Top Patent Prosecution Firms

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Top Patent Prosecution Firms

Postby Anonymous User » Fri Aug 09, 2013 6:19 pm

What do people think the top patent prosecution firms are? To start the conversation in no particular order, firms like Fish, Finnegan, Sughrue, Blakely, Knobbe, Alston, Oblon, Baker Botts, MoFo, Sterne, Leydig, Frommer, and Fitzpatrick.

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Re: Top Patent Prosecution Firms

Postby Anonymous User » Fri Aug 09, 2013 6:48 pm

As far as GPs go, AB and BB are both top picks for prosecution imho. Sughrue and Blakely are each others opposites on east and west coast, but both are very strong. Blakely is more domestic with intel in their back pocket and Sughrue works mainly on international prosecution.

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Re: Top Patent Prosecution Firms

Postby Anonymous User » Fri Aug 09, 2013 8:28 pm

I have heard Sughrue is a sweatshop


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Re: Top Patent Prosecution Firms

Postby Anonymous User » Sat Aug 10, 2013 2:10 pm

As a patent prosecutor, I'm not sure that anyone considers a firm to be among the "top" prosecution firms. The work is solitary rather than a group effort. When you apply to other firms or in-house, you are almost always asked for writing samples to have your skills evaluated. You can move from a 2-lawyer office to a 2000-lawyer office or in-house to a 20,000-employee company. It's not like other fields of law. Prestige matters less.

It's strange, but most patent prosecutors I know are completely oblivious to rankings or even the names of law firms. When I was on the East Coast, nobody heard of Knobbe, Townsend, Blakely. When I was on the West Coast, nobody heard of Oblon. People from both never heard of Minnesota-headquarted Schwegman. Prosecutors just live in a different universe.

Sughrue: no interconnect connection at your desk, etc. like Oliff. I think they do a lot of in-bound work from South Korea.
Knobbe: lots of prosecutors have left because of work distribution problems
Fish/Finnegan/Alston/Baker Botts/Mofo: All the same to me. High billing rates, so you have less time to spend on projects.
Oblon: the largest prosecution firm, but mainly in-bound work (work that comes in from Japan, Europe), long-term relationships with a lot of Japanese companies like Sony
Blakely: usually the largest domestic prosecution firm, long-term relationship with Intel

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Re: Top Patent Prosecution Firms

Postby Anonymous User » Sat Aug 10, 2013 2:47 pm

Sughrue: no interconnect connection at your desk, etc.

What does this mean?

Also, although the work is solitary for the first few years, I would hope that as you mature into portfolio management, client counseling etc (at least that's how I envision my career), it becomes less.solitary?

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Re: Top Patent Prosecution Firms

Postby Anonymous User » Sat Aug 10, 2013 3:26 pm

Anonymous User wrote:
Sughrue: no interconnect connection at your desk, etc.

What does this mean?

You have no interconnect connection at your work computer. So, you can't read TLS during work! Firms like Sughrue, Oliff, and some other DC/NoVa-area firms are quite notorious for poor working environments. I believe Oliff even has scheduled lunch breaks when everyone is required to eat together in the firm cafeteria.

Also, although the work is solitary for the first few years, I would hope that as you mature into portfolio management, client counseling etc (at least that's how I envision my career), it becomes less.solitary?

Lots of people will only do application drafting and prosecution for their entire career. That's why so many prosecutors move in-house. It's easier to move in-house than other fields of law and you can expand your skills.

Portfolio management is usually (but not always) taken by partners because it's more interesting. Also, most established companies have in-house patent counsel that deal with their own portfolio management. Usually small companies will go to a firm for that.

Client counseling is also mainly for smaller clients and it can eat up a lot of time. Established companies are already sophisticated on that, so they're just looking for firms that offer bandwidth (e.g., can your firm do 50 patent applications/year?). I would say "client counseling" for established companies is mainly small stuff.

IMO, the non-prosecution stuff like portfolio management/counseling, invalidity analysis, etc. is more interesting, but depending on your firm, they go to associates less often.

A typical week for a prosecutor might be: talk to an inventor for an hour or two (sometimes with in-house patent counsel present), then go draft an application. Email it to the inventor, and either talk by phone or get an email back with revisions. Then, for clients with more engaged patent counsel, send the application in-house for review, and then maybe talk to them.

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Re: Top Patent Prosecution Firms

Postby Anonymous User » Sat Aug 10, 2013 5:03 pm

Thanks. Then I need to figure out how move into the broader stuff at some point because while I have recently decided to pursue prosecution instead of litigation, I have no intentions to spend the rest o my life drafting apps and responding. to office actions. Eventually, I want to advise companies companies on their patent strategies. Before that, opinion work, etc would be great. I guess I better start talking to some.partners (informational interviews...) to figure out how to make that happen....

(Also you mean internet connection. I see. I'll never work at a place like that that treats grown folks like children if I can help it. Awful).

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Re: Top Patent Prosecution Firms

Postby Anonymous User » Sat Aug 10, 2013 5:54 pm

Oops, yes, internet. I've been working on semiconductor stuff and been reading and writing "interconnect" too much!

I would be wary of talking to partners. They exaggerate things. Talk to associates instead.

StannyB
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Re: Top Patent Prosecution Firms

Postby StannyB » Sat Aug 10, 2013 6:56 pm

Definitely agree with a lot of what has been said above. Usually in a firm environment, the associates are given the grinding 'monotonous' work of prosecution. I don't know about other firms, but the people that have made partner at the firm I work at can't wait to lessen their prosecution docket ('perk' of making partner) and move onto more 'interesting, varied' work described by other posters.

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Re: Top Patent Prosecution Firms

Postby mrsmartypants » Sun Aug 11, 2013 12:47 pm

10+ year boutique prosecutor here.

I second the notion that biglaw prestige means much less in prosecution than in lit/trans or in unrelated fields of law. Quality of prosecution comes down to the strength of the individual prosecutor coupled with firm best practices.

In a fair number of biglaw firms, prosecution is treated as a "loss leader" practice offered as a service to clients who provide other, more lucrative firm business (e.g., lit). It's hard to make the financials of prosecution work at biglaw rates, because with rare exceptions, high-volume clients (who file 30-50 applications a year or more) aren't going to want to pay more than 10-15k per application (often fixed fee or capped). At 400/hour this leaves 25-35 hours to do an app from start to finish, which is feasible for a relatively simple invention and a talented prosecutor, but quickly becomes challenging as either of those assumptions breaks down.

For firms that are able to command higher fees per application, it may work out better, but application prep has become a highly fungible commodity (at least as viewed by clients) over the last decade. When the market was melting down in 2008-09, I saw more than a few clients transfer large portfolios from bigger firms to smaller ones with more compelling value propositions.

A fair number of practitioners will stick with application prep and pros for their entire careers. Beyond this, there are more strategically valuable and visible practices like counseling/opinion work and post-issue practice. Opinion work fell off dramatically after Seagate held that an opinion of counsel wasn't essential to establish a good faith defense to willful infringement, although some risk averse clients with large amounts at stake will still spend quite a bit on opinions and related counseling.

Post-issue practice stands to become more interesting over the next few years now that the new IPR, PGR, and CBM proceedings are here. I see lit-heavy firms making early inroads in this area because these new proceedings are mini trials, but I also see pros-heavy firms co-counseling with litigators or going it alone.

I concur that for the most part, the more interesting stuff that falls outside the realm of routine prosecution is only rarely going to go to juniors, at least in my experience.

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Re: Top Patent Prosecution Firms

Postby Anonymous User » Thu Aug 15, 2013 11:50 am

Finnegan is normally at the top of the list, but what about after the current events with the attorneys leaving from trademark and litigation sections? Will this affect prosecution at all? Is firm slowly dying?

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Re: Top Patent Prosecution Firms

Postby Anonymous User » Wed Sep 11, 2013 7:43 pm

bump

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Re: Top Patent Prosecution Firms

Postby Anonymous User » Wed Oct 23, 2013 4:19 pm

Anonymous User wrote:Finnegan is normally at the top of the list, but what about after the current events with the attorneys leaving from trademark and litigation sections? Will this affect prosecution at all? Is firm slowly dying?


Probably still at the top of the list. First, in case people don't know reading this thread, the Attorneys who left were a couple high profile people in the Trademark group, and a couple of high profile attorneys who did ITC work (note that Finnegan doesn't have an ITC or a litigation section excatly, the firm is split up by technical areas). It was by no means the entire group, the news was just shocking because partners hardly ever leave Finnegan. At any other firm it probably would not be news.

Second, I don't really see how either would affect prosecution. It is not like Trademark or ITC work would be carrying the rest of the firm financially. Even if the areas were hard hit by the people leaving (and I don't think they were), prosecution should be pretty insulated.

Anyway, I have heard from first hand experience that everyone seems to be really busy over there right now, so no I don't think they are dying.

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Re: Top Patent Prosecution Firms

Postby Anonymous User » Wed Oct 23, 2013 4:47 pm

Anonymous User wrote:
Anyway, I have heard from first hand experience that everyone seems to be really busy over there right now, so no I don't think they are dying.


If you view summer-class offers as an indicator of firm health, it may be helpful to know that they offered their entire summer class, at least in the DC office. I heard this first hand from a friend who summered there.

Anonymous User
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Re: Top Patent Prosecution Firms

Postby Anonymous User » Wed Oct 23, 2013 4:52 pm

Anonymous User wrote:
Anonymous User wrote:
Anyway, I have heard from first hand experience that everyone seems to be really busy over there right now, so no I don't think they are dying.


If you view summer-class offers as an indicator of firm health, it may be helpful to know that they offered their entire summer class, at least in the DC office. I heard this first hand from a friend who summered there.


Does anyone know how fish generally did in comparison?




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