Biglaw patent prosecution

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SubwaySandwich
Posts: 27
Joined: Fri Dec 03, 2010 9:46 pm

Re: Biglaw patent prosecution

Postby SubwaySandwich » Sat Mar 16, 2013 9:19 pm

iconoclasttt wrote:
SubwaySandwich wrote:I know that combination of patent lit + prosecution or transactional is very rare. But how common do you guys think it is for a Biglaw attorney to do a combination of prosecution + transactional?


Lit+pros is rare, though I don't know if I'd say "very rare"; I remember a lot of guys at Fish telling me that they had mixed practices, and this may be more true at large boutiques.

Depends on what you mean by "transactional." Preliminarily, I wouldn't characterize counseling/opinion work as necessarily transactional; in my mind that's more along the lines of lit support especially if defensive. Depending on the client base, I would expect there to be a fair number of counseling opportunities for a Biglaw prosecutor, though opinion work has declined substantially in the wake of Seagate.

As for transactional, there's diligence in support of corporate deals (i.e., portfolio analysis as a part of overall asset analysis), and transactions involving patents themselves (e.g., licensing). It's not uncommon for prosecutors to get involved in diligence for deal support, but this is probably more common at firms that do both corporate and patent and so are driving the deal. From what I've seen, licensing tends to stand apart a bit from pros or lit. A lot of large institutional clients that do a substantial amount of licensing out or in have in-house counsel driving negotiations and use outside corporate counsel to structure the deal. There is sometimes a supporting diligence opportunity here for prosecutors.

In short, for at least some types of "transactional," not terribly uncommon to see it in combination with straight pros--but it really depends on the firm and the clients. Generally speaking, whenever a client wants advice as to the intrinsic strengths/weaknesses of a particular patent, I think an experienced prosecutor is typically in a better position to do that analysis than a litigator, because prosecutors tend to be closer to the technology and and the prosecution history. This is, of course, not an absolute statement.

FWIW, though I'm not in biglaw, I've had occasional opportunities to do all of the above, though I've seen a lot of the deal support/diligence work go in house over the last three years owing to cost pressures (fallout from the economy).


Thank you for the detailed response. It is quite helpful. You talked about having opportunities to try your hand at litigation, transactional, and prosecution. Which of the areas would you say is most in demand for moving in-house? How about for opportunities outside of law such as in the IP asset management field?

iconoclasttt
Posts: 31
Joined: Mon Apr 30, 2012 7:51 pm

Re: Biglaw patent prosecution

Postby iconoclasttt » Sun Mar 17, 2013 11:47 am

SubwaySandwich wrote:
Thank you for the detailed response. It is quite helpful. You talked about having opportunities to try your hand at litigation, transactional, and prosecution. Which of the areas would you say is most in demand for moving in-house? How about for opportunities outside of law such as in the IP asset management field?


Minor clarification: by "all of the above," I meant counseling/lit support, deal support, and licensing. Although some folks at my firm do litigation, I've not gotten involved in it.

The majority of patent-related in-house openings I see are looking for someone to manage portfolio development and prosecution. Some companies expect inside counsel to handle a fair amount of prosecution themselves, while others expect them to manage outside counsel. Just about all of the inside counsel I deal with for prosecution work come from prosecution backgrounds at large firms or other companies.

The larger the corporate IP department, the more likely that there will be separate in-house positions dedicated to litigation and licensing, and you'll see recruiting directed to folks with those backgrounds. In smaller departments, companies tend to look for generalists--they say they'd like somebody with well-rounded expertise, though realistically, if litigation or a complex deal comes along, it's mostly going to be handled by an outside firm suited to that matter.

Not sure exactly what sorts of places you have in mind when you say "IP asset management." There are brokers like Ocean Tomo who try to facilitate trading in IP assets, and aggregators/NPEs/"trolls" who acquire and then attempt to monetize assets. I'm not familiar enough with the former to understand what sort of value they try to add internally (e.g., by performing their own diligence or structuring transactions). As to the latter, there's often an ongoing prosecution role relating to acquired assets, and there's certainly a need for licensing/transactional expertise.

Overall, I'd say that biglaw pros tends to open a larger number of in-house opportunities than biglaw lit, because even companies that are too small to have ICs dedicated to litigation will have some portfolio development/management going on. That said, such companies will view lit experience as a plus, but most firms aren't set up to deliver the kinds of well-rounded generalists that corporate HR departments say they want.

Anonymous User
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Joined: Tue Aug 11, 2009 9:32 am

Re: Biglaw patent prosecution

Postby Anonymous User » Tue Mar 19, 2013 1:26 pm

Full time T25 student, part time clerk (during school) at one of the big boutiques you mentioned (Finnegan, Fish, Knobbe).

First thing I did was an office action. Actually, the first several assignments were office actions. Then, I started drafting parts of patents. Then, I drafted entire patents. Along the way, claim charts and FTO projects were also assigned to me. I have written over a dozen complete applications, filed an won a pre-appeal brief, and responded to many office actions.

sfhaze
Posts: 107
Joined: Sat Mar 02, 2013 5:04 pm

Re: Biglaw patent prosecution

Postby sfhaze » Wed Mar 20, 2013 2:25 am

Anonymous User wrote:Full time T25 student, part time clerk (during school) at one of the big boutiques you mentioned (Finnegan, Fish, Knobbe).

First thing I did was an office action. Actually, the first several assignments were office actions. Then, I started drafting parts of patents. Then, I drafted entire patents. Along the way, claim charts and FTO projects were also assigned to me. I have written over a dozen complete applications, filed an won a pre-appeal brief, and responded to many office actions.

From what you've seen or heard, is your experience typical across technical fields and firms?




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