ABA Career Counsel
Your Career Partner on the Web

Attorney By Attorney Career Profiles of the Profession Who? Mark Banner What? Primary Practice Area & Subspecialty Fields: I practice primarily in intellectual property law. Most of my time is spent in litigation, and of that most specifically in litigation of patent disputes. When? Years in Practice Area: Since 1980 Years in the Legal Profession: Since 1980 Where? Employer: Banner & Witcoff, Ltd. http://www.bannerwitcoff.com City/State: Chicago, IL Law School: The John Marshall Law School, Chicago Undergraduate School/Degree: Purdue University, B.A. Why? Pluses/Challenges of Practice Area: The pluses and challenges of this practice area are too many to list. Imagine someone paying you a lot of money to have fun, figuring out how things work, talking to people who are the best in their field, and basically being allowed to play with very high-priced toys! It’s very much fun, even if it is hard work. I sometimes like to say that the only difference between being a patent trial lawyer and being in Kindergarten is you don’t get to take naps as a trial lawyer. Otherwise, it’s just as much fun. Core Skills/Key Knowledge Needed in Your Practice Area: As a patent lawyer you need a familiarity with technology, and a willingness to learn about complex technology. Typically to practice before the Patent and Trademark Office — obtaining patents — you need a degree in science or engineering, or some equivalent scientific training. But the core skills of the lawyer part of this profession is being a good lawyer — knowing how to write, analyze complex facts and issues, and persuasively present your point of view. Advice to Lawyers and Law Students Interested in Your Practice Area: First, do well in law school. IP law attracts very talented people, and it helps to be differentiated from among the pack. Second, be able to demonstrate an affinity for technology and an ability to speak the language of the technical subject area you are interested in pursuing. How? Career Path to Current Position: Typically, a patent lawyer is an engineer or scientist by training who then went to law school. After law school typical paths to success in the job may include clerking in a law firm and/or being an associate attorney there, working in the Patent and Trademark Office as an Examiner, or working in-house at a corporation with an IP department. My personal career path, however, involved none of the above. While I had technical training, my post-undergraduate career was in an unrelated endeavor. After law school I joined a law firm that concentrated in this area, and learned a great deal from my colleagues. Influences and Mentors: I was heavily influenced by some of the best lawyers in our profession, many of whom I worked directly with (in my firm) and some of whom I worked against, as opposing counsel. I learned from both. Those in (or formerly in) my firm included Dennis Allegretti, George Newitt, Sheldon Witcoff, George McAndrews, Ed McKie, and Tim Malloy, all of whom either are or were great trial and appellate lawyers. Those outside my firm include Jeremiah McAuliffe (at Pattishall, McAuliffe et al., Chicago.) , Ed Foote (at Winston & Strawn, Chicago), Ozzie Ayscue (at Smith, Helms et al., Charlotte, N.C.). Mr. McAuliffe and Mr. Foote taught me volumes by being as excellent opposing counsel as one could find. Mr. Ayscue was a great source of inspiration as a local counsel in a case where wise counsel and advice was most helpful. Additionally, I learned a great deal by teaching at various law schools around the country as an adjunct professor, learning not only from the students themselves but from the other adjunct professors. One in particular stands out: Larry Schwartz. He was a good friend and colleague in teaching a patent trial practice course at Georgetown. His passing late last year reinforced in my mind the importance of learning what you can, when you can, from wherever and whomever you can. Suggested Reading About Your Practice Area: Visit the ABA-IP Law Section website. Also visit the AIPLA website. Finally, read publications about the daily practice, including the IPO Daily News (on its website), the BNA PCT Journal, and the IP Law Section of the Law Journal website. Job Search Techniques Used in Finding Your Position(s): I really did not have much of a search effort. In 1979 patent firms were desperate for talent, so it was rather easy. With the demand as high as it is today, I suspect that is still true. Bar Affiliations and Activities: I am very active in the ABA IP Law Section, current serving as its vice-chair. Previously I have been active in other state and local bar associations. I highly recommend that activity. Recent Professional Publications: I was co-author of a chapter on Evidence in the BNA book on Patent Litigation (recently published), and am the co-author of an upcoming chapter in a Patent Litigation book, the chapter focusing on Witnesses Special to a Patent Trial. The book will soon be published by PLI. I have authored numerous articles. Recent Professional Presentations: I speak frequently at numerous bar association meetings. Memorable Career Moment: One outstanding moment comes to mind. I was second-chairing a case with Dennis Allegretti. I had a witness ready to testify that our opposition had copied our client’s patented invention. Over lunch right before the witness was testify I worked with the witness; I was to call and examine on direct immediately after lunch. To my horror his demeanor was terrible. He was nervous, unsure of himself, and shaken. His recall and polish — so evident in all of our prior interviews and practice sessions — was gone. I returned to courtroom and spoke with my senior partner, telling him frankly that I had serious reservations about calling this witness. Mr. Allegretti grabbed my shoulders and told me forcefully advice that I have followed to this day: A good trial lawyer, he said, “has to go with his gut.” He told me that if I felt the witness would make a bad impression, it was likely that he would make a bad impression. The jury would not be fooled, he said. Mr. Allegretti added that if, in the long run, my instincts proved to be wrong, I simply would not make a good trial lawyer. Finally, he added, whatever happened in that trial and with that witness, he would “back me up,” adding that we always had to do that for one another in the “fiery crucible of the courtroom.” That moment was a defining moment in my career. I followed his advice on that occasion and on many others, and saw many other do so as well. While my gut has not proved infallible, his advice has withstood the tests of time experience.