clerkship for IP transactional work

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clerkship for IP transactional work

Postby Anonymous User » Tue Aug 16, 2011 1:12 pm

I want to get into IP transactions, not really litigation. Does anyone have an idea whether a district court clerkship will be a waste of time? What about Fed Cir? I'm a competitive candidate for both, but wondering about what the upside is.

Basically, I'm thinking of going in-house after a few hours at a big firm. So I'm going to do a little bit of litigation, a whole lot of transactional work. And when I'm in-house, zero litigation.

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Re: clerkship for IP transactional work

Postby Anonymous User » Tue Aug 16, 2011 1:13 pm

I was at a callback interview recently, talking to a partner who did Tax and Transactional work. He clerked in Federal Tax Court, and he said that the consensus among the profession was that Clerkships are a waste of time for anyone but litigators.

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Re: clerkship for IP transactional work

Postby Anonymous User » Tue Aug 16, 2011 1:14 pm

Anonymous User wrote:I was at a callback interview recently, talking to a partner who did Tax and Transactional work. He clerked in Federal Tax Court, and he said that the consensus among the profession was that Clerkships are a waste of time for anyone but litigators.

I never knew there was a Fed Tax Court. That's cool. I wonder if the same holds for Fed. Cir. @ patent transactional work. I haven't talked to too many patent transactional partners, in fact - I've never talked to "a" patent transactional partner.

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Re: clerkship for IP transactional work

Postby Anonymous User » Tue Aug 16, 2011 2:58 pm

This practice is generally called "Tech Transactions" or "IT Licensing" or "Life Sciences Licensing". There are only a handful of firms that really do this, most of which are in California. Chambers and Partners calls it "IT and Outsourcing" ( http://www.chambersandpartners.com/USA/Editorial/42804 ).

It's one area where they look for people with backgrounds in engineering and life sciences.

sbalive
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Re: clerkship for IP transactional work

Postby sbalive » Wed Aug 17, 2011 2:02 am

I haven't looked at Chambers too closely recently, but I believe that IT licensing is only a subset of this work. Really, the larger category is "IP transactional," though it is also called "tech transitions" like the above poster says. It's also not just patents -- copyright and trademark are included here. There is also some overlap with the corp group, since the IP trans people will do diligence on deals + handle licensing issues, and litigation, where IP licensing folks & lit people work together to evaluate IP portfolios as potential litigation targets (both defense & offense).

I'm surprised that OP, who sounds like a rising 3L? hasn't met anyone who does this... There are firms who practice this and generally hire through OCI. A lot of this is done by in-house -- and in fact, this is often what lit people end up getting into when they go in-house, so actually clerkship -> lit job -> in-house or trans group at a firm is a totally conceivable career pathway, especially given that transactional is among the most highly economy-sensitive fields.

The firms that are most active here are, on the West Coast, the big California corp firms -- WIlson Sonsini, Fenwick, Cooley, and Gunderson (a boutique-ish firm that does only corp and trans). On the East Coast, the places to go are what's left of the boutiques, or Ropes NY (which is basically the result of the take-over of a boutique). Kirkland has some people who do this too at various offices. There are also smaller outifits in NY who do a lot of media work who worth checking out.

You do NOT need a tech degree for this, though the boutiques generally only hire people with tech degrees (but that's not true of the Cali firms I listed above)... But, what you do need is a demonstrably strong knowledge and clear enthusiasm for tech. And, from everything I heard, a clerkship doesn't help you -- but given that there are a lot more IP lit jobs than IP trans jobs, and you can lateral from lit to trans, probably worth doing, especially if you're not sure what you're doing after your 2L summer (which sounds like OP's situation).

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Re: clerkship for IP transactional work

Postby FSK » Wed May 21, 2014 3:03 pm

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Last edited by FSK on Mon Jul 13, 2015 10:08 pm, edited 1 time in total.

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Re: clerkship for IP transactional work

Postby bk1 » Wed May 21, 2014 4:15 pm

sbalive wrote:I haven't looked at Chambers too closely recently, but I believe that IT licensing is only a subset of this work. Really, the larger category is "IP transactional," though it is also called "tech transitions" like the above poster says. It's also not just patents -- copyright and trademark are included here. There is also some overlap with the corp group, since the IP trans people will do diligence on deals + handle licensing issues, and litigation, where IP licensing folks & lit people work together to evaluate IP portfolios as potential litigation targets (both defense & offense).

I'm surprised that OP, who sounds like a rising 3L? hasn't met anyone who does this... There are firms who practice this and generally hire through OCI. A lot of this is done by in-house -- and in fact, this is often what lit people end up getting into when they go in-house, so actually clerkship -> lit job -> in-house or trans group at a firm is a totally conceivable career pathway, especially given that transactional is among the most highly economy-sensitive fields.

The firms that are most active here are, on the West Coast, the big California corp firms -- WIlson Sonsini, Fenwick, Cooley, and Gunderson (a boutique-ish firm that does only corp and trans). On the East Coast, the places to go are what's left of the boutiques, or Ropes NY (which is basically the result of the take-over of a boutique). Kirkland has some people who do this too at various offices. There are also smaller outifits in NY who do a lot of media work who worth checking out.

You do NOT need a tech degree for this, though the boutiques generally only hire people with tech degrees (but that's not true of the Cali firms I listed above)... But, what you do need is a demonstrably strong knowledge and clear enthusiasm for tech. And, from everything I heard, a clerkship doesn't help you -- but given that there are a lot more IP lit jobs than IP trans jobs, and you can lateral from lit to trans, probably worth doing, especially if you're not sure what you're doing after your 2L summer (which sounds like OP's situation).

Agree with this. I will add that, to my knowledge, there aren't a ton of places that do it and the places that do don't necessarily intend to have a ton of associates end up in that practice area so it can be hard to end up there.




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