You Want Me to What? Realities of Being an “IP” Law Clerk

Day 1. The blue line makes yet another jerky stop, and you check your watch nervously to make sure you’re still on time.  Phew. You are relieved to see that you’re going to arrive early for your first day of work, but nevertheless, you start to shift uncomfortably in your seat. Your discomfort, prompted partially by the stiff new dress shoes that you’re wearing (but mostly by the anxiety of starting a new job where you might encounter IP issues) starts to dissipate. With a quick shake of your head, you brush off the jitters.  Relax, you tell yourself.  You’re prepared – after all, you’ve easily tackled IP issues in class. 

In Truth? You Might Not Be that Prepared After All. 

The truth is, strong performance in your IP coursework might not be the best indicator of your success working on IP matters in a firm setting. It is unlikely that your grip on trademark “confusion factors” (relevant to assessing violation of trademark rights) will be of much help when your partner hands you an unrelated and unexpected assignment. An “A” in patent law will be of little benefit to you when a client sends you a confusingly-worded email, asks for urgent help with some odd-ball issue you’ve never heard of before, or calls frantically because they’re unsure what “Dropbox” is.  (Before you ask, YES – all of these things really happened to me.)

Now, there’s no need to panic. But how much do you know about dividing IP assets in a divorce? What if the brand you represent needs help addressing a gruesome dog-bite case that happened on their premises? What if your longstanding client/inventor needs advice on how to handle a tax audit, complete a real estate closing, or fight a DUI charge?  These issues may seem tangential or even irrelevant to IP, but the practice of law is often not neatly segregated into legal categories.  

Are There Any IP-Exclusive Attorneys? 

Certainly – but the scope of an attorney’s work may extend beyond the confines of intellectual property – at least at law firms that focus on more than IP. Stepping outside the IP world is often needed in order to fully meet needs of clients who initially present an IP issue, but whose needs evolve.  This is especially true at small firms where there are not large groups of attorneys in different departments to address separate substantive issues. So, your interest in practicing IP may actually involve a practice more extensive and all-encompassing than you might predict. This has certainly been my experience as a law student working at a firm that handles someIP matters – though my experience likely differs from students working in IP-exclusive “boutiques,” where it may be less common to encounter non-IP work.

One of my first assignments as a law clerk was to help a foreign client secure “intent to use” trademark protection, as the client was planning to start selling goods in the U.S.. While the trademark component of the project was pretty straight forward, there were many non-IP issues that arose when trying to help this client reach their goals. In addition to selling their product, the client also wanted to set down some roots in the U.S., and was looking for advice on the most advantageous state to incorporate the business in. In other words, I ended up needing to know about corporate law.  I spent a great deal of time researching into the subject, and was surprised to learn that the vast majority of U.S. companies (especially those within our client’s industry) choose to incorporate in Delaware.  

After advising the client about his trademark and business formation options, the project’s focus shifted yet again. This time, the goal was to ascertain the best way of importing the product into the U.S., which was particularly problematic given Trump’s threat of increased tariffs at the time. I spent almost a week researching imports, tariff rates, etc., and spent an absurd about of time on the phone with customs brokers in New York and California. I never would have expected that a simple trademark application could evolve so far beyond the world of IP (and into the realm of international trade dealings) but I’m glad that it did. If a future client approaches me with a similar customs concern, I’ll atleast have some background knowledge in the area – PLUS now I have a “fun fact” about Delaware stored away in my brain for the next Trivia Night. 

Once you’ve built a successful relationship with a client, it is not uncommon for that client to turn to you when they need additional legal advice – especially if you’re serving a smaller business or individual who wants one attorney (or firm) to address all of its legal isssues. Oftentimes, the scope of the work falls within an IP or business context, but other times a client may seek out help for unrelated personal matters. For this reason, lawyers (and even law students) need to be flexible and capable of adapting to individual client needs. So…

How Good Are Your Lunges? 

Being successful requires flexibility and an ability to serve the client – no matter how far-reaching their needs might be.  Of course, ABA ethics guidelines mandate some degree of attorney competence when handling legal matters. In other words, it might be inappropriate for a divorce attorney with an English degree to take a blind stab at filing a patent application (since this type of work requires passing the patent “bar,” which in turn requires a science background). However, attorneys at firms that focus on helping small and medium sized clients oftentimes address client concerns outside the scope of their practice area.  They do so by either 1) performing research to familiarize themselves with the subject matter or 2) referring the case to a colleague with the requisite background to handle it. 

Oftentimes, law students find themselves surprised at how much of their time is spent on non-IP matters – especially when their firm is not IP-exclusive. Because of this, it helps to have knowledge in multiple areas so that you are prepared for instances where a client matter evolves into something else. While IP matters could take up the bulk of your time while working at a firm, it’s important to remember that law is a service industry – and sometimes “good service” requires us to stray from our comfort zones and solve a wide range of client problems. 

Might Seem a Little Unsettling, Right? 

Certainly – and it’s common to encounter discomfort when learning something totally new. But the discomfort is as fleeting as first-day jitters, and you’ll settle into your new role by the time you’ve “broken in” those dress shoes.  The journey to a successful student experience doing “IP” work might seem bumpy at first, but the skills you learn will help shape your future and strengthen your career trajectory.

So hang on … breathe … and enjoy the ride.  

Jessica Fenton, Senior Editor

Loyola University Chicago School of Law, JD 2020