Working as an in-house IP counsel...

Apr 7, 20216 min read

Updated: Sep 25, 2023

❓ What is IP?

Intellectual Property. (or short for IP)

This might be familiar to you, but you might not know the exact definition.

📖Intellectual Property - legal rights that provide protection for a creative or innovative idea (this is essential to incentivize inventors and improve our living standards 🚘)

There are two types of IP:

Registered - need to apply to government (e.g. Patent and trademark)
Unregistered - arise automatically (e.g. copyright)

📖 Patent - a right granted by the government to an inventor to exclude others from producing, using, or selling a creation for a specific time period (usually 20 years). Patents always appear around us! There are in total three types of patents:

Utility - industrial and technical processes, machines, compositions of matter *most common patent*
Design - protection of the outer appearance of an object (does not include structural features!)
Plant - protect new and distinct plants (e.g. Irish potato — here "plants" are actually 🌳, not nuclear stations 😂😂)

⭐️ Fun Fact: Apple applied for thousands of patents to protect their technology in the iPhone!

📖 Trademark - an identifier that allows a consumer to distinguish your goods or services from those of another (such as Apple's logo, sounds, colors, etc.)

⭐️ Fun Fact: Smells can also be a trademark! Can you think of any examples of it?

📖 Copyright - exclusive control over creative material (such as literature, film, drama, etc.)

❓What does an In-house counsel do?

In-house IP Counsel helps their clients — company or inventor — to protect intellectual property capital.

Average Salary: $224,000

They work complementary to a patent examiner (just as the same suggests, they review patent applications to decide whether a patent can be granted for new inventions or not).

Average salary for Patent Examiner: $124,675.63

In order to learn more about what it is like to work as an in-house counsel, I have invited Mr. Lu Yin — who had worked as a patent examiner and an in-house IP counsel — to share his experience on this topic.

#1: What is your educational background?

For my undergrad, I studied electrical engineering and after that, I work in the patent office for a year. And after that, I spent three years in law school and I finished law school in 2005. And I have been working as an Intellectual property lawyer for the last 15 years.

#2: What has your career path been?

I've been working with the same law firms for about 16 years and recently switched to a new law firm.

And also in between, I work with quite a few startup companies in the Bay area in Silicon Valley. It's a pretty interesting work. Um, you know, I will say that, uh, um, you know, the international property law, especially patent law is generally pretty boring; in a lot of ways that itself, you know, a lot of patent stuff, which is just, you know, pretty long both legal and technical document. But, yeah, it depends on the clients you work with. You guys will meet a lot of interesting clients. I think some of the interesting clients, or, you know, I, when I first started, back in 2006 and 2007, I was working with, Disney and Pixar a lot. So, you know, I go to Disney quite a bit. Uh, it was pretty fun. I was working on licensing negotiation for Disney against Kodak.

And then I wrote a lot of patents for Pixar. I think back then it was then, you know, the big one was the Toy Story. And then maybe Finding Nemo. So, I worked on some patents and all those things that looked pretty interesting and you know, going through Pixar, you know, seeing their workshop. It was actually a very fun experience. And what else kind of fun? I worked with a couple of startups. One was a guy who was Nakamura. I was working on LED technology and Shuji. He won the Nobel prize in 2014, in physics.

#3: What kind of work does a patent counsel do?

The experience when I talk about technology and all that stuff is really what we call it, patent prosecution. So, you meet an inventor, uh, you know, you learn and interviews with them and figure out what the idea is, and you draft a patent application. And, you submit your patent office in UK or China, whatever the country you're filing. Um, you know, you have 10 patents in that patent gives you the right to exclude other people from practicing technology. So that's the prosecution part. And that is the other part of it is why don't you have a patent? How do you preclude other people from practicing your technology? So that's what we call patent litigation or patent licensing. So I go out and try to find out, you know, who might be using technology, you find, you know, for instance, Pixar, uh, you know, they're infringer generally, you know, gaming companies, right?

#4: How many hours of work do you have to do before you file a patent, like their research and the getting to know, like the technology part?

When I first started, it probably takes longer, you know, just not very good at it. It would probably take me, to write a patent application, which is a legal document and generally not too long, a thousand, maybe 10,000 words and 10 drawings. To generate that much content, it probably takes you what tends to be 10 to 20 hours, maybe 30 hours.

So it depends on the technology, the software communication type of technology is a little more difficult because they're abstract. You had to find a way to find a good level of detail to put into a patent. But there are also things like mechanical devices, right? If you have like a truck, uh, you know, track door or trackbed and that sort of stuff, which is pretty simple, there's not that much to it. You can finish a patent application may be in five, 10 hours.

#5 Would firms normally all have a team of lawyers working on the copyright or other IPs?

Intellectual property lawyers generally, I started a lot of company, back in the days. So generally, it depends on the company, right?

The first few people, the founders are, you know, generally a sales guy and a couple of, engineers or, you know, people do the groundwork. And then the next first in the company are generally contents. If your company is a very technology-heavy company, you need an IP lawyer pretty much right away is that person basically needs to know all the stuff that you're doing. But then, you know, if you're just a normal company, you know, you're worried about labor law and etc.

And by the time you reach 20 people, you probably need a lawyer. Even, you've just, part-time, for instance, you're going to hire someone and you're going to run into labor problems, right. If you rent, rent a property, you have a tenant problem, so all the time, you know, the company have a sort of general staff, lawyer to sort out all those headaches.

#6: A lot of students were told to pick one course, and that's what you need to study. What made you decide to study law after studying Engineering for undergrad? How do you think students should choose what they would like to study?

I think this is like the vocational system, right. I had a discussion with Europeans where a lot of people don't go to college and they go to vocational school. Right. It's more cost-effective. You can decide. But the reality is, you know, why do you want to constrain yourself?

The reality is that we are all capable of doing a lot of different things. And even I might although I'm a little over 40 now, right. I still try to figure out what I like to do and what I'm good at. And a lot of time, what you like to do, and what you're good at are often different things. And you want to do the thing that gives you the energy that you want to do, as opposed to the one that you're most efficient at, or, you know, you're the best at, so I don't think that there's a good answer to it.

And other than, you know, going out and try different things, I don't really think there is a solution. Uh, you know, I don't know, like lately, I've been talking to a lot of kids about, you know, the career options and there's a book called Design Thinking, by this a very popular course in Stanford. The whole idea is you try different things.

To learn more about Mr. Lu Yin, please check out his bio below! 🧐

IMPORTANT NOTICE

Law 101