What’s the Difference Between an IP Lawyer and a Contracts Lawyer? Why Does an Author Care?

This post, by Passive Guy, originally appeared on his The Passive Voice on 8/23/11.

Passive Guy thanks all who wished him well in his new endeavor both in comments and in emails. This encouragement is very much appreciated.

One emailer requested that PG describe the difference between an IP Lawyer and a Contracts Lawyer. PG has described himself as an attorney who works with contracts or a contract counsel.

IP is short for Intellectual Property. In the United States, there are four broad classes of intellectual property:

  1. Patents
  2. Trademarks
  3. Trade Secrets
  4. Copyrights

Patents involve the majority of IP lawyers. A patent attorney is not only licensed by his/her state bar, but is also licensed to practice before the United States Patent & Trademark Office (USPTO).

With a few exceptions, only attorneys who have an undergraduate degree in a scientific or technology discipline – engineering, chemistry, pharmacology, physics, etc., etc. – are permitted to become patent attorneys. In addition to having the requisite educational background, a patent attorney must also take and pass a separate patent bar exam.

Being licensed to practice before the USPTO allows an attorney to file and prosecute patent applications for inventors. An attorney without this qualification may not represent an inventor in USPTO proceedings.

Patent litigation is another story. No special patent bar admission is required to litigate the validity of patents in federal court. Some patent litigation attorneys are patent lawyers and others are not. The expertise necessary to prosecute a patent application is much different than the expertise necessary to try a case before a jury.

The owner of a patent has the right to prevent others from making, selling, etc., anything that is described in the claims of the patent.

The reason patent law involves the most IP attorneys is that it’s a lucrative specialty. Recently, Google announced an agreement to acquire Motorola for $12.5 billion. It was reported that Google’s principal reason for making the purchase was to gain ownership of Motorola’s portfolio of approximately 17,500 patents.

The other three broad areas of IP law involve much smaller groups of specialized attorneys. Neither Trademark nor Copyright law require any special educational credentials or separate bar admission.

A trademark is a symbol, word, or words legally registered or established by use as representing a company or product. Trademarks are everywhere. When you see a ® or a ™ next to a company or product name, you’re looking at a trademark. When you see a , you’re looking at a service mark, which is a type of trademark that applies to services, not products.

Read the rest of the post on The Passive Voice.