Victoria Cundiff ’80 Discusses IP Law Careers at Year’s First Chirelstein Colloquium

The Yale Law School Center for the Study of Corporate Law opened this year’s Marvin A. Chirelstein Colloquium series with a talk by eminent intellectual property litigator and center Fellow Victoria A. Cundiff ’80. In a conversation moderated by Sterling Professor of Law and center Director Roberta Romano ’80, Cundiff discussed building a career in intellectual property law. The Sept. 7 event was co-sponsored by Yale Law & Business Society, Yale Law Women+, the Yale Law School Career Development Office, and the Chae Initiative in Private Sector Leadership. 

Cundiff was a partner at Paul Hastings, LLP for more than 30 years, leading its trade secrets litigation practice. She is currently Chair of the nonprofit, non-partisan Sedona Conference Working Group 12 on Trade Secrets Law. She is also a Visiting Lecturer in Law at Yale Law School, where she teaches Intellectual Property: Working with Patents and Trade Secrets. 

Speaking to an audience of 58 students, Cundiff began by describing the four main areas of intellectual property (IP) law: patents, copyrights, trademarks, and trade secrets. She told students that to choose an area, they should look beyond whether they have technical backgrounds. Writing patents and interacting with the U.S. Patent and Trademark Office do require a technical degree and taking a special bar exam, she noted. But some areas do not need a technical background, she explained — for example, litigating patent questions, such as licensing, before district courts.

Cundiff then shared how she came to practice IP law. She said she graduated from law school with a general sense that she wanted to be a litigator, but no plans to specialize in IP. After working at a generalist firm on a securities case that went to trial, she sought out more trial experience. She discovered IP litigation, which had frequent injunction proceedings. Cundiff said that as college philosophy and history major, she appreciated the philosophical challenges posed by a regime seeking to distinguish innovation from execution, and to reward innovation by protecting the resulting intangible assets. Cundiff found that she enjoyed working with her clients, whom she called “creative people seeing the future and making it happen.” She also enjoyed working with law firm colleagues from different practice areas who relied on her IP expertise. 
 
Cundiff discussed other areas of the law in which attorneys must know about IP. Transactional attorneys, for example, need to help clients understand the value of the IP that they are holding, selling, or buying, and how to structure transactions to optimize that value. Employment attorneys need to understand trade secrets because they often work to ensure that employees do not share their company’s trade secrets with competitors or bring competitors’ trade secrets to their current employer. She also talked about careers in government that implicate IP law. Some were familiar (the U.S. Copyright Office and the U.S. Patent and Trademark Office) and some less so (the International Trade Commission). She also covered how IP expertise may translate into in-house careers. 

How might students prepare for an IP law career while at Yale Law School? To explore transactional work, Cundiff recommended, among other courses, the Entrepreneurship & Innovation Clinic. She stressed that IP practitioners are always eager to learn, including from one another. She encouraged lawyers looking to get started in IP law to find opportunities for collaboration outside of their day-to-day work by joining bar organizations and industry groups. 

Cundiff concluded by describing her current work chairing the Sedona Conference Working Group 12 on Trade Secrets Law. The conference brings together judges, academics, and practitioners to discuss complex trade secret questions, debate possible ways forward, and to reach consensus on best practices. A number of the group’s published commentaries have been cited with approval by courts across the United States. 

Acknowledging that her talk was meant to be a general overview of IP law careers, Cundiff offered to meet with students individually as part of a mentorship initiative sponsored by the Yale Law School Center for the Study of Corporate Law. 

The Marvin A. Chirelstein Colloquium on Contemporary Issues in Law and Business brings leading members of the corporate bar, business and investment communities, judges and regulators to the law school to discuss emerging practice and regulatory issues. The aim of the colloquium is to provide a realistic sense of the varieties of business practice. Chirelstein inspired numerous students to pursue careers in the business and tax fields while he was the William Nelson Cromwell Professor at Yale Law School from 1965 until 1982. His casebook with Victor Brudney on corporate finance, first published in 1972, introduced modern finance into the law school business law curriculum. His guide Federal Income Taxation is now in its 14th edition. 

Upcoming colloquiums are listed on the center’s calendar.