Clerkship Diary: Adam Hall - My Experience

During my first month at Lloyd & Mousilli I conducted various research assignments on issues ranging from trade secrets to attorney’s fees under different causes of action to filing requirements for various patent entity sizes. This type of research is a great way to learn about the underlying issues that are involved in IP practice and the issues that a young attorney will need to be aware of or thinking about when handling a client’s matter.

I was able to perform discovery review of client documents, files, text messages and other various data forms to look for any evidence of wrongdoing. This type of work is critical for litigation and helps reduce the cost to attorneys while allowing externs to learn what goes into discovery requests and how important it is to tailor these requests to information relating to the specific issue or matter.

I was assigned a provisional patent to write with the guidance of my supervising attorney. My job was to create and draft the drawings, specification, claims, and review the prior art report. I was allowed to perform these tasks knowing that feedback and guidance would be presented tome following submission to my supervisor so that I could see how my supervisor would have done things or what wording he used differently than me. This has been an incredibly way to improve my claim drafting skills.

I attended client meetings to see how attorneys interact with and inform clients about the non-final office actions they receive. This is a skill that cannot be learned in a classroom but is a crucial skill for law students to learn.

This month has been a great opportunity to get exposure to the various aspects of firms practices and what it is like to be an IP practitioner.

During my second month at Lloyd & Mousilli I was able to research issues relating to tax issues, injunction of websites, litigation claim amendments, power of attorney under patent statutes, and patent appeal process for post final office action.

I was asked to write an article about “Diffusion of AI Technology and Future of AI Patents”. This article was reviewed and revised by the patent team and published by a legal advertising firm. Writing this type of article is a great was to learn about trends in a particular area and do research that allows both the extern and firm to become more informed on the direction of the market and trends going on. Writing this article allowed me to have creativity and express some of my own thoughts while informing readers about an important issue.

I was tasked with assisting the litigation team by performing an analysis of the claims in a complaint to ensure that each and every element of the claims was accounted for and addressed. This exercise allows the extern to become familiar with different type of claims that come up in litigation, the elements of these claims, and best practices of ensuring that the claim language captures every requirement under the law to ensure relief for the party bringing the suit.

The firm requested that I perform a trademark infringement search for a client. The client has licensed their trademark brand to many entities for limited durations. I searched for these entities to ensure if their licensing agreement had lapsed, they had ceased to use the trademarked brand. This is a wonderful skill to learn as it is important to consider how a client protects their brand and enforces agreements.

A client requested that we review their patent claims and ensure that it was not open to weaknesses that allowed others to skirt by and avoid infringing what was intended to be the invention. This infringement analysis of their patent claims allows an extern to look at a patent from the other side of the aisle. It is important to consider how others might try to overcome or skirt by infringing actions when drafting patent claims. Performing this type of exercise is a great opportunity for externs to learn and see the ways would be infringers would try to bypass claim language. Working with a patent attorney to listen and learn how they look at claims and the ways in which they take specific steps and phrasing to avoid these issues is a skill that is learned only in practice.

I was able to sit in on a client meeting for an incoming client to discuss patentability of their invention and learn what they hoped to patent. Sitting in on this type of meeting allows the extern to learn what questions to ask, what types of questions clients will ask or information they want to know, and allows them to be informed on the invention so that when I have to help write claims, I know the specific aspects of the invention the client wants to capture. This is also a great opportunity because externs get to interact and put a face to the invention, this is someone’s idea and someone’s passion. It is great to see people’s enthusiasm for their idea and use that to motivate and help take extra care in writing the patent application remembering this isn’t just a random object but could become the next breakthrough or the person’s ticket to financial freedom.

During my fifth month at Lloyd & Mousilli I was tasked with creating a client oriented brochure/ informational packet disclosing our new initiative for patent portfolio review and growth as a service. I worked with both the firms patent attorney and the managing partner to create a document that would both inform the client about what we offer as a service along with how this can increase their businesses success. The brochure serves as more than just the creation of a document but an opportunity to consider and view our legal work from the business side of things. Considering the various ways that the firm is trying to bring in new clients but also ways to think outside the box to set the firm apart and allow businesses to have access to services that are typically outside of their current funding ability. Getting to pull back the current, so to speak, to view the business side of things is something I did not expect to be able to learn about and see as a clerk. It is another testimony to the wonderful, broad, and extensive range of work that a clerk is exposed to at Lloyd & Mousilli.

This month I wrote another article, this time about something I specifically am passionate about, patent trolling. The firm asked all staff to present ideas and a system to promote these ideas so that the best ideas could be voted on by the group. The ones that receive the requisite number of votes are then put into a cue to be written as the author finds time.I think this is a really interesting way to promote the sharing of ideas and encourage brainstorming for ideas so that it is not always the same peoplehaving to come up with ideas and allows those with personal interest in certaintopics to bring them to light.

Finally, I worked on creating an infringement analysis document for one of the attorneys. The particular issue involved some very current and very relevant issues surrounding cryptocurrencies and how to find and sue them. Additionally, considering who all could be sued and how to get items taken down under the copyright DMCA. Learning how courts are dealing with things that are very new helps a hopeful attorney understand how they will have to think outside of the box and get creative with their approach and arguments.The law and how the world interacts with it is always evolving and changing. It is a great lesson to learn now at the clerkship phase rather than learning once something is missed or a mistake is made. I also conducted various research assignments and tasks to aid in responding to a counter claim against one of our clients.

Adam Hall - My Experience

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Adam Hall is a third year law student at Washburn Law and is participating in the dual JD/MBA program.

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