Mark Costello, VP, General Patent Counsel, Chief Strategy Counsel, Xerox Corporation

Costello_Mark-webMark Costello

VP, General Patent Counsel, Chief Strategy Counsel at Xerox Corporation
33 years in the IP law profession.

How did you get into a career in IP law?

During engineering school at the University of Massachusetts at Lowell, I realized that, while I loved engineering and science, it was not something I wanted to pursue as a career. In casting around for opportunities where I might be able to use my engineering background, an acquaintance recommended that I look into patent law. I had always had an interest in law, so the suggestion was an easy one to follow up on. In law school at Case Western Reserve University, I took every IP course offered, and enjoyed them, and the rest of my classes, immensely. About halfway through law school, I took a law clerk job at a local patent law boutique, where I learned the basics. A few years later, I heard about the opportunity at Xerox, and was excited to join a company where innovation was at the heart of their business. I have been with Xerox ever since, and it has been an outstanding career.

What are the top 3 things you really like about working in IP law?

  1. Connection with brilliant people – I work with scientists and engineers at their most creative moments, helping them obtain recognition for their most important work.
  2. Patents have developed into the currency of business – and that has involved me in many of the most important transactions that my company pursued.
  3. The changing nature of the technology and IP landscape – I am working on the cutting edges of technology and business.

Do you feel like there are advancement opportunities?

IP law has many, many facets, and if one opportunity is not working out, there is always another. Many IP lawyers start their careers writing patents – and there is full and rich career in practice in front of the Patent Office. However, some will veer off into litigation, and others into transactional matters, and still others into non-patent IP specialties like trademarks, copyrights, trade secrets. In each area, there is an opportunity for excellence, and advancement into leadership roles

Do you have any tips for people who are looking for their first job in the field?

First jobs can be hard, and I think you have to look at every opportunity and find one that is right for you. Law firms, both boutiques and larger firms, offer great opportunities to learn the IP business, from different angles, with many boutiques focusing on patent preparation and prosecution, while larger firms focus on IP litigation (understanding that there are always some excellent organizations who do both). Corporations tend to want more experienced staff, but may offer opportunities for engineering staff to move into IP legal or IP management functions. The Patent Office is also a great first opportunity – and may offer an outstanding career for lawyers who want to work in government.

Is there anything else you would like to share that may be helpful for an individual thinking about starting a career in IP law?

For law students and new lawyers, I think the most important thing is to focus on being a great lawyer first, and an IP specialist second. IP law practice is first and foremost a practice in law – the principles of contracts, property, litigation, and legal research writing all apply equally to IP law. The best IP lawyers I know are all among the best lawyers I know, and would have been successful lawyers no matter what their specialty was.

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