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?