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Legal Staff Opportunities in Intellectual Property

published January 31, 2005

Ursula Furi-Perry
( 21 votes, average: 4.2 out of 5)
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<<"The field of intellectual property is constantly changing, and there are new areas coming up every day," says Sharon Dunham, Trademark Coordinator at Preston Gates & Ellis, LLP, and Co-Chair of the Intellectual Property Group of the Oregon Paralegal Association. Intellectual property isn't just for fledgling authors or large companies with inventions of their own. "IP affects many different (spectrums), including research, technology, and day-to-day employment," Ms. Dunham explains. "Even with a downturn in the economy, there are always IP opportunities."

Legal staff who work in intellectual property perform a variety of tasks and fill many titles. "I communicate with foreign agents regarding clients' international portfolios and with clients regarding the status of their (applications). I also monitor clients' portfolios and look out for anything that may be infringing (upon them)," Ms. Dunham says. "I begin my day by running docket checks," says Lyza Sandgren, experienced IP paralegal, Owner of Sandgren IP Paralegal Services, and Speaker Bureau Coordinator for the Georgia Association of Paralegals. "After that, my days (consist of) a mixture of tasks, including filing things for clients and attorneys." IP paralegals and legal assistants often assist attorneys with deadlines and compliance, docketing, and client correspondence. "In some ways, paralegals and legal assistants are more utilized in IP than many other arenas, because the attorney often relies on (legal staff) for rules and procedures," Ms. Sandgren says.

Intellectual property can be quite a specialized field, encompassing copyrights, patents, trademarks and trade secrets. Those specialties can be further broken down into even more narrow subjects; for example, some firms specialize in patent litigation while others deal exclusively with copyright infringement. As such, all IP legal staff must stay on top of their games. "Attending seminars and conferences is very important," Ms. Dunham believes. "Continuing legal education classes for intellectual property are fewer and far in-between (than other areas), and it's hard to find courses at times; therefore, participation is crucial."

Seminars and continued training keep legal staff abreast of IP developments. "(Paralegals and legal assistants) must know all the rules and procedures," says Ms. Sandgren. "You never know what an examiner will refuse." Those dealing with international cases have even more on their plates, as many nations' intellectual property laws differ from American ones. "At times, even clients don't understand why we're asking them for something specific, and it's challenging to explain," Ms. Dunham says.

Besides continued training, legal staff working in the field must have a keen attention to detail. "IP is all about details," says Ms. Sandgren. "In fact, the details can mean the difference between success and failure and between lawsuit and no lawsuit." Clients often have much on the line with each application, so paralegals and legal assistants have to be attentive. "You could be dealing with millions of dollars and the lifeblood of the client," Ms. Sandgren explains. "If you can't protect the client, the losses can be staggering, so (paralegals) must feel a duty to help clients." Part of that duty lies in due dates and deadlines, which are always popping up in intellectual property. "There are many filing deadlines," says Ms. Dunham. "In addition, (paralegals and legal assistants) must be especially efficient when billing clients."

The intellectual property field holds plenty of rewards for hardworking and efficient legal staff. Besides paying their paralegals and legal secretaries well, IP firms also offer job satisfaction to the right individuals. "(The cases) can be like puzzles in some ways, and there's a thrill in completing the puzzle," Ms. Sandgren says. "Driving down the street and seeing a trademark with which you've helped a client is very rewarding," says Ms. Dunham.