Intellectual Property News – Should Arizona adopt a new IP certification?  Me thinks YES but with clarifications!

Introduction

Two states bars currently recognize a IP legal specialization (North Carolina and Florida).  A third (Arizona), a jurisdiction where I am licensed, currently is exploring the issue.  I am in favor of it being a Copyright infringement lawyer (a unique niche speciality practice area requiring specific learning and experience, handling copyright infringement, torrent defense, music law, software licensing audits and the like).  For example, many “IP Lawyers” have never handled these types of cases, and yet may claim to be “IP Experts.”  I think any IP specialist certification needs to be specifically limited to the IP area of expertise.  To me, there are four main area (or branches) of intellectual property law.

• Copyright
• Trademark
• Patents
• Trade Secrets

Each of these areas require specific understanding of the case law, statutes, and specific legal experience handling the particular IP case.  As such, here is my response to the Arizona state bar seeking comments from IP practitioners.

Dear State Bar:

I like the idea and support it.   However, I do think this needs to be broken down further.

There should be a general IP Specialist certification (but a practitioner must prove expertise in their specific area of expertise):

“IP Specialist ™– Trademark” 

“IP Specialist ® – Patent” 

“IP Specialist © – Copyright” 

“IP Specialist – Trade Secret”

Otherwise, it becomes misleading to say you are an IP Specialist (suggesting experience handling trade secrets, or patents, for example) when this may not be the case.

To me, the way the internet is building out these are four very different and distinct areas of law and I doubt one person can truly be an expert in each (much less keep up with their practice, and follow all the new caselaw and developments in each area).

So by clarifying the scope of the expertise (each practice area should spell out its own special criteria – cases handled, etc.), the public will be best served.  That, after all, is the goal isn't it?

Thank you for the opportunity for input.

Steve Vondran, Esq. [SBN 025911]

State Bars with IP related certifications

There are currently two states that have certifications for specialization in intellectual property fields. The Florida bar offers the Certified Intellectual Property Lawyer designation and the North Carolina State Bar offers its members an opportunity to become Board Certified in the trademark practice area.

A. Florida:  According to their website the minimum certifications

“Minimum standards for intellectual property law certification, provided in Rule 6-26.3, include:

? Practice of law for at least 5 years;

? Experience in one or more of the 4 areas of intellectual property law: patent prosecution, patent infringement litigation, trademark law or copyright law, in the 5 years immediately preceding application; ? Substantial involvement in the specialty of intellectual property law- 30% or more in the 3 years immediately preceding application;

? 45 hours of approved intellectual property law certification continuing legal education in the 3 years immediately preceding application;

? Peer review;

and,

? A written examination.”

Other requirements may also apply.

B.  North Carolina:

As to North Carolina, here is what their website says as to their Trademark Specialist certification:

“SUBSTANTIAL INVOLVEMENT IN TRADEMARK LAW

During the five years preceding application:

Average of at least 500 hours a year.

Minimum of 400 hours for any one year.

Practice equivalents may be accepted for the following:

• law professor in trademark law for up to two years;
• trademark examiner at the USPTO for up to two years;
• administrative law judge for the TTAB for up to three years.

CONTINUING LEGAL EDUCATION

During the three years preceding application:

At least 36 hours of CLE in trademark law and related areas.

Of the 36 hours, at least 20 hours in trademark law.

The remaining 16 hours may be in related areas including: business transactions, copyright, franchise law, internet law, sports and entertainment law, trade secrets, and unfair competition.

PEER REVIEW

Must provide the names of ten lawyers or judges who are familiar with the competence and qualification of the applicant in trademark law.

All references must be licensed and in good standing to practice law and must have significant legal or judicial experience in trademark law.

A reference may not be related by blood or marriage to the applicant nor may the reference be a colleague at the applicant's place of employment at the time of the application.

EXAM

6 hours long (two 3-hour sessions).

Morning Session – 9 AM to 12 PM.

Afternoon session – 2 PM to 5 PM.

Includes multiple-choice, short answer, and short essay questions.

Exam administered at the NC State Bar building.”

Again, additional requirements may apply

Conclusion

I think certification of IP professionals and experienced attorneys in the focused practice areas noted above make good sense.  At least for Arizona, it shows that the “Silicon Desert” recognizes the importance to attract technology companies to Arizona (startup companies would like to know there is adequate legal professionals in this area).

For example, in Palo Alto and San Francisco California there are hundreds if not thousands of qualified IP professionals to handle the needs of the startup community.  This is important to technology companies knowing they have local legal support, and it makes it easy to identify experienced professionals to retain.  Obviously Northern California is the place to be for IP lawyers, but regionals technology hubs likes Austin, Texas, Boston Massachusetts and Seattle, Washington (as well as Tempe / Scottsdale Arizona) also need qualified legal professions if they are to grow and thrive, as they are doing now.

So I fully support every state seeking to grow out this speciality certification area.  At the end of the day, this benefits the public and large, including individual artists, filmmakers, software developers as well as technology startups such as mobile application or web-based software companies, telecom and more.

Contact an INTELLECTUAL PROPERTY lawyer

If you need help with a copyright or trademark issue contact us at (877) 276-5084.  We offer low flat rate legal fees for most non-litigation cases.