO, but also argued at the oral argument before the PTO, took and defended several depositions, and took direct testimony of a witness during a district court trial. This case might be a bit of an outlier, but it demonstrates that a strong work ethic and exemplary work are rewarded with fulfilling opportunities.

What kinds of experience can summer associates gain in this practice area at your firm?

Amanda: Summer associates who are interested in gaining patent prosecution and client counseling experience typically assist with drafting responses to office actions and conducting examiner interviews. Such projects often include conducting legal research, analyzing prior art, developing legal and technical theories, and preparing persuasive legal documents and memoranda.

Dan: During our summer program, we try to expose our summer associates to all aspects of IP law. Taking patent law as an example, we try to get summer associates at least some experience in patent prosecution (obtaining patents from the PTO), patent litigation (asserting patents at U.S. district courts or the International Trade Commission), and post-grant proceedings before the PTO (such as inter partes review proceedings). We provide the summer associates with formal and informal training in all of these substantive areas of the law. We also introduce summer associates to several important “non-billable” activities, such as business development, speaking, and writing for publications.

What are some typical career paths for lawyers in this practice area?

Dan: There are countless options for lawyers in IP law. For example, in addition to working at a law firm, IP attorneys can pursue “in-house” positions as employees of companies (almost every mid-sized or larger company has in-house IP counsel). The federal government also employs IP attorneys in many capacities (e.g., as administrative patent judges at the Patent Trial and Appeal Board of the PTO or as attorneys who represent the government in federal court and/or at the ITC).

Amanda K. Murphy, Ph.D., Partner, and Daniel C. Tucker, Associate—Intellectual Property

Amanda K. Murphy, Ph.D., focuses her practice on strategic client counseling, global portfolio management, and patent prosecution in the biotechnology and pharmaceutical areas. In addition to her patent counseling and prosecution practice, Amanda also represents both patentees and petitioners in contentious post-grant proceedings before the Patent Trial and Appeal Board (PTAB).

Dan C. Tucker focuses his practice on the interplay among district court patent litigation, post-grant proceedings at the U.S. Patent and Trademark Office, and Federal Circuit appeals. He has represented clients across a broad range of technologies, including wireless/cellular communications, semiconductor technology, consumer electronics, and internet services. Before law school, Dan worked as an engineer for General Electric in the transportation industry and for Lockheed Martin in the aerospace industry.

Forrest Flemming, Associate
Kilpatrick Townsend & Stockton LLP

Describe your practice area and what it entails.

I focus my practice primarily on trademark enforcement and litigation—I manage nationwide brand-protection programs for clients, specifically in the brick-and-mortar retail space and on the internet. I also represent both plaintiffs and defendants in high-profile trademark cases in federal trial and appellate courts.

What types of clients do you represent?

I represent a variety of major brands, including global leaders in finance, athletic wear (adidas), social media (Facebook), automobiles, lifestyle clothing, internet media services (Yahoo), and travel booking (Expedia).

What types of cases/deals do you work on?

I mainly handle federal court trademark infringement actions, representing both plaintiffs and defendants in trial and appellate courts. My clients have prevailed in temporary restraining order and preliminary injunction proceedings, as well as in summary judgment, trial, and appeal actions. My cases range from smaller two-party matters to high-stakes litigation with up to a dozen parties, dozens of witnesses, and several experts per side.

How did you choose this practice area?

I’ve always been fascinated with brands and the way organizations represent themselves to the public to distinguish themselves from other companies. A trademark is a very personal asset, and I wanted to incorporate that aspect of a business into my daily legal practice. I selected trademark litigation specifically after developing general litigation skills—which translated perfectly into trademark litigation work—in law school and during my federal clerkship. After determining my legal path, Kilpatrick Townsend became my first choice of employment based on its innovative attorneys and the Intellectual Property group’s stellar reputation among national publications and IP experts. Unlike many full-service firms, Kilpatrick Townsend features IP as a core practice area, which really appealed to me.

What is a typical day like and/or what are some common tasks you perform?

Every day, I communicate with my clients, counseling them on their brand-protection programs, providing risk assessments, and negotiating with infringers. The rest of my day, I draft briefs, run e-discovery, take depositions, and do anything else I can—as efficiently as I can—to ensure my clients hold the best position possible in their litigations.

What training, classes, experience, or skills development would you recommend to someone who wishes to enter your practice area?

Trademark litigation is still litigation, so any litigation skills acquired will always translate well. For trademark enforcement, efficient management skills are also a must. Large brands faced with large numbers of infringers need effective team management—especially when handling dozens of matters at a time—as well as first-rate client service.

What do you like best about your practice area?

Brands represent an integral part of our clients’ businesses. Since they embody the image and the message the client wants to convey to the world, protecting a brand is like protecting a client’s identity. My favorite part of my practice area is learning more about my clients—their history, their vision, and what they stand for—so I can best represent and protect their IP business assets and reputations.

What misconceptions exist about your practice area?

Many law students dismiss intellectual property because they don’t have a scientific background. But trademark and copyright work—and even some patent work—do not require science degrees. I, for one, have a degree in vocal performance, not physics. I highly recommend that those interested in pursuing a career in trademark and copyright law do so since there are no prerequisites standing between them and those practice areas.

How do you see this practice area evolving in the future?

The answer I would give today is the same answer I would have given back when I started my legal career: the internet and the resultant globalization of consumer markets has significantly increased the importance of online brand protection. Infringers can deceive huge numbers of consumers via the internet at little-to-no cost, and their methods of concealing their identities only get more sophisticated. These developments make online brand protection more crucial from a branding perspective—but also more difficult—every year.

What are some typical career paths for lawyers in this practice area?

Working at a traditional law firm or as an in-house attorney. At Kilpatrick Townsend, all associates have the opportunity to achieve partner status, but given the level of client engagement with companies that sometimes have entire departments of intellectual property attorneys, in-house opportunities often arise. Almost invariably, Kilpatrick Townsend trademark attorneys who subsequently go in-house continue to work with the firm on all of its trademark matters.

Forrest Flemming, Associate—Intellectual Property

New York associate Forrest Flemming works in the Intellectual Property department at Kilpatrick Townsend, where he focuses his practice on trademark law. Before joining the firm, Mr. Flemming served as a judicial law clerk for the Honorable C. Lynwood Smith, Jr. in the U.S. District Court for the Northern District of Alabama and worked as a summer associate for Kilpatrick Townsend in 2012 and 2013.

Mr. Flemming graduated from Emory University School of Law (with honors), where he served as a research assistant to Vice Dean Robert B. Ahdieh and Professor Peter Hay, as well as the notes and comments editor of the Emory Law Journal. Mr. Flemming received his Bachelor of Music degree from the University of North Carolina at Chapel Hill, where he acted as a research assistant for the Honorable Richard Y. Stevens in Raleigh, North Carolina.

Paul Bondor, Partner • Kerri-Ann Limbeek, Associate
Desmarais LLP

Describe your practice area and what it entails.

Paul: My practice focuses on patent infringement jury trials in federal courts. Since a trial doesn’t happen overnight, my daily work spans courtroom hearings and motion arguments, fact depositions, expert reports, and depositions, all the way through the jury trial, post-trial arguments, and appeal. Basically, I’m always working with my colleagues to develop our client’s case on the merits, including the technical details required to prove (or fight) infringement and validity of the patents at issue, as well as damages-related evidence.

Kerri-Ann: Complex technology-driven disputes are the core of our practice. My practice focuses on patent infringement litigation in federal courts, as well as inter partes reviews (IPRs) before the Patent Trial and Appeal Board. The technologies involved in our cases span many industries, including medical devices, biotechnology, pharmaceuticals, semiconductors, smartphones, and computer hardware and software.

What types of clients do you represent?

Paul: At Desmarais LLP, we represent blue-chip global technology powerhouses, substantial intellectual property licensing companies, and life sciences and medical device companies, as well as individual inventors with world-changing inventions. I’ve had the opportunity personally to work with all of these types of clients.

Kerri-Ann: We represent both plaintiffs and defendants, including large corporations, small companies, research institutions, and individual inventors across a broad spectrum of technology areas. Some of our clients include Cisco, Apple, GlaxoSmithKline, Nokia, IBM, and Intellectual Ventures.

What types of cases/deals do you work on?

Paul: High-profile patent infringement cases make up the bulk of our practice, but we also take on other high-stakes technology-related cases involving unfair competition, trade secret theft, and corporate raiding.

Kerri-Ann: I have worked on a number of patent litigations in district court, as well as on inter partes review proceedings. I work on cases involving a broad range of technologies, including medical devices, biotechnology, semiconductors, smartphones, and computer hardware and software. Some of the clients that I have had the opportunity to work with include Apple, Enzo Life Sciences, LifeCell, and Intellectual Ventures.

How did you choose this practice area?

Paul: I really like analytical and problem-solving challenges, and I enjoyed studying engineering in college. But I’m also a talker who loves argument, and I thought there would be more variety in practicing law. After two years as a federal law clerk watching jury trials and learning about effective advocacy and writing, I chose to go into intellectual properly litigation—a path that gives me all the excitement and challenge associated with trying a case in court, coupled with an endless variety of new technologies to learn about.

Kerri-Ann: I began my career in a general litigation group and worked on securities and other complex commercial litigations before deciding to focus on patent litigation. As soon as I started working on patent cases, I realized that this practice area was a perfect fit for me. Patent litigation allows me to learn about new technologies while providing the challenging and exciting legal work involved in litigating cases in court. Litigation also provides the opportunity to work with a team on each of my cases.

What is a typical day like and/or what are some common tasks you perform?

Paul: Typically, any given day will find me either in my office preparing for the next event, be it trial, a hearing, a meeting, or a deposition (or working with my team on litigation-related documents of all stripes: pleadings, briefs, and written discovery requests or responses) or on the road to get to a hearing or deposition, whether that’s in Delaware, California, Texas, Japan, or Taiwan.

Kerri-Ann: My typical day or week varies depending on the nature and stage of the cases that I am working on. In the early stages of a case, I may be interviewing engineers for discoverable information or developing a case strategy with my team. During fact discovery, I’ll be traveling to prepare witnesses and to take and defend depositions. During expert discovery, I’ll be working closely with expert witnesses to develop the theories we will present at trial, including drafting expert reports, preparing my experts for their depositions and taking and defending expert depositions. Throughout a case, I’ll also be drafting pleadings, written discovery, and briefs and preparing for hearings.

What training, classes, experience, or skills development would you recommend to someone who wishes to enter your practice area?

Paul: An undergraduate degree in engineering or science is certainly helpful. Once you get to law school, evidence and trial advocacy are also helpful—there’s no substitute for getting on your feet and presenting evidence and arguments in whatever forum is open to you.

Kerri-Ann: Although technical experience is helpful, I would recommend focusing on classes and experiences that help you to develop written and oral advocacy skills. Hands-on experience presenting evidence and arguments will help prepare you to think (and act) like a trial lawyer early in your career.

What is the most challenging aspect of practicing in this area?

Paul: I think the single biggest challenge is the task of explaining enormously complicated technology to judges and juries who are not familiar with it, who likely have no preexisting interest in it, and who almost certainly don’t come pre-equipped with an educational background in the area. In order to win, you not only have to make the technical aspects understandable, but you also have to provide enough of the rest of your client’s story to make the facts interesting and compelling.

Kerri-Ann: The most challenging part of my practice is quickly getting up to speed on complex technologies that I am not familiar with. However, learning about new technologies that are outside of my comfort zone is also one of the most rewarding and interesting parts of my practice. In addition, it’s often helpful to have members of a case team without a background in the specific technology area at issue to give perspective and insight on how to explain the technology to judges and jurors who may be unfamiliar with it.

What do you like best about your practice area?

Paul: Far and away, the best thing about my practice area is its astounding variety. Because you have to learn the technology at issue—understanding the details so well that you know it better than the technical experts—every matter gives a chance to learn fascinating stuff. You get to learn about it from passionate people, and each case is a story with its own cast of characters: witnesses, clients, judges, and opposing counsel. Everything is new, every time, and the endless variety makes working a lot of fun.

Kerri-Ann: My favorite part of my practice area is learning new technologies with every case. I love working with engineers and scientists employed by our clients, as well as technical expert witnesses to develop the legal and technical arguments that we will present to a jury.

What misconceptions exist about your practice area?

Paul: People are always surprised to hear that we try our cases to juries, because they assume that juries wouldn’t be able to understand the complex technology. But if the jury has trouble understanding our cases, we’re not doing our job. Likewise, people often think that you need a degree in engineering or the sciences to excel in patent litigation, but I think that it’s possible to succeed regardless of your background—if you’re not afraid of technology and if you’re smart, interested, and dedicated enough to push yourself to really learn it for each case. The only thing I wish I’d known at the outset is just how much on-your-feet experience helps you as a trial lawyer; I would have started even earlier with trial advocacy and clinic work in law school.

Kerri-Ann: One common misconception among law students (and one that I fell prey to) is that if you focus your practice on patent litigation, you may limit your career options in the future. In reality, I have found that patent cases provide far more opportunities for substantive work (like taking depositions, working with experts, and going to trial) than other types of complex commercial litigation, which involve a lot of early-stage document review and often settle before getting too far along in the discovery process. The skills that you build as a litigator are applicable to any subject area, so I think that the most important question to think about in deciding where to start your career is where you will get the best opportunities to learn and practice litigation skills.

What is unique about your practice area at your firm?

Paul: Though we concentrate on a single practice area, we differ from virtually every other law firm in our space because we do not bill by the hour. Instead, our alternative billing arrangements let us work more efficiently, focusing on the work necessary to win. By avoiding traditional incentives that encourage simply billing hours, we’re able to structure a variety of arrangements to meet a client’s needs more effectively.

Kerri-Ann: One of the unique aspects of our firm is that we do not bill by the hour, nor do we track billable hours. This causes all attorneys to focus on the issues that really matter to the case and results in associates getting real responsibility and hands-on experience from the time we are very junior. The focus at Desmarais is always on the quality of the work product rather than the hours spent in the office. Additionally, Desmarais is only seven years old, and it still has the feel of a startup. Rather than focusing on how things have been done traditionally, the firm listens to associate input and adapts. For example, associates meet with John Desmarais every quarter and discuss ideas for making the firm better. It’s exciting to work somewhere that allows associates to have a real voice!

Paul Bondor, Partner, and Kerri-Ann Limbeek, Associate—Intellectual Property

Paul Bondor is a partner at Desmarais LLP. After studying mechanical and aerospace engineering at Princeton University, he attended the University of Michigan Law School, where he served on the Michigan Law Review. He clerked for the Hon. Louis L. Stanton in the U.S. District Court for the Southern District of New York from 1993–1995 and then began private practice at Kenyon & Kenyon, where he became a partner in 2001. He was also a partner in Kirkland & Ellis’ New York office from 2004–2011.

Kerri-Ann Limbeek graduated from the University of Pennsylvania in 2010 with a degree in chemical and biomolecular engineering and from the University of Chicago Law School in 2013. After spending two years in the Litigation group at Sullivan & Cromwell LLP, Ms. Limbeek joined Desmarais LLP in 2015.

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