Law Career Talk: Intellectual Property and Patent Law

The following is a summary of a UMass lawyer-alumni career talk offered on March 31, 2005, sponsored by the UMass Pre-Law Advising Office.

Nicholas Triano, III, Mintz Levin, Boston
Biochemistry and Chemistry, ‘83
Suffolk Law, ‘91

Joshua Grey, Bulkley Richardson & Gelinas, Springfield
History, ‘97
Northwestern Law, ‘01

Q: How did you get into this area of law?

Attorney Triano was working as a bench chemist for several years, and had never considered law school until his then-future wife started at Suffolk Law. He sat in on a couple of classes and found himself immediately interested. Further investigation revealed that his science background would serve him well in the area of patent law. He attended Suffolk part-time while continuing to work in a high-tech firm.

The combination of his experience and legal education made for a relatively easy job search, and he was offered a position in the in-house counsel department of a large multi-national corporation, with offices in the Midwest. During the interview process, however, he learned that a former employee in the department was a UMass alum in Boston, and he gave him a call to ask why he had left. Attorney Triano ended up being offered a job in his fellow alum’s law firm in Boston, which he chose over the large corporation.

Attorney Grey has a longstanding interest in popular culture and the media, and thought intellectual property (the area of law governing copyright and trademark protection) would be a natural for him. After a year working in Los Angeles, he went to Northwestern Law in large part due to the school’s location and practical approach in teaching.

Right out of law school, Attorney Grey took a job in a large firm in Boston, only to find himself laid off a few months later when the dot-com bubble burst. Observing that many attorneys in large firms eventually left for smaller work settings and a better quality of life, Attorney Grey decided not to delay giving himself that better quality of life. He found a job in Springfield.

Q: What is your job like?  What kind of work do you do?

Attorney Grey’s work involves the registration, clearance, licensing and protection of trademarks and copyrights. For the most part, this work does not involve litigation. Rather, it involves researching existing trademarks for their similarities to a client’s proposed trademark, advising the client on any necessary changes in the proposed trademarked logo, slogan, process, etc. and applying for trademark protection through the federal government. Attorney Grey does engage in litigation involving allegations of trademark infringement. Almost all of such litigation eventually settles before trial.

Attorney Triano works in the related but distinct area of patent law. Patents essentially provide a system of ownership for new technologies – by patenting a new product or technique, a company is entitled to claim it as its own property and seek compensation if someone else uses it without authorization. Attorney Triano’s work consists primarily of seeking approval from the U.S. Patent and Trademark Office for his clients’ proposed patents (called “patent prosecution”).

In addition, Attorney Triano assists his biotech clients in the preparation of initial public offerings (IPOs or “going public”).

Q: Do you need special training to do this work?  Should you attend a law school with a specialization in intellectual property?

Attorney Triano stressed that the practice of patent law requires a scientific background prior to law school. He is especially interested in reaching out to UMass students in the sciences who have not previously contemplated patent law as a possible career path.

Attorney Grey did take advantage of the special programs and available clinic work in Intellectual Property offered at Northwestern University Law School, and especially appreciated the number of courses he was able to take that were taught by current practitioners in the field, rather than academics.

Q: What was your law school experience like?

Attorney Triano describes his experience in Suffolk’s part-time program as “business-like.” Most of the students were working during the day and taking classes at night. As a result, there was a very pragmatic and practical focus to the classes and discussions. He worked during the day, went to classes at night and studied on the weekends. He regrets not having as much time with professors or opportunities to meet employers as students in the day program had. On the other hand, his debt load upon graduation was minimal.

Attorney Grey found his first year of law school was reminiscent of high school, from a social perspective. This was in large part due to it being a much smaller school than UMass. The student body was evenly split between three groups: those who came straight from college, those who had taken a year or two off, and those who had been out of college for considerably longer. The first year was hard, and seemed to focus on “learning how to be a law student.” During his second and third years, Attorney Grey appreciated that most of his intellectual property professors were actual practitioners, not academics, who taught as adjuncts. In addition, the Small Business Opportunity Clinic gave him a chance to represent clients in business-related matters while he was still a law student.

Q: Were your grades in law school important?

Both attorneys agree that grades were very important during their job searches.

Q: How many hours a day or week do you work?  How much does a first year attorney at your firm earn?

Attorney Triano works at a large firm in Boston, where the required number of billable hours (i.e., time spent on cases that can be billed to clients) is 1925 per year, or approximately 37 hours a week for 52 weeks. In order to bill that many hours, the average attorney would need to work at least 55-60 hours/week. First year attorneys at large Boston law firms can expect to earn $125,000 annually.

Attorney Grey works at Springfield’s largest firm, which is small by big city standards. There, the required billable hours is 1750, or roughly 33 hours per week over 52 weeks. Attorney Grey generally finds himself at the office from 8:00 am to 7:00 pm every day. He notes that attorneys who do transactional work generally need to put in more hours to meet the billable requirement than do litigators, since the latter can bill for certain types of “down time”, like waiting in court. First year attorneys at Springfield’s larger firms can expect to earn about $45,000-$55,000 annually.

Q: What does the job market look like for attorneys in intellectual property?

Both attorneys agreed that the demand for attorneys in IP is strong and will continue apace, if not grow, in the foreseeable future.