Helpful Tips for Success from a Patent Litigation Paralegal

Patrick E. Odell

This entry was written by Patrick E. Odell, a paralegal at Munger, Tolles & Olson. He earned his paralegal certificate at the UCLA Extension Paralegal Training Program (then named the Attorney Assistant Training Program) in 1996 and his undergraduate degree from Loyola Marymount University in History in 1996.

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According to the World Intellectual Property Organization (“WIPO”), “Intellectual property (IP) refers to creations of the mind, such as inventions; literary and artistic works; designs; and symbols, names and images used in commerce.”  For IP paralegals, patent litigation is one of the major areas of focus in IP law.

Of my 18 years of experience as a litigation paralegal, the last 13 years have been spent at Munger, Tolles & Olson, where I work primarily in the area of patent litigation.  My experiences in this area of the law have taught me there are many key areas an IP paralegal needs to cultivate in order to excel, but 3 to focus on are: (1) the patents themselves, along with their history and supporting papers; (2) the technology available for researching the patents; and (3) document management within each case.

The life and paperwork of each patent are complex.  The patent file wrapper, which is the complete record of a specific patent application, is an integral aspect to each patent.  Prior art, which is defined by Black’s Law Dictionary as, “[a]nything in tangible form that may properly be relied on by patent office in patent cases in support of rejection on matter of substance, not form, of claim in pending application for patent” is, understandably, extremely important in any given patent dispute.  And the patents themselves require review and analysis, including the identification of the claims in a specific patent.  Getting comfortable navigating these documents requires time and practice, however it is not impossible!

As we know, technology has become an increasingly integral part of everyday life, and this is especially true in the legal field.  Some examples of the research tools that I use regularly are: (1) Google Patents, a useful tool for downloading patents; (2) the Patent Application Information Retrieval system, the resource on the United States Patent and Trademark Office’s website that is used for downloading the file wrapper of a patent; and (3) Lexis and Westlaw, which are useful in tracking down prior art references.  Being familiar with these technologies is a tremendous asset to the paralegal and support to his or her attorneys.

In any patent litigation, there is a tremendous amount of documentation that must be gathered from a number of sources.  The attorneys will be searching these documents for support for their case.  These documents will be used in drafting pleadings to be filed with the court, as well as in preparation for court hearings, depositions, and ultimately, trial.  It is essential for a patent paralegal to be well organized, and be able to effectively utilize all available resources in gathering all relevant documents.

If you are interested in patent litigation, I recommend research of the points mentioned above.  Refining my skills in these basic areas has given me an edge and a longevity in patent litigation, as it will you.

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If you would like to contribute to the Legal Exchange please contact Sean C. Tyler, ACP at 310.267.5256 or styler@uclaextension.edu

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One Response to “Helpful Tips for Success from a Patent Litigation Paralegal”

  1. Natalie Darcy October 7, 2015 at 5:41 pm #

    It is interesting how much technology continues to change the way the legal world works. I think what is kind of fascinating about this is that the ethics stay the same, but we become better at protecting them and uncovering the truth. Litigation is a complicated process so I appreciate your explanation. The process makes a lot more sense to me, thank you!

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