| 1st
Year
-- With an emphasis on the basics of patent prosecution, BSTZ
believes that in order to develop the skills necessary to render
useful and competent advice to clients, all of our patent attorneys
must "earn their stripes" by preparing and prosecuting patent
applications. Over the first year, new associates are given the
opportunity to work directly with scientists and engineers and
prepare patent applications relating to their creations from the
beginning. This process generally involves one or more in-person
meetings with the inventors to explore all aspects of the invention
and to discuss strategies for claim drafting. The new associate
works under the guidance and direction of a partner or senior
associate who can help in this most difficult and creative process.
In addition to new applications, first year associates are asked
to work on pending applications (both foreign and domestic) and
draft persuasive replys () to patent office communications. Often,
these communications will reject an initial set of claims of a
patent application. We then look to the new associate to bring
her/his engineering talent and legal writing skills to bear in
setting forth arguments as to why the Patent Examiner should reassess
his/her position and allow the application to issue. Because of
PTO processing times, we generally find its takes a year to 18
months before a new associate begins to see the results of their
work in these areas. Prior to that point, the learning curve can
be steep. Not only is the practice of IP law very different from
anything the new associate may have studied in law school, having
to come up to speed with new technology issues at the same time
can be a daunting task. Nevertheless, we find that as the new
associate begins to get feedback from the PTO on the submissions
they have made over the past year, the learning curve flattens
out and the associate begins to truly appreciate how his or her
writing and reasoning can make a difference.
2nd
Year
-- Again the emphasis here is patent prosecution. However, as
the associate's skills develop we believe it is appropriate for
him/her to start taking a more active role in non-prosecution
related matters. For example, associates in their second year
are often asked to assist with patent validity or infringement
studies. These matters may arise in any of several ways, such
as allegations of infringement, licensing opportunities, or the
acquisition of entire companies. Whatever the underlying circumstances,
the basic processes employed by the attorney remain the same.
Understanding patent validity and/or infringement issues is a
complex blend of law and facts that can test the attorney's creative
and analytical skills. Often, hidden or subtle distinctions can
make a world of difference and finding and understanding these
details is a process that takes time and effort. Many times, a
detailed literature search and consultation with one or more experts
is required in order to get a complete understanding of the technological
state of the art. Only after such an education can the attorney
apply legal reasoning to reach an informed opinion.
3rd
Year
-- By this time the associate has developed excellent skills.
He or she will have prepared and prosecuted many patent applications
and may also have participated in writing opinion letters, drafted
license agreements and/or technology development agreements and
has also started to form valuable relationships with many clients.
In their third year, our associates continue to develop these
skills and may also begin to take on some of their own clientele.
From start-ups to established companies, BSTZ associates get involved
at all levels of client interaction and we often see our third
year associates being asked to render opinions on IP portfolio
strategy, employee noncompete issues, and other topics of importance
to high tech companies. As associates begin to encounter these
issues, they are encouraged to seek the advice of more senior
attorneys in the firm. Bi-monthly attorney development meetings
provide an opportunity for associates to raise these and similar
topics for discussion . By bringing our associates and partners
together in this fashion, BSTZ fosters a feeling of "team" and
this allows our associates to feel confident about taking on the
new roles requested by their clients.
4th
Year --
By now the associate has developed panoply of skills. If he or
she can still find time, patent prosecution may still be a source
of enjoyment. Often, the associate's time will be filled with
complex matters such as due diligence investigations or agreement
negotiations. Further, as a more senior associate, she or he will
need to find time to assist more junior peers in their work. By
this time the associate is working with a variety of clients in
a variety of ways. Several associates find themselves sitting
as de-facto in-house IP counsels for smaller clients and may even
sit as part of a committee for various sections of Fortune 500
companies. The associate's assistance is routinely sought by partners
who know that this individual can bring critical thinking skills
to bear on problems.
5th
Year
-- At the completion of the fifth year, associates are eligible
for partnership. Throughout this year the associate will participate
in a broad spectrum of IP-related issues. All of the skills the
associate has developed (and those that are still developing)
will be tested to ensure that this individual is ready to move
up in the firm. By now the associate has become a primary resource
for his or her junior colleagues. Much of their time will be spent
dealing with clients at the forefront of technology, exploring
new ways of protecting those clients' intellectual capital. As
with all legal matters, the associate finds that it is the people
who make this career interesting and exciting, and that by working
with the most creative people both within and outside the firm,
the associate gains a new appreciation for his or her chosen profession.
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