The miracle of a newborn child becomes a nightmare for parents of children born with a rare genetic disorder known as Canavan disease. A degenerative brain disorder that strikes in infancy, Canavan is caused by an enzyme deficiency that leads to an overproduction of acid that slowly destroys brain tissue, leading to a series of horrifying neurological deficits that lead to an inevitable death, usually before the age of fifteen.
In the midst of watching two of their children perish of this awful wasting disease in the late 1980s, Dan and Debbie Greenberg provided a series of samples to a doctor in southern Florida and urged him to investigate the cause of the disease. Over the years, the Greenbergs helped rally other parents of children born with the disease to provide additional samples, data that could be used in research, and even financial assistance to continue funding the research.
By 1993, the effort had paid off. The team of doctors and geneticists working on the project had identified the gene behind Canavan, and were able to develop a prenatal test to screen for the disease…
The parents were outraged. A group of them filed suit, but ran out of money and had to settle on undisclosed terms.
The suit was only the first of many that have come to characterize patent and trade secret law in the modern era… a wave of patenting and litigation that makes paralegals who specialize in intellectual property a hot commodity in the legal field today.
The murky ethical, legal, and social aspects of software and gene patents demand a high degree of expertise, competence, and attention to details, making paralegals well suited for the challenge.
Patents and Trade Secrets Have a Long History
The idea that ideas themselves can have value is so old that it is enshrined in the Constitution. Article I, Section 8 expressly provides Congress with the power to grant patents and copyrights, “To promote the progress of science and useful arts…”
And congress has not hesitated to do so, establishing the United States Patent and Trademark Office (USPTO) more than 200 years ago to oversee the registration and regulation of the patent process.
Patents are issued to grant an exclusive right to the inventor of a process, machine, or article of manufacture to exclude anyone else from using or producing a similar item or process. By default, a patent lasts twenty years, a period designed to encourage innovation but not stifle the dissemination of information and technological advances.
Trade secrets, such as those governing processes for the production of high-tensile strength steel, had long been important in industry and protected by similar laws. The primary difference is that patented concepts are exposed through the filing process. Although companies are technically prohibited from using them, filing can reveal a direction of research or other aspects of a process that could make the business vulnerable.
High Tech Drives Growth in Intellectual Property Law
Patent filings exploded from just over 104,000 per year in 1980 to over half a million in 2015. And trade secrets have become even more common and more tightly protected in that same period. It’s a lot of paperwork that trained paralegals have a vital hand in producing and managing.
You can thank the technology industry for the tsunami of demand for patent lawyers and paralegals. As the technology sector began to explode in the late 1970s, one of the implications of the field began to ripple out into the legal world: the only things of any real value coming out of the cramped Microsoft offices in Redmond, Washington and fledgling Apple Headquarters in Cupertino, California were ideas… virtual products that could be effortlessly duplicated with the click of a button.
Software, and the virtual goods that came with it, such as digital audio, video, and ebooks, flipped that reality on its head. Now, creating a perfect copy from a single original is as easy as clicking a button. And the underlying processes governing software execution proved to be difficult to evaluate under the old standards of patent theft.
For example, Amazon filed for, and was granted, a patent for making a purchase with a single click. Something that seems both obvious and banal both inside and outside the industry was nonetheless covered by current patent law… and became a strategic weapon for market leverage as well as profit.
And patents on DNA sequences, such as those that led to the Canavan case, have been at least partially negated by more recent court decisions, again involving years of expensive litigation.
The patentability of such esoteric concepts, and the theft or leaking of trade secrets, is something that frequently challenges the courts.
Patents and Trade Secret Law: Lawsuits, Lawsuits and More Lawsuits
It’s the task of lawyers and paralegals specializing in patent law to make arguments on both side of such cases. It’s great job security for those in the field: the Amazon case lasted more than 13 years and even though it was finally thrown out, it put food on the table for hundreds of lawyers and paralegals on both sides.
There’s no shortage of new challenges, either. Technology patents remain prominent in the industry and lawsuits fly like confetti: Apple suing Samsung, Samsung suing Apple, Paul Allen suing everybody. According to legal analysis group Lex Machina, nearly 6,000 patent infringement cases were filed in 2015 alone. And that doesn’t even touch copyright infringement, which towers over patent law in the number of violations.
All of these cases are fueled by paper trails. Paralegals end up doing the bulk of the work in tracking down vital evidence, which would include:
- Original patents
- Prior art that could nullify the patent
- Documentation of the origination of ideas and development, known as substantiation
- Specific instances of violations
- Supporting cases
Paralegals specializing in patent law can end up working either for law firms or directly for businesses with intellectual property considerations that need to be addressed in-house.
Demand for paralegals to help manage intellectual property portfolios helps keep the barriers to entry relatively low. Any paralegal with an education in the field is eligible for at least an entry level position working in patent law or trade secret enforcement.
Although special qualifications are not generally necessary, the National Federation of Paralegal Associations offers an advanced specialty certification on intellectual property. There are also a number of for-profit certification options specific to intellectual property, such as the patent or trademark certificates offered by IPLegalED.
Working at an Intellectual Property Law Firm
Paralegals at specialist law firms can work in either litigation or filing. The filing process involves helping companies filing for patent protection sufficiently document their work and substantiate their ownership so that the case can be defended later.
This involves a lot of time going through paperwork, sitting at computers, and creating language for applications. The paralegal working on a patent application may be responsible for filing it with the USPTO and shepherding it through the application process. They may be the primary contact for the patent examiner in charge of the case and have to answer questions or provide additional documentation as required.
Working in litigation does not differ greatly from handling any other type of civil litigation case. The paralegal is usually responsible for research and organization surrounding the case. They will back stop the lawyers to make sure that important filing dates are met. They are usually the ones responsible for creating discovery demands for the opponent in the case and for responding to discovery requests.
Sufficiently experienced paralegals may draft briefs or help craft arguments and legal strategy for the case. They may also line up and work with the expert witnesses necessary to provide testimony in such cases.
As with almost all paralegal positions, they are also usually the de facto case managers, keeping track of filing deadlines, organizing and cataloging evidence, and creating briefing books and presentation pieces for display at trial.
Working for a Business With Intellectual Property Legal Needs
Handling breach of intellectual property concerns for a business has some overlap with the work done in law firms. Large businesses may not outsource all their IP-handling, so the same sort of filing and research tasks performed at law firms are just as common in-house.
In other ways, the focus is different for paralegals working in-house. They might be used as a resource for research departments, helping researchers understand what may or may not be patentable.
On the other side of the coin, a paralegal might be the premier resource for helping a company determine that its own innovations do not violate other patents or copyrights. This involves considerable research on existing products as well as a finely-honed understanding of how the law will be applied.
Paralegals might also be heavily involved in licensing processes. Many firms either license out or obtain licenses to allow the use of protected intellectual property. In fact, many large firms establish extensive patent portfolios for the express purpose of cross-licensing to protect themselves from lawsuits. Paralegals evaluate such agreements and may be involved in drafting them or making recommendations on the best ways to protect the organization.
They are also involved in protecting trade secrets, which is not an official process. Instead, it is enforced through non-disclosure agreements and corporate controls, which paralegals may draft, review, and help to enforce.