Intellectual Property Field Grows
A recent survey of 200 attorneys suggests IP
opportunities for paralegals.
By D.L. Hawley
January/February 2000 Issue
Intellectual property is the fastest growing field of law, according to a
survey commissioned by The Affiliates, a company that provides temporary and full-time
attorneys, paralegals and legal support personnel to law firms.
Conducted by an independent research company that
randomly contacted 200 attorneys from the 1,200 largest law firms across the country, the
survey was released in September 1999.
When asked which area of law was growing the fastest, 58
percent of the respondents said intellectual property (IP), which also topped the list in
a similar survey two years ago. According to U.S. court records, IP suits have been rising
across the country. Civil copyright, patent and trademark suits together rose 2.5 percent
between 1994 and 1998.
“As greater numbers of new products and services are
introduced, intellectual property protection has become critical for both companies and
individuals,” said Kathleen Call, executive director of The Affiliates. “Many
law firms are creating separate IP teams, and start-up companies are forming internal
legal departments with IP teams.”
The growth in the number of IP teams presents exciting
opportunities for paralegals, according to Patricia Gardner, an IP paralegal at Finnegan,
Henderson, Farabow, Garrett & Dunner in Palo Alto, Calif.
There are a variety of ways a paralegal can be a member
of an IP team, according to Gardner. IP has three elements: patent, trademark and
For each of these, there are two practice areas including
prosecution, which is the preparation and filing of applications to register IP rights,
and litigation, which is the defense of IP rights using the court system.
In the prosecution area, paralegals are used most often
in the area of trademarks where research on the history of existing and pre-owned
trademarks is important, according to Gardner.
On the litigation side, the biggest area for paralegals
is in the area of patents.
“Patent infringement cases are seriously document
intensive,” Gardner said. “A small case could involve 200,000 pieces of paper,
and a large case could involve a million pieces of paper. A paralegal is a critical member
of the team and is important to coordinate … and track all the documents, since it is
critical to be able to know how the whole ties together and to be able to find any
document as it is needed.”
Two factors of IP litigation make paralegals an essential
part of any IP team, according to Gardner. First, most cases are so document intensive
that paralegals are essential for keeping track of and organizing the documents. Second,
many cases are now fast-tracked by the courts, leaving less time to prepare the material
and making paralegals absolutely vital to getting a case together.
The Affiliates’ survey shows that the future looks
good for any paralegal thinking of getting onto an IP team. Technology increases every day
in every area of life, and all these new inventions need IP protection. Defending IP
infringement will grow along with new developments.
So, how can paralegals make the switch to IP?
“A lot of IP firms think paralegals have to have IP
experience,” Gardner said, adding, “but research is research.
“A paralegal who has solid skills doing research,
organization and handling documents just needs to learn the different agencies. You can
sell yourself as having a solid set of skills and convince the IP attorney you are
adaptable enough to take these skills and make them fit what they are needed for.
“On the other hand, it probably wouldn’t hurt
to take an IP course so you can understand the basic concepts and different procedures for
filing to give yourself a jump-start.”