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Kevin Bentley
CST300-30_FA18
September 16, 2018

Patent and Intellectual Property Law

Intellectual property law involves more than just attorneys. Attorneys are specialists in

law, but often they do not understand the detailed science or engineering aspects of the legal

work they are involved in. Some of the opportunities in the legal field for engineers or computer

scientists who are not traditional lawyers includes patent agents (also known as patent

practitioners) and expert witnesses.

The Industry

The major players in the industry are primarily large law firms, but small firms and

independent attorneys also play a part. Some of the large law firms engaged in this field include

Carr & Ferrell L.L.P, WilmerHale, and Snell & Wilmer.

Company Profile

Snell & Wilmer L.L.P. is a useful example of a large law firm in the area of intellectual

property law. They were founded in 1938 and employ more than 400 attorneys in locations

across the United States (About Snell & Wilmer, n.d.). Snell & Wilmer has represented clients in

several landmark legal cases involving intellectual property including a lawsuit between

International Business Machines Corporation (IBM) and The Santa Cruz Operation, Inc. (SCO).

In this case, legal issues regarding ownership and intellectual property rights of certain

technology in the Linux operating system was decided (SCO Group Inc V. International

Business Machines Corporation, 2017).

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Mr. Sid Leach is one of the many partner attorneys in the law firm of Snell & Wilmer

(Sid Leach, n.d.). Mr. Leach obtained a B.S.E.E degree in 1975 and a Doctor of Jurisprudence

degree in 1978 (Sid Leach, n.d.). According to his Bio on the Snell & Wilmer website, his

practice includes several aspects of intellectual property issues in the field of computers and

electronics (Sid Leach, n.d.). Representing a client in a technical field may require the

explanation of complex technical concepts to non-technical people. For example, a jury deciding

on a trial may include people with very little or no technical experience. The case may depend on

specific technical details of a case, so it will be up to the attorneys to make sure the jury receives

the proper information in an easily understood manner. As an attorney with both an engineering

and law background, Mr. Leach is well suited to explain the relevant technical aspects of a case

while representing clients in technical areas.

As denoted by the L.L.P abbreviation in the name Snell & Wilmer L.L.P., Snell &

Wilmer is a limited liability partnership, meaning they are a closely held organization. As such, it

is not surprising that they do not publicly disclose their finances.

Industry Trends

As our society becomes increasingly dependent on technologies such as smartphones,

apps, and medical technologies, businesses are investing large amounts of money to produce new

products and technology to create or maintain their place in the market. To protect their

investment, intellectual property must be protected. According to Brian Riopelle, a partner at the

law firm McGuireWoods, "Many more companies are realizing the value of their intellectual

property and are trying to turn their intellectual property into sources of revenue." (Griffith, n.d.).
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It is reasonable to assume that the demand for legal protection of intellectual property will also

continue to grow.

There are frequent reports in the technology media of patent “trolls” who amass a large

portfolio of patents and other intellectual property rights but do not innovate or create intellectual

property. They make money by threatening a lawsuit if a “fee” is not paid. In this case, a

business or individual is faced with the choice between defending the accusation, which can be

extremely expensive, or to pay the fee (Leach, 2008). These potential abuses may prevent

businesses from innovating (Meurer, 2016). Lawyers must carefully investigate a patent

infringement case before taking it to court because unlike many other types of lawsuits, lawyers

themselves (not their clients) face steep penalties if they do not adequately investigate a claim

before filing a lawsuit (Leach, 2008).

Intellectual property law requires a complex mix of legal and technical expertise. While

there are about 1,500,000 attorneys in the United States, only about 20,000 of them are licensed

to practice patent law. ("Is a career in intellectual property law for you?", 2018). As we have

seen, there is a growing demand for this increasingly complex expertise. An engineer/attorney

should have no problem finding work in the patent field, but most engineers probably do not

desire to, or cannot attend law school and become an attorney. However, as we will see, there are

other options for a technical person to work in this field.

Job Interests

Patent Agent

Patent Agents are those who pass the so-called US Patent Bar but are not lawyers. They

are licensed by the US Patent and Trademark Office (USPTO) to provide the services of
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preparing and filing patents. They are not allowed to practice law in the court, but they can

represent clients within the USPTO. ("Patent Agent vs Patent Attorney: Everything You Need to

Know", 2018). The USPTO outlines specific requirements necessary to qualify as a Patent

Agent.

The Patent Bar is officially called the “Examination for Registration to Practice in Patent

Cases Before the United States Patent and Trademark Office”. Passing this examination is

required to be recognized as a Patent Agent. The examination consists of 100 multiple choice

questions, which you are permitted six hours to complete. ("General Requirements Bulletin”,

2018).

To be eligible to take the Patent Bar, several educational requirements must be met.

These requirements are separated into three Categories:

● Category A requires an Accreditation Board for Engineering and Technology (ABET)

accredited bachelor's degree in a Recognized Technical Subject, which includes computer

science and many engineering degrees.

● Category B allows for a​ ​bachelor's degree that is not ABET accredited or is in a subject

not listed in Category A. This category has several options, each of which require specific

courses on the transcript. This category lists specific credit hour requirements in each

subject and has special rules and course requirements for computer science degrees.

● Category C requires passing a state Fundamentals of Engineering (FE) exam. With this

approach, you have to meet whatever requirements a state has to take and pass the FE

examination. Most states require an engineering degree to be eligible to take this

examination ("General Requirements Bulletin, 2018).

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Patent Agent is an interesting job option because it is a technical field that involves

aspects of intellectual property law. In this position, you could be working with inventors across

many fields, being exposed to creative and innovative ideas. As we have seen, while the job does

not require a degree in law, at the minimum it requires a bachelor's degree and extensive

technical coursework.

Expert Witness

Expert Witnesses are hired by attorneys on behalf of their clients to analyze the facts of a

case and are permitted by the courts to testify as to the facts in their fields, as well as in the form

of an opinion (Testimony by Expert Witnesses, 2011). Expert witnesses may be involved in all

aspects of legal issues, from pre-litigation through trials and appeals (Echaore-McDavid, 2007).

An expert witness needs to have sufficient education, experience, and reputation because as an

expert witness, the opposing side will be looking for any weakness in your qualifications in an

attempt to discredit you (Park, 2018).

The function of the expert witness is to communicate facts and opinions in their field to

the judge and jury and to influence the outcome of the case in a way that is favorable to the

client. Because of this, expert witnesses need strong oral and written communication skills in

addition to their technical qualifications (Echaore-McDavid, 2007). If an expert is unable to

confidently and eloquently communicate, none of their technical qualifications will matter. If an

expert witness lacks confidence under examination in a trial, it is doubtful that the judge and jury

will have confidence in their qualifications either.

Working as an expert witness is appealing because each case provides new challenges.

There is a clear objective (to win in court, or through a favorable settlement). The job can be
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flexible and the pay can be very high, with some experts earning more than $300 per hour

(Echaore-McDavid, 2007). Unlike many technical jobs, age might be seen as an advantage

because a judge and/or jury may perceive an older person with many years of experience as more

credible.

Job Preparation Plan

As we have seen, patent agents have specific education requirements and expert

witnesses need the educational qualifications to establish their credibility in a field. At a

minimum, a bachelor's degree is required. For a patent agent, the simplest path to qualify for the

Patent Bar examination is to obtain an ABET accredited degree in an engineering or computer

science program (Category A). As someone who travels extensively for business and is not able

to attend daytime classes at a traditional university, online classes are the only viable option.

There are few online computer science programs that are ABET accredited, and the few that are

can be very expensive or not flexible enough. In this case, the best path forward is to follow

Category B, option four.

According to the General Requirements Bulletin (2018), when using the Category B,

option four with a computer science degree, eight semester hours of physics or chemistry is

required in addition to 32 semester hours of other computer science courses are needed. These

courses must be focused on theoretical subjects such as algorithms and computer architecture.

For half-semester or trimester classes, each credit hour can be counted as 2/3 of an hour. Each

course used to fulfill the requirements under this option must appear on a transcript and must be

accompanied by the course description from the school catalog for the year the course was taken.

Thus, it is very important to keep records and a copy of the course catalog for each class taken.
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Based on the General Requirements Bulletin (2018) and the California State University at

Monterey Bay Program Structure & Courses (2018), one or two additional computer science

elective classes may be required in order to meet the USPTO requirements. Artificial Intelligence

and Cryptography may be good electives to choose as they would add additional subjects that

may come up in patent and intellectual cases.

An expert witness first and foremost must have the proper qualifications in order to be

credible. A degree in the relevant field is likely to be one of the first indications that an expert is

qualified. Therefore, for someone interested in a job in the patent and intellectual property law

field, a degree is critical. Qualification as a registered patent agent would further increase the

credibility of the witness, as it requires a thorough understanding of patent law and process. It is

logical then that the path to employment as an expert witness begins with a computer science

bachelor's degree, followed by studying for and passing the USPTO examination.

Strong qualifications as an expert witness will not guarantee that work will be offered

though. Membership and participation in professional organizations and societies may provide

networking opportunities (Echaore-McDavid, 2007). Writing and publishing papers for

conferences and journals can help establish expert qualifications in a field. Further, writing blogs

or articles that describe complex technical issues for a general audience will show potential

clients that you have the communications skills needed in the courtroom.

As we have seen, there are career options for computer science students who do not wish

to go to law school. A job as a USPTO patent agent is one of those positions that can be pursued

early in a person’s career and later in the career, when a student has more experience, working as
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an expert witness is viable. With either of these career choices, a bachelor’s degree is both

necessary, and beneficial.

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References

About Snell & Wilmer. (n.d.). Retrieved September 6, 2018, from

https://www.swlaw.com/the-firm

Echaore-McDavid, S. (2007). ​Career opportunities in law and the legal industry​ (2nd ed., pp.

120-121). Checkmark Books.

General Requirements Bulletin for Admission to the Examination for Registration to Practice in

Patent Cases before the United States Patent and Trademark Office. (2018, February).

Retrieved from https://www.uspto.gov/sites/default/files/documents/OED_GRB.pdf

Griffith, C. Intellectual Property: A Hot Market?. Retrieved from

https://www.lawcrossing.com/article/376/Intellectual-Property-A-Hot-Market/

Is a career in intellectual property law for you?, (2018). Retrieved from

https://careers.findlaw.com/legal-career-options/is-a-career-in-intellectual-property-law-f

or-you.html

Leach, S. (2008, March 6). Pre-Filing Investigations. ​State Bar of Texas.​ Retrieved from

http://www.texasbarcle.com/Materials/Events/7437/53913_01.pdf

Meurer, M. J. (2016). Current Issues In Patent Law And Policy. ​Harvard Journal of Law and

Public Policy​, 39(1), 71-78. Available from

https://search-proquest-com.library2.csumb.edu:2248/docview/1764288607?accountid=1

0355

Park, J. (2018). Effective Cross Examination of an Expert Witness. Retrieved from

https://www.americanbar.org/groups/young_lawyers/publications/the_101_201_practice_

series/effective_cross_examination_of_an_expert_witness.html
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Patent Agent vs Patent Attorney: Everything You Need to Know. (2018). Retrieved from

https://www.upcounsel.com/patent-agent-vs-patent-attorney

Program Structure & Courses. (2018). Retrieved from

https://csumb.edu/scd/program-structure-courses

SCO Group Inc V. International Business Machines Corporation,​ D.C. No. 2:03-CV-00294-DN

(United States Court of Appeals for the Tenth Circuit October 30, 2017). Retrieved from

https://www.ca10.uscourts.gov/opinions/16/16-4040.pdf

Sid Leach. (2018, August 30). Retrieved from https://www.swlaw.com/people/sid_leach

Testimony by Expert Witnesses, Federal Rules of Evidence, Rule 702. (2011). Retrieved from

https://www.law.cornell.edu/rules/fre/rule_702