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California Polytechnic State University
University of California Law, San Francisco
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Christyna is a third-year law student at the University of California Law, San Francisco (formerly UC Hastings). She received her BS from California Polytechnic State University, San Luis Obispo and is currently a Staff Editor for the UC Law SF Communications and Entertainment Journal. She is interested in business law and intellectual property and hopes to work in the entertainment industry upon graduation. In her free time, she enjoys spending time with her family and volunteering for the Alzheimer’s Association.
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Christyna is a third-year law student at the University of California Law, San Francisco (formerly UC Hastings). She received her BS from California Polytechnic State University, San Luis Obispo and is currently a Staff Editor for the UC Law SF Communications and Entertainment Journal. She is interested in business law and intellectual property and hopes to work in the entertainment industry upon graduation. In her free time, she enjoys spending time with her family and volunteering for the Alzheimer’s Association.
This was my first week as a clerk and I was immediately assigned tasks. It always feels intimidating starting a new internship and trying to learn the ropes as fast as you can. But instead of letting that fear get in the way, I used it to motivate me to get started!
My first task was to research anti-sandbagging provisions. This was a term I had never heard of and this immediately made me feel unqualified for the job. I began to second guess myself and wonder if I was not the right fit for the job. However, there was a task to be done! No time for worrying! I began with a simple Google search to educate myself on the topic and what anti-sandbagging provisions entail. Then I used Westlaw Practical Guidance to look specifically at anti-sandbagging in Texas law. Before I knew it, I had found articles, cases, and even a powerpoint presentation on anti-sandbagging!
My second task came from Lema. She asked me to look into a question regarding Bankruptcy proceedings. I was really excited about this task because I had just finished taking Bankruptcy last semester and wanted to put my knowledge to the test! I pulled out my Bankruptcy Code and flipped through that to see if I could find the answer. Then I looked at the Federal Rules of Bankruptcy Procedure on the Cornell Legal Information Institute and found my answer. I went one step further and discussed what our next steps should be based on similar cases. I wanted this memo to not only answer the question regarding proceedings, but also give my opinion on how to respond. I wanted the memo to be thorough and anticipate what the next steps may look like.
I quickly typed up the memo on the matter and my first research memo was done! Woo!
Finishing that memo really gave me an extra boost of confidence. I felt like I knew what I was doing and was learning the ropes. My third task came from Marlene. I needed to research whether a firm had represented a company before and if so, what were the causes of action? I began by researching the firm profile on Westlaw and seeing if they had represented this client before. Once I saw the firm did represent the company, I narrowed the search of cases to just that company. After finding that information, I made a spreadsheet of the cases and sent it to Marlene. Another task in the books!
My fourth task was to research how to refer to parties during oral arguments at the Federal Circuit. I began by listening to oral arguments available on the Federal Circuit website. After listening to a few snippets of five cases and still not feeling confident in my answer, I looked to the Federal Rules of Appellate Procedure on Westlaw. There I found my answer and sent it off to Lema.
First piece of advice, always have confidence in yourself! It is easy to feel underqualified, especially during your first week on the job. The only thing you can do is move past the intimidation and prove to yourself you are qualified!
Second piece of advice is to always start with a Google search. It is important to educate yourself on the topic so you understand the basics. Then move to Westlaw or Lexis to address the more complicated legal questions.
Last, the paralegals, legal assistants, and support staff are a wealth of knowledge and always available to help. I could not have gotten through the first week without them!
During my second week on the litigation team, I was given another batch of tasks to get done. As I begin to feel more comfortable on the team, I continue to get more excited about the assignments that are coming my way.
My first task was to draft a complaint. Although this was not my first time drafting a complaint, it had been a while since I had drafted one. The legal support staff quickly sent over a shell for the complaint and I was off to work. I first started by looking at secondary sources on the elements of a complaint. After I familiarized myself with the sections of a complaint, I looked through the case file to review the facts of the case. This is often the hardest part for me- deciphering what the important facts are and what facts are not as important. Lucky for me, a complaint was drafted for the state case so I was able to figure out what facts were important and borrow from that complaint.
After reviewing the state complaint, I looked on Westlaw to educate myself on the cause of action. I read the rule and reviewed cases that also brought this cause of action. Although this is helpful, looking at other complaints filed by the firm for the same cause of action is always a great resource. I can see exactly how the complaint should flow and pinpoint what needs to be included. The support staff was able to share with me a complaint from another case and I was able to see how the complaint was to be written.
My second task was to summarize a decision that was made on a case at the appellate level. I am always second guessing my choices. Did I pull out the important facts? Was my summary even correct? These are questions I am always pondering when writing a summary. To move past this, I always begin by reading the entire decision through once. Then, I will go through and color code the decision by highlighting the issues, facts, conclusions, and holding all in different colors. Highlighting makes it easier for me to decide what to include. This gives me a template to then write my summary based on the color coded decision.
My third task was to then draft a letter to the client also summarizing the case. I had never written a letter to a client, but I was definitely up to the challenge. Although I could copy and paste some of my summary, I had to limit the legal jargon. While this client may have understood the legal jargon, I needed to make the summary as simple as possible. I did the best I could, and then read it out loud to make sure it made sense. Another week in the books!
My advice is to always look at other examples. This always helps me visualize what my finished product should look like and how it should flow. My second piece of advice is to always ask questions. When you are stuck on a task and questioning if the layout or format is correct, asking questions is always the way to go!
This week was the beginning of the first team rotation. Much to my excitement, I was placed on the transactional team. Although I was given tasks for the transactional team and attending those meetings, I also spent time using my litigation skills to draft a petition for one of our transactional cases.
It was difficult switching between my transactional and litigation mindset. On one hand, I am trying to catch myself up on transactional cases and being assigned transactional tasks. On the other hand, I am meeting with Lema to review an earlier petition I drafted and trying to use those skills to draft another one. Bouncing back and forth was difficult, but I was gaining new skills and improving my other skills which was valuable.
My first task this week was to compile documents requested by a company interested in licensing one of our client’s art. This was my first transactional assignment and I was excited. I believe this is the area of law I want to practice and was pumped to have a task to complete. After reviewing the documents requested and beginning to fill the forms, I realized I was missing some information and would need to speak to the client. This was my first time speaking directly with a client and I did not know what to expect. Would they be open to talking to a clerk? Would they feel comfortable sharing this information with me? After I introduced myself and told the client what forms I was completing, they were eager to help and provide the missing information. It was a great phone call and a positive first experience with a client.
My second task was to draft a petition for a business deal gone wrong. Just like I did for the first petition, I had to gather the facts, look at the rules and statutes, and find other complaints filed by the firm for the same cause of action. I felt more comfortable drafting this petition because I had received feedback from Lema on the first petition I wrote. Throughout the writing process, I noticed I was more confident in myself and my writing when deciding what facts to include. I am seeing growth and progress in my writing skills and am loving the results!
My third task was to research the differences between mechanic’s and vendor’s liens. This assignment stumped me a little because I didn’t even know where to start. Moreover, it has been more than a year since I took Property at school, so I was gonna have to do some digging. I began with a simple Google search- always a good first step. However, my search was only presenting information on mechanic’s liens and how to file them, nothing about vendor’s liens. The next step was to search for the statute on Westlaw to see if I could find the definitions of each type of lien. Although I found the statutes, I still wasn’t understanding what I was reading. My last step was to look at secondary sources on Westlaw to see what came up. This was when I found the definitions and how the two liens differ. Secondary sources are a great resource and can be helpful when google searches and the statutes are not presenting the results you are looking for.
My advice is to spend a few minutes jotting down what your research plan of attack will be before diving into the research. I find this helpful because it stops me from doing multiple searches on various platforms and ending up with 100 tabs open. Further, writing down key words and phrases to search will help you keep your research on track. Creating a plan can cut down research time and lead you to your result more efficiently.
As week 5 comes to a close, I find myself reflecting on the unique challenges that come with remote work. One of them being that the tone and delivery of a message is often lost when the message is sent over email or Slack. As someone who often overthinks, I find myself constantly worrying about how the messages I send come across to the recipient. Am I being too harsh? Am I imposing by messaging them? Am I being explicit enough in my message that they will know what I am talking about? Although some of these thoughts are obviously irrational, it is a great reminder of how important communication is, both for remote work and in person work. I am learning to be more explicit and offer more context in my questions to others so the recipient doesn't have to do any extra work except answer my question. Being an effective communicator is essential for any business, and it never hurts to work on those skills!
In addition to working on my communication skills, I had the opportunity to work with two new members of the L&M team- Amy Thomas and Beth Revere.
Over the last few weeks, I have been researching the overlap between the three types of intellectual property: patents, copyright, and trademark. I have enjoyed this research project because I am really interested in intellectual property and the protections artists, creators, and scientists are awarded for their work. After taking Intellectual Property last semester, I found myself drawn to the area of law and wanting to learn more. After hitting a research slump, Mac suggested that I reach out to Amy to discuss trademarks and what overlap she has seen as a prior USPTO trademark examiner. Talking with Amy was exciting- I got to learn about her and hear about her time at the USPTO. Hearing her stories and discussing the underlying values of trademark protection was the push I needed! I walked away from that meeting with more resources to look into and excited for my rotation on the IP team.
An area of law that I have not had much experience with is employment and labor law. When I was tasked with helping with employment and labor issues, I was nervous. I have no background in that area of law and have not taken any classes on either subject. But that is what internships and clerkships are about, exposing yourself to different areas of law and learning new things. Keeping an open mind is something I am always working on and being excited about what a new area of law may hold. Being tasked on these employment issues ended up being a real treat because it gave me the opportunity to work with Beth! I have enjoyed meeting with her and learning more about her background and legal career.
I was assigned a task for two different cases, but both with the same end goal- to find referrals! One thing Beth and I discussed was that when a client has a legal problem, they are going to ask their attorney, even if that attorney has no experience in that area of the law. But that is one of the cool things about working in such a client focused firm; that your clients feel confident in your skills and abilities to ask you for help on many different legal issues.
One task was to compile a list of reputable Pakistani law firms that specialize in labor and employment law. I could have easily done a quick google search, gotten the information of the first three law firms that popped up, and been done. But, I needed to find reputable and legit lawyers who specialized in this field. I looked for a reliable legal directory that ranks firms based on firm provided information and client reviews. I was able to find the Legal 500, which publishes a ranking every year. Through the Legal 500, I was able to find 3 reputable firms, jot down their information, and send that information to Beth.
The second task was to also compile a list of referrals, this time for companies that combine financial and insurance services and provide employee benefit packages. There were already two leads provided, but the team needed one more. I spent time researching companies that offer this “one stop shop” for small businesses and ultimately found two leads. I filled out referral forms to be connected with a financial advisor at these companies so the team has a point of contact. Hopefully this leads me to another referral for our client.
Another task for me this week was to research what recourse a creditor has when the debtor does not notify the creditor of their bankruptcy proceedings and the creditor does not file a timely proof of claim. Once again, I pulled out my Bankruptcy Code to see if I could find the answer. I knew this may involve a matter of discharge- that the debtor could be released from liability for this debt because the creditor did not file a proof of claim within the given window. However, this question is more complicated because the debtor did not include the creditor in their bankruptcy petition filed with the court, thus there was no way the creditor would be put on notice to file a proof of claim. After a few hours of research and not finding the answer, I decided it was best to phone a friend. I called my bankruptcy professor from last semester to see what his advice would be given this complex situation. After talking it through and listening to some very helpful advice, I had an answer on what our best course of action would be.
This leads me to my advice for the week- when you don’t know, ask! I may repeat this every week, but that is because it is such good advice. I could have wasted hours and hours researching the answer to that bankruptcy question. Instead, I knew it was more beneficial to ask someone and talk through the answer.
Another piece of advice is to take the time to build rapport with your professors, support staff, and supervising attorneys. You never know when you are going to need to call a friend to help you with a tricky research question in an area of law you do not specialize in. Furthermore, it comes in handy when you are referring clients! You are going to feel confident referring a client to someone you have a professional relationship with. That may in turn lead to your name as a referral for someone else’s client as well!
Week 6 in the books! The theme of this week was strategy.
I was in a fair amount of meetings this week. Whether it was with my fellow clerks, attorneys, support staff, or even a client, it is always nice to see the face behind the Slack message or email.
I started off the week in a meeting with Megan discussing a bankruptcy issue. These bankruptcy issues keep following me- and I am not mad about it! Being able to meet with Megan, discuss the issue and possible recourse was awesome. As a remote firm, we spend a majority of our time communicating over Slack and email. Thus, when we get to meet over video and collaborate, I have the opportunity to learn about fellow coworkers and see their strategy styles.
One of my tasks early this week was to meet with an insurance specialist to discuss insurance options and employee benefit packages. Meeting with someone outside the firm and learning about this topic was really exciting for me. I don’t know much about insurance and enjoyed learning about the business/employer side of insurance. Having the opportunity to listen to a specialist in the insurance field and discuss what they believed would be the best strategy was interesting. One of the biggest takeaways for me this week was the importance of strategy and this was a great introduction to the week!
I have been working with Beth a lot over the last few weeks after getting assigned to employment matters. This is something I do not have a lot of experience in so collaborating with Beth and researching different employment matters is a treat. I spent part of Friday researching the US restrictions on sharing information and technology with other countries. I don’t know much about fancy technology and AI, so researching and finding government rules and regulations was a bit tricky at first. At one point, I had 5 different tabs open: Westlaw, Lexis, Cornell, the White House website, and an article from the New York Times. Although slightly haphazard, I was able to find the rules and regulations Beth was looking for. Sometimes this can be a quick Google search, other times it is an in depth Westlaw dig. Either way, finding the answers is always rewarding!
Although I have been working with Jordan on a petition for another case, we have not had much video time due to the holiday last week. Because of this, I was very excited when he invited me to a client meeting regarding a contract dispute. This was another important strategy meeting where I got to watch Jordan in action. I was amazed by his thought process and his creativity in finding solutions. Being able to attend a meeting with 5 solutions and not problems is always preferred, and that is exactly what Jordan did. Prior to the meeting, he asked me to research other solutions to the issue the client was facing. I read the contract twice: once as a thorough read through and the second as a highlight extravaganza. Anything I thought was suspicious or possibly illegal, I highlighted. Although California contract law differs in a few ways compared to Texas law, I was able to find one clause of the contract that was illegal. I shared this information with Jordan and learned that this would be a great negotiating point between the parties. Next week will involve writing the letter to opposing counsel so stay tuned!
I spent a majority of Wednesday talking with Marlene and working on compiling the petition and related documents for client review. Talking with Marlene is always a treat. She is so knowledgeable and good at her job. I learn so much from talking with her and watching her work. She shared her screen so we could edit documents together and so I could watch her fix formatting problems. This is a huge plus because I am getting feedback on the spot and able to correct it myself. I am able to ask follow up questions and learn from my mistakes. I am grateful for this experience as I know most interns are not offered these opportunities. Although this may have taken Marlene longer to complete the task, I am so appreciative of her time and her patience.
My advice for the week is if there is an opportunity to strategize with an attorney or paralegal, TAKE IT! You have the opportunity to learn from people who have been in the field much longer than you and learn their tricks and tips. It is valuable information that takes years to obtain, so try to expose yourself now!
Another busy week of assignments, meetings, and learning! It was my first week of my IP rotation and it was so busy! The IP team has a lot of moving parts- you have Amy Thomas the trademark guru and Jeoyuh Lin the patent master working the IP team. In just one week I have learned so much already.
What I was most excited for this week was the All Hands meeting. Because this is a remote firm and I am only here for the summer, it was a treat to see everyone in the firm virtually. Practice group leads were tasked with presenting practice updates, which was a perfect introduction to my IP rotation as I got a sneak peek as to what I would be working on for my last few weeks at the firm.
My first IP meeting was with Amy and Tami. Amy and Tami were so welcoming and gave me a rundown of the cases they were working on. I also got my first trademark task- to create a status update of a client’s multiple trademarks. This was a good introduction to the world of trademarks because I had to use the Trademark Electronic Search System, or TESS. This online tool allows you to search the USPTO's database of registered trademarks and prior pending applications to find marks that may prevent the registration of a mark due to a likelihood of confusion refusal. I had never used TESS, let alone heard of it! Amy and Tami both showed me their ways of using TESS and then it was my turn to give it a shot. I created a table, added the proper headings, and inserted the information from TESS. Tami looked over it and provided helpful feedback to perfect the table.
But the task didn’t stop there! My second task was to recommend if the client’s mobile app could be trademarked. This required me to look at the International Class system, a system used to classify goods and services for the purpose of registering trademarks, and figure out what class the mark would best fit. Another thing I had never heard of- international classes. I reviewed the classes and was able to narrow down what class it would fit in- IC 009. Then I took a shot at drafting what the trademark would cover, meaning what the mobile app does. This took longer than expected because the mobile application is a closed app. So to understand what the mobile app does, I had to be resourceful. I read the customer reviews, the description on the App Store, and looked at their website so I could understand what services the mobile app offered. This provided me with enough information to write the description.
I also got to meet with the patent team and get a nice refresher on patents. I have never looked at a patent application, so I was confused at first. They were talking about specs and abstracts and I just could not keep up. After the meeting, Jeo and I stayed so he could show me a patent application and walk me through the anatomy of a patent application. I appreciated Jeo taking the time to walk me through an application and explain to me what each section was. He then tasked me with reviewing three patent applications and familiarizing myself with the inventions so I would be prepared for the client meetings next week. Stay tuned for an update on how those go!
Another meeting this week was with Michelle Arab, our patent paralegal. Fellow clerk Michelle Kung and I got to watch Michelle A. complete a corrective assignment for a previous patent filing. As you can guess, just as I have never seen a patent application, I have also never filed a patent application. I really appreciated Michelle A. taking us clerks for a ride on the patent filing rollercoaster. She walked us through each step, explaining what information was required and what documents she was uploading. This step by step demonstration was so helpful and informative. Watching someone complete the steps and explain what they are doing is one of my preferred learning styles. By the end, I felt I could even file a corrective assignment!
I also got my weekly dose of Beth work! Although this was not a labor and employment matter like I normally get from Beth, it was a great learning opportunity! In a follow up from my research last week on US restrictions on information and technology sharing, she asked me to create a write up for the client explaining what these restrictions meant for their technology. Beth wanted to answer two questions: (1) what are the restrictions on technology exports now and (2) what other restrictions could happen in the future. This technology has been a hot topic for the White House lately. A lot of restrictions are being implemented and there are talks of other restrictions on the horizon. Thus, understanding the restrictions and being up to date on future restrictions is critical for this client. I did a quick refresher on last week’s research and decided I needed to do some more before I felt comfortable drafting. I did another Google search to review any press releases and news articles regarding future restrictions that have been announced. I was able to find a great report from the Office of the President that discussed the future restrictions. This rounded out my research and I was able to type up the summary for the client. This was a good project for me because I don’t know much about technology restrictions and have always been interested in learning more. I always felt like this topic was so over my head, that I would never understand it. But these are my favorite projects because I am forced out of my comfort zone and get to learn a new subject!
My last task this week was also a follow up from some bankruptcy research I did during week 5- what recourse a creditor has when the debtor does not notify the creditor of their bankruptcy proceedings and the creditor does not file a timely proof of claim. Megan asked me to type up the letter we would be sending to the trustee asking for a timely filed proof of claim. Writing letters like these make me nervous- I am always overthinking the words I am writing and getting caught up on silly things. Always questioning: is that the right word? Does this make sense? Is that the correct legal jargon? You have to balance the legalese with the “it has to make sense” aspect. I created a few drafts of the letter, walked away from it for an hour, and then came back to it to decide which parts of each version were best. I compiled the best parts and included those in my final draft.
My advice for this week is to not overthink too much. I spent so much time overthinking my writing this week that I was sick of myself and the doubt by the time Friday came around. I do not normally walk away and come back to a project, but I did when writing that proof of claim letter. But, it really helped and I learned something about myself. I gave myself the break I needed and my mind was clearer when I came back to the project. This allowed me to draft a great letter that balanced the legalese perfectly. This was a good lesson for me to learn, and I am glad I had the space to do so.
Another week, another journal! My second week on the IP team has come to an end, and I spent a lot of time practicing my litigation skills and attending client meetings with Jeo. Such a great week of learning and growing!
I attended three different client meetings with Jeo and diligently took notes during each meeting. Doing this helped me stay engaged during the meeting and will give me something to review when discussing these cases during the weekly patent meetings next week. I was able to see three different examples of patentable subject matter and understand why each invention was patentable.
One of the meetings was a client introduction so the client gave a full background and explanation about their product. This was my favorite meeting this week because I was really able to follow along and be at the start of this case. I was also taking notes of the questions Jeo was asking the client. He was asking specific questions about what the invention does, what is it fixing in the field, and if there were other programs or methods similar to it? He was asking these questions because they are limitations for patent approval. If there is not a real world application of the invention or it is similar to another method/invention already out there, it may not be patentable. This was a great strategy for a first time consultation when you are learning about a client’s patent. I really appreciated being included in this meeting and learning more about Jeo’s strategy during client meetings.
In addition to attending client meetings, I was also behind the scenes preparing. I wanted to come into these meetings with a thorough understanding of what the invention was. Otherwise, I would not know what information was important for meeting notes nor would I understand what was going on. While reviewing materials and patent applications before these meetings, I made sure to print out all documents and review the client websites.The client websites usually have the simplest explanation of the invention, and that was exactly what I needed. Some of these inventions are over my head and the science is complex. But, reading the website descriptions or watching video explanations of the inventions was incredibly helpful.
After finishing my trademark search and trademark recommendation from last week, I was given another trademark search task. This time, I was much more efficient because I was familiar with TESS. In addition, Amy was kind enough to send me a trademark search guide which discussed the data field codes and common mistakes when using TESS. This was so helpful for my trademark search task this week where I was researching if a word is descriptive when used to describe wall panels. I created a few field tag searches and checked with Amy and Tami to make sure the searches were not too broad or narrow and would lead me to the correct marks. Then, I created a table that outlined my findings and included information if the mark was deemed descriptive when used in connection with wall panels. I first had Tami check my table, and after getting the green light, sent it over to Amy. Stay tuned for next week’s journal when I talk about attending a Trademark Basics Bootcamp hosted by the USPTO!
Another week, another bankruptcy research task! This week I needed to research if bankruptcy proceedings toll the statute of limitations for non-bankruptcy claims. Just as I do every time I get a bankruptcy research task, I started with my handy Bankruptcy Code and reviewed the code to see if I could find any applicable provisions. I remembered that an automatic stay acts as an injunction against creditors and halts any actions by the creditor to collect debts from the debtor. I flipped to the provision and made sure (1) that it applied and (2) was not covered by any exceptions to the rule. Then I went to Westlaw and looked for relevant case law that confirmed my research. I was able to find a case that described the policy behind the automatic stay and why the automatic stay tolls the statute of limitations for non-bankruptcy claims. I was confident in my research and drafted up a quick memo. If I ever run out of bankruptcy research, I don’t know what I will do with myself!
Although I had a lot of assignments and meetings this week, I spent a lot of time preparing for mock trial. This was another great learning experience where I felt like I was actually going to court. I was reviewing documents, reading correspondence with opposing counsel, and preparing my own brief for the argument. While I did learn a lot about the substantive aspect of the case, I learned much more about my preparation style and where I need to improve on my delivery. I was so nervous about this mock trial, but the second it started that all went away. I was delivering my argument and was no longer anxious. Before I knew it, I was beginning my rebuttal and then it was over. I received great feedback from everyone who attended and feel more confident in my public speaking abilities. I am really glad this is part of the program, and am maybe even reconsidering a career in litigation.
My advice for this week is to always come to a meeting prepared, but know when you need a break. I spent a lot of time preparing for meetings and mock trial that I noticed when I was not being efficient in my preparation strategy. Just like last week, I needed to step back and take a break. I was so deep in the research trenches I was not focusing or retaining the information. When you have been researching a topic for so long, you begin to miss the big picture and go down a rabbit hole. Thus, stepping back and taking a breather can be the push you need to keep going in the right direction.
It is hard to believe this internship is coming to an end. It is crazy to think I started just 9 weeks ago and soon I will be heading back to school! Next week is my last week and I am finishing up all assignments and research projects before my internship finishes. But- just because my time here is almost up, doesn’t mean I am not still getting substantive and important assignments!
I started off this week in a trademark client meeting with Megan, Amy, and Beth. I was really excited about this meeting because Amy was reviewing the findings of a trademark search I had completed. It was so cool to see my work presented to a client and watch Amy in action. Amy has such a deep understanding of trademark law and it really shows when she is in client meetings. But truly the cherry on top was seeing my work on the screen during that meeting. It is so rewarding when your hard work pays off and when your work product is actually useful for the attorney.
Throughout this week, I worked with Jeo on amending a patent application for one of our clients. I reviewed the objection letter from the USPTO and tried to think of ways we could amend the claims so the patent would be approved. This was a great learning opportunity for me because I was reviewing an objection letter from the USPTO office and working on strategy and negotiation points to respond to this letter. Jeo explained he often sets up interviews with patent examiners so he can work with the examiner on getting the patent approved. Jeo explained attorneys often won’t take the extra step to work with the examiner and instead go straight for the appeals board so they can have their day in court. Instead, a great strategy is to work with the examiner and discuss what needs to be amended, added, or removed from the application so the examiner will approve it. This is a great strategy to lower costs for the client and become familiar with an examiner who you may run into again.
One of my other tasks this week was to draft a research memorandum on the guidelines for determining obviousness of a patent. This was a topic I had touched on briefly before in my IP course, but was excited to do a deeper dive into one of the most cited reasons for why patents are denied. I started by looking at the statute, as I always do, to familiarize myself with what the law says/ where it stands today. Then, I reviewed my notes from my IP class so I could remind myself of what the cases were that discussed this topic. From there, I researched the cases on Lexis so I could Shepardize the case and see the history. I was able to create a timeline of how the obviousness standard has progressed and what the controlling test is for courts and patent examiners. I made sure to include this timeline in the research memo because the cases offered additional guidance on how patent examiners determine obviousness. Understanding how patent examiners determine obviousness is key in drafting a patent claim so you can possibly avoid a denial based on obviousness.
I also attended a consultation with Allie and saw her work her magic! This was such a treat for me because I don’t often get to work with Allie. The consultation was for a trademark application, so I was definitely excited because this summer has really peaked my interest in trademarks. As the consultation began, I began to take notes of what questions Allie was asking- What is the trademark for? Will you need other trademarks? Have you used this trademark in the public space? Have you seen others use this trademark? She was asking the questions that were going to gather the most valuable information so the team could decide if this was a matter we could help the client with. Knowing the correct questions to ask is the best strategy to determine if you can be of service to someone with a legal problem. This was a great learning experience because knowing how to draw out the important information is such a great tool for a lawyer. I am so glad I attended this meeting!
Another task I tackled was completing a trademark application. Amy was kind enough to share her screen with me earlier this week and show me how to file a trademark. This was such a great learning experience for me because I got to watch Amy go step by step on filing a trademark. After the learning session, I felt confident in completing a trademark application and was excited to try it myself. However, when I finally started to fill out the application, I began running into problems left and right. First the image of the design mark was the wrong pixel size, then the specimens I had to use were also the wrong size. It was hard not to feel defeated because everything that could go wrong, was going wrong. I was able to fix the pixel size of the design mark, but I am still trying to figure out how to change the size of the specimens. These were also not issues Amy ran into when she showed me how to file. The trademark application website is so persnickety- everything has to be a certain size. This was one of those times where I had to step back and return to this project at a later time. Continuing to frustrate myself and run into error messages on the trademark website was not making this a good learning experience.
This brings me to my advice for the week- when you don’t know, google it. I googled how to change the pixel size of a jpeg and was able to figure it out and add it to the trademark application. Doing a google search is often a great way to start before you ask others because you can sometimes find the answer there. Then, you learn something new instead of someone just doing it for you- and that is valuable!
Last week means my last journal! This summer flew by so quickly. I worked on so many substantive assignments, learned so many new things, and had the opportunity to work with some of the most talented people. The attorneys and legal staff at this firm amazed me with their kindness and knowledge of the law, and to work with them was truly a pleasure.
Although this week was my last, it was also my favorite. Up until the last hour of this internship, I was still working on challenging, substantive assignments. Even though these last few assignments were hard,, I dove into the research anyways. I started this internship off with the goal to learn as much as I could. To absorb knowledge and be able to apply it to real world situations. And I ended it just as I started- learning as much as I could!
I started this week by drafting a response to a trademark objection letter. Although this wasn’t a difficult task, I wanted to familiarize myself with the procedure and paperwork surrounding this letter. It is one thing to complete a task, it is another thing to actually read the supporting documents and understand the procedure of trademark objections. However, there was a substantive question that needed to be answered before I could respond to this letter- could a foreign company own a state trademark? Would we need to change the owner of the trademark? Could we just include an ownership amendment in our response? To get to the bottom of this question, I called the Secretary of State office. I was able to talk to someone and learned that if the mark has been accepted, you need to file an assignment and if the mark has not been accepted, you can update the ownership information when responding to the objection letter. Here, I actually learned something about the procedure instead of just writing a letter. I was actually able to take something away from this task.
I was also able to figure out my technology issues from last week and finally complete two trademark applications for Amy’s review. Filing these out just felt like a slam dunk. After all the issues I faced during the first trademark application, the second one felt like a breeze. There were no “pixel is too large” error messages or not being able to upload a PDF of the specimen. I ran into every possible technology hiccup I could the first time that I knew how to avoid those the second time. THAT is a prime example of learning by doing and learning from those mistakes to avoid them in the future.
I worked on a second trademark refusal response that was a lot more difficult than the one earlier in the week. This trademark was refused for being generic and primarily geographically descriptive. The generic refusal was easy for me to understand. You can disclaim the generic wording, amend your trademark application, and register the mark on the supplemental register. However, the primarily geographically descriptive was a real doozy. This was not something we covered in depth in my IP course so I only had the basics on the primarily geographically descriptive refusal. Amy offered to give me a hint, or try it out on my own first. I decided to give it a shot first and see what I could come up with. I chatted with Amy back and forth about my findings and arguments we could raise. As I shared more arguments, and she shared more feedback, I began to realize there was no persuasive argument to present to the examiner. Amy instructed me then this would become a client decision and we needed to draft a letter discussing the basis for refusal, what the options were, and why arguments were not going to be persuasive. This turned into a client matter which I wasn’t expecting when I was tasked with drafting the response. But it turned out to be a great learning experience and I got to learn more about primarily geographically descriptive refusals.
I also attended one last client consultation with Allie. She continues to impress me every time I get to sit in on one of these consultations. Her line of questioning is so great and hits on all the requirements to get a patent: What are you trying to protect? Have you shared this with others? Are you manufacturing? She also makes it a point to ask what their goals are in the future, what other legal services they may need. This is a great way to cover all the bases for the client and let them know you offer these services as well. I learn so much during these client consultations and am so glad I can attend them!
Throughout this week, I was researching patent refusal based on obviousness and drafting arguments to present to the patent examiner. This assignment was one of the hardest of the summer for me for a few reasons. First, obviousness is one of the most complex standards of patent law. It takes years of practice to understand obviousness and the test required. Second, it was briefly touched on during my IP course because it is so difficult. Luckily for me, Jeoyuh helped me through it. We stayed after our IP team meeting and I bounced ideas off of him and showed him where my research had taken me. I was so grateful he took the time to walk me through this and provide me with other blogs and articles to review. It made a very daunting task much easier.
After a whole summer of working with this superb firm, my last piece of advice is to communicate when you are running into problems. There were a few times this summer where I did not have power. So to attend meetings, I used my phone. But I couldn’t see what was on the screen because it was so tiny. Those on the call would either explain to me what we were viewing or send it to me directly so I could look at it and zoom in. This made me feel so included and part of the team because they cared enough to help me. Further, I noticed throughout the summer how collaborative and helpful everyone was with each other. That can be hard to find in the legal profession. I feel so lucky and grateful to have worked at such a great firm and definitely sad to go. Cheers to a great summer filled with awesome people, learning, and growing!