Transactions IP Attorney
As a transactional intellectual property (IP)attorney, you draft, negotiate, and advise clients on a variety of different types of agreements. These agreements include commercial agreements and IP-specific agreements, like patent, copyright and/or trademark assignment agreements and license agreements. You may also assist with IP due diligence and negotiations of IP terms in corporate transactions.
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ADAPT Professional Guide
“In my current role, I negotiate, and advise my business clients regarding, IP issues in business transactions. Some of the transactions are IP-focused, involving sales or licensing of IP. Other transactions are commercial deals, like purchases or sales of products and services, which involve IP issues.”
- IP Attorney, Fortune 100 Company
Qualifications
Undergraduate degree in engineering/science may be helpful but is not required
USPTO Patent Bar membership may be helpful but is not required
Law degree and be a member of a state bar
Job Description and Responsibilites
Firm:
As a transactional IP attorney at a law firm, you will draft, negotiate, and advise clients on a variety of different types of agreements. The agreements may include commercial agreements, like software license agreements, purchase/sale agreements, joint development agreements, non-disclosure agreements, etc. The agreements also may include IP-specific agreements, like patent, copyright, and/or trademark assignment agreements and license agreements. You also may assist with IP due diligence and negotiation of IP terms in corporate transactions involving IP, like mergers, acquisitions, and divestitures of companies and product lines, which include transfers of IP and/or technology.
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As an in-house transactional IP attorney, you will–either directly, or with assistance of outside counsel– negotiate IP-specific transactions, like assignments and licenses of patents, copyrights, trademarks, etc.
You also will be a subject matter expert on your client’s positions for IP related issues, acting as an escalation point for contract negotiators as they negotiate IP provisions in commercial transactions. For example, you may be called on to provide expert guidance on IP ownership and IP indemnity issues.
You also may assist with IP due diligence and negotiation of IP terms in corporate transactions involving IP, like mergers, acquisitions, and divestitures of companies and product lines, which include transfers of IP and/or technology.
Lisa's Path
In-house Counsel, IP Transactions
As an IP transactions attorney, I get to have a front row seat for some of the most exciting - at times, even newsworthy! - deals impacting the companies we all know and love. In this role, I leverage both my technical background and my legal experience to help my clients close deals that achieve their business objectives. And, this is the path I took to get here.
Law Degree - Intellectual Property Program
Summer Associate role at Law Firm (during law school summers)
Law Firm Associate
Patent and Trademark Prosecution, IP Litigation, Corporate & IP Transactions
In-house Counsel
Industry Engineering (B.S.)
Commercial Transactions; Patent Portfolio Development; Patent Operations; IP Transactions
These pros and cons were provided by professionals in the field and are purely subjective.
Pros
Cons
Firms:
Work on different technologies with different clients.
Interesting work (complicated and sophisticated legal matters).
Prestige; matters are often high profile, high value, and even news-worthy.
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In-house:
No billable hour requirement.
Interesting work (complicated and sophisticated legal matters).
Prestige; matters are often high profile, high value, and even news-worthy.
Firm:
Billable hours requirement.
Sometimes, work hours can be unpredictable, especially if a client has urgent deadlines or requests.
Can be stressful; often handling complex issues with tight deadlines and high stakes.
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In-house:
Sometimes, work hours can be unpredictable with some periods of low activity (when deal volume is low or deals are quiet) and other periods of urgent, high activity (when deal volume is high or deals are moving quickly or involve urgent issues).
Can be stressful; often handling complex issues with tight deadlines and high stakes.
Pro-tips on how to land the job
During the first year in law school, apply for an optional 1L summer associate job at a law firm. If possible, target a position in the firm’s IP or commercial/corporate transactions (M&A) practice group. This will give you a head start and shows your interest in practicing IP and/or transactional law.
During the second year in law school, apply to get a 2L summer associate job. Getting a 2L summer associate job is important because law firms usually hire law students from their 2L summer associate programs so that these law students will work for them after they graduate law school.
Some companies also have summer intern jobs so if you would like to work in-house, consider applying to those. Some companies also have a path to hire directly after law school graduation.
Helpful courses to take in law school (if offered): Introduction to IP, IP/Corporate Transactions, Business Associations (Corporations), Tax (Income and/or Corporate).