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IP work can be divided into two main areas: hard and soft intellectual property. ‘Hard’ intellectual property relates to patents, while ‘soft’ intellectual property covers trademarks, copyright, design rights and passing-off. IP lawyers will advise on issues that range from commercial exploitation to infringement disputes, and agreements that deal either exclusively with IP rights or with IP rights in the wider context of larger commercial transactions. Many lawyers will specialise in either contentious or non-contentious IP work.
Dominic Hornblow is an associate in the London office of international firm Jones Day. He did his training contract at Gouldens and qualified in real estate. After the firm merged with Jones Day in 2003, Dominic transferred to the IP department.
During his studies, intellectual property was always something Dominic was interested in but didn’t have an opportunity to study academically. He says: “In terms of formal training, I didn’t do any until I did the IP diploma in Bristol. Quite a lot of IP departments put people onto one of the postgraduate diploma in IP courses – especially if someone has not studied it previously. The Bristol course lasts one year with a two-week residential element. Every six weeks you have an all-day class. You have coursework every six weeks, an exam in May or June and, hopefully, at the end you have a diploma in IP practice.”
Dominic reflects that the diploma was a great way for him to make a detailed study of the different areas of IP law so that he had a good grounding. “It starts with a two-week crash course and ensures that you cover all areas of intellectual property,” he remembers. “For example, I did a lot of work on registered designs. They’re not something that I tend to come across very often in what I do now but when I do, it’s useful to have that knowledge as a back up. Some firms that specialise in intellectual property send their trainees to do the course in the final year of their training contract. Others send them after they qualify.”
Now, Dominic works mostly on non-contentious IP matters: “I tend to negotiate commercial contracts or coordinate due diligence on companies. At the moment I’ve got four major due diligence exercises on and another half a dozen or so commercial contracts.” His caseload varies quite a lot, and often fluctuates in proportion to the corporate department’s level of work. He says: “If the corporate department is dealing with 30 M&A deals, each person there is probably dealing with one or two, but our IP department is relatively small so we’ll each be working on five or six cases.”
Dominic acknowledges that it’s very important to be able to plan your time. “The first thing I do in the day is deal with all the smaller things,” he says. “I’ve learnt that you try and take the small things first. So if an email has come in with a client’s query and it’s just a case of looking something up, I’ll deal with that first. Also, the client perceives that they are getting a good level of service because they’ve received a response straightaway. Then I’ll get into all the more in-depth things. It could be that I’ve got an agreement to draft. Sometimes there’s a precedent that you can work from, but often it’s not particularly similar to anything that you, or the firm, have worked on before so you need to sit down and draft things almost from first principles. You need to think about the transaction in detail and work out what the implications are, and what happens if something goes wrong that the parties themselves may not have considered.”
As a Formula One fan, Dominic enjoyed dealing with the acquisition of a team. He says: “It’s probably the most high-profile thing I’ve worked on. Formula One is a global business so they have a large portfolio of trademarks. Although there’s a lot of research and development, because the cars are different every year, you’d normally think they’d protect those with patents. But they don’t tend to do that in Formula One because the pace of development is so quick. If something changes, they don’t worry about it because next year they’ll have to come up with something else. The main way they do it is to keep it confidential.”
Dominic’s also managed to bag work from leading computer game company Eidos. “The main thing about computer games is that they’re protected by copyright,” Dominic explains, “which is just a right to stop someone copying something you created. In the computer industry, it’s about digital rights management, which is what they put on the game to try and stop you making copies. Someone like Eidos, with recognisable brands like Lara Croft, has a big task to make sure that they’re not being ripped off in the Far East or somewhere.”
From fast cars to tomb raiders, it sounds like Dominic’s client base is rather varied. “I never get bored! Intellectual property comes up in a lot of different areas. I’ve been doing quite a lot for clothing companies and pharmaceutical companies at the moment. Quite often you’re dealing with new sciences and different technologies. I’ve even started reading New Scientist. The actual types of intellectual property vary a lot – a trademark is different from a copyright and patents are in a weird world of their own.”
The varied work requires a flexible mind. “One day you might be dealing with patents for pharmaceuticals and the next day you might be working on patents for some technological device,” notes Dominic. “You need to be able to understand the science behind it. That doesn’t mean you need a science or engineering degree but you need to be able to grasp what’s novel or inventive about what’s going on, or what the important markets are for a trademark.” As well as an open mind, “you need to be pretty good at drafting – and drafting from scratch, because quite often there isn’t a precedent clause that you can dig up”.
If Dominic has any advice for those seeking a training contract, it’s to chill out about training contract applications. “Don’t pin your hopes on any one firm,” he says. ”If you’re good enough, you’ll find somewhere to do your training contract and you’ll have a good time. If you don’t get your first choice, you can always end up working for them later on. It’s a bit like university: when you’re applying you think it’s the be all and end all to get your first choice and that if you don’t you’ll have a dire time. But hardly anyone has a bad time at university!” |
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