Senior Associate IP Lit Taking Questions

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Re: Senior Associate IP Lit Taking Questions

Postby Anonymous User » Thu Oct 31, 2013 6:42 pm

Any thoughts on starting in IP lit and transitioning into TTG or licensing work over time?

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Re: Senior Associate IP Lit Taking Questions

Postby Anonymous User » Thu Oct 31, 2013 11:35 pm

[OP]

Anonymous User wrote:Any thoughts on starting in IP lit and transitioning into TTG or licensing work over time?


Think you might be outing yourself by calling it TTG. I had to google that. Guess I just outed where I don't work.

There'll always be politics involved in changing groups. Gotta know your own firm culture to know whether you can get away with it. I think there are logical advantages, though -- you should be able to analyze the importance and value of patents if you litigated them.

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Re: Senior Associate IP Lit Taking Questions

Postby Anonymous User » Thu Oct 31, 2013 11:37 pm

[OP]

Anonymous User wrote:How do IP lit groups feel about clerkships in your experience? District court? CAFC? Both? Do you think general practice and boutique firms treat them differently?


Depends on jurisdiction. Do a patent jurisdiction and you'll get a extra attention. And clerking is generally a good thing to have in your back pocket. That said, we are certainly aware that clerks come in a little behind their class because they didn't do any real patent litigation during their clerkship. Trumpet your other assets in the interval and rush to make sure you figure out patent litigation.

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Re: Senior Associate IP Lit Taking Questions

Postby Anonymous Associate » Fri Nov 01, 2013 4:18 pm

Anonymous User wrote:[OP]

Anonymous User wrote:How do IP lit groups feel about clerkships in your experience? District court? CAFC? Both? Do you think general practice and boutique firms treat them differently?


Depends on jurisdiction. Do a patent jurisdiction and you'll get a extra attention. And clerking is generally a good thing to have in your back pocket. That said, we are certainly aware that clerks come in a little behind their class because they didn't do any real patent litigation during their clerkship. Trumpet your other assets in the interval and rush to make sure you figure out patent litigation.


Is C.D. Cal. considering a patent jurisdiction in your opinion? I know they have the most number of cases, but not necessarily percentages.

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Re: Senior Associate IP Lit Taking Questions

Postby bk1 » Fri Nov 01, 2013 4:25 pm

Anonymous Associate wrote:Is C.D. Cal. considering a patent jurisdiction in your opinion? I know they have the most number of cases, but not necessarily percentages.

CDCA, like a handful other districts, is nominally part of the patent pilot program. The impact of this program varies from district to district since it requires voluntary compliance by judges in relinquishing patent cases (I've heard some districts that have it essentially have a problem getting judges to comply, which is why I say nominally). I've been told that in CDCA judges are pretty good about relinquishing cases which, if true, would likely mean that there is be a difference between clerking for a judge who takes patent cases and one that receives them (list of judges here). Though I'm not sure how this works in the signalling sense. Of course when you get to the interview stage if you did a lot of patent cases you could talk about that (or if you clerked for a judge that gave up his/her patent cases then it would be clear that you didn't do patent cases), but I'm not sure whether firms would differentiate at the application stage (i.e., will they be knowledgeable enough to know which judges are patent judges and if so will they then make interview request decisions based on that?).

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Re: Senior Associate IP Lit Taking Questions

Postby chem » Fri Nov 01, 2013 4:36 pm

If you have any control over what cases you are staffed on, should you search out the big, high stakes cases (for people like Monsanto, Apple, Google, Samsung, ect.) where you will be staffed on that case for years, or shoudl you search out smaller cases so you can get exposed to more things more quickly?

I make these assumptions because a lawyer at a V20 told me to stay away from big cases when i was young, because getting staffed on one of those means thats all you'll be doing the first year or two.

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Re: Senior Associate IP Lit Taking Questions

Postby Anonymous User » Fri Nov 01, 2013 4:53 pm

Thanks so much for doing this, it's been very informative.

I am going to be doing patent prosecution this (2L) summer at a V100 GP firm and I want to know if that will lock me in to prosecution work, or if I will be able to try and move on to litigation later in my career. What can you tell me about this kind of transferring? And, does your group ever get people transferring in from the prosecution side? Thanks

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Re: Senior Associate IP Lit Taking Questions

Postby Anonymous User » Fri Nov 01, 2013 5:16 pm

[OP]

bk1 wrote:
Anonymous Associate wrote:but I'm not sure whether firms would differentiate at the application stage (i.e., will they be knowledgeable enough to know which judges are patent judges and if so will they then make interview request decisions based on that?).


Hit or miss. Depends on who sees the resume and if he/she practices in that jurisdiction and knows the judges well enough.

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Re: Senior Associate IP Lit Taking Questions

Postby Anonymous User » Fri Nov 01, 2013 5:18 pm

[OP]

Anonymous User wrote:Thanks so much for doing this, it's been very informative.

I am going to be doing patent prosecution this (2L) summer at a V100 GP firm and I want to know if that will lock me in to prosecution work, or if I will be able to try and move on to litigation later in my career. What can you tell me about this kind of transferring? And, does your group ever get people transferring in from the prosecution side? Thanks


Just ask your firm. This is one area where firms are vastly different (hat tip to the angry V20-associate who insisted that firms were different above). You probably should've asked this before accepting your offer; but at this point, just ask folks when you get there.

Generally -- I'd say there's probably interest in making people experts in their field, so they can pitch you to clients as having xx years of patent prosecution experience. That said, there are benefits to having patent prosecutors do litigation work and vice versa; if you want to make a change, just figure out how to best trumpet how your old skills will benefit your new job. Think understanding complicated prosecution histories, having a stronger sense of patent law than your litigation colleagues, etc.

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Re: Senior Associate IP Lit Taking Questions

Postby Anonymous User » Fri Nov 01, 2013 5:20 pm

[OP]

chem wrote:If you have any control over what cases you are staffed on, should you search out the big, high stakes cases (for people like Monsanto, Apple, Google, Samsung, ect.) where you will be staffed on that case for years, or shoudl you search out smaller cases so you can get exposed to more things more quickly?

I make these assumptions because a lawyer at a V20 told me to stay away from big cases when i was young, because getting staffed on one of those means thats all you'll be doing the first year or two.


It's not a bad argument at all. Part of it comes down to your personality. Personally, I think it's important to have a mix. You'll get lost in the crowd on a big case (lots of associates, lots of layer), but will gain important experience and make mistakes without much repercussion. Smaller cases mean you get to take on more responsibility work directly with partners, but you're more exposed. Figure out where you're most comfortable.

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Re: Senior Associate IP Lit Taking Questions

Postby Anonymous User » Sun Nov 03, 2013 8:43 pm

Is there much of a market for soft IP lit, i.e. copyright and trademark?

Do you have a science/math background?

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Re: Senior Associate IP Lit Taking Questions

Postby Anonymous User » Tue Nov 05, 2013 6:28 pm

[op]

Anonymous User wrote:Is there much of a market for soft IP lit, i.e. copyright and trademark?


It's not as much as patent. Are you a student? When you apply to firms, don't take their word for it on the website that their office does soft IP work. Make sure you see actual lawyers doing that work in that office. Otherwise you'll get laughed at.

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Re: Senior Associate IP Lit Taking Questions

Postby Anonymous User » Tue Nov 05, 2013 10:35 pm

Let's say that I work at a boutique firm that primarily does trademark/copyright - how hard would it be lateral to another IP firm (possibly big law) that mainly does patents, but some trademark/copyright. I have hear that at firms like these most of the patent lawyers do trademark/copyright on the side and that there are not dedicated people to this.

Thanks!

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Re: Senior Associate IP Lit Taking Questions

Postby Anonymous User » Tue Nov 05, 2013 11:36 pm

[OP]

Anonymous User wrote:Let's say that I work at a boutique firm that primarily does trademark/copyright - how hard would it be lateral to another IP firm (possibly big law) that mainly does patents, but some trademark/copyright. I have hear that at firms like these most of the patent lawyers do trademark/copyright on the side and that there are not dedicated people to this.

Thanks!


Ah. It depends on the firm. I'm at one of those big law shops with a big patent group, and most of our patent lawyers don't do tm/c on the side except maybe some pro bono work. If you were to interview in the wrong office accidentally (see my comment above), you'd pretty much be screwed. It might be good to target the few true soft IP people -- those that have (c) cases specifically listed on their bio page for instance --, figure out what they're up to and where, and direct your resume to them personally.

But ultimately the hiring decision is a slave to how well that department is going. E.g., if the firm is mostly patent lit, hiring lateral associates can be pretty fluid -- fairly decent candidate walks in, we hire her. Our soft IP department probably doesn't have that level of flexibility -- they'll need some demand and probably have higher standards because they can't risk bringing on dead weight.

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Re: [OP] Re: Senior Associate IP Lit Taking Questions

Postby yeast master » Wed Nov 06, 2013 8:58 am

As a litigator, I'll tell you that most patent prosecutors don't know how to write a patent that will be useful in litigation (or business). It's infuriating.


How much of this do you think is a result of limited budgets for prosecution? Is it that prosecutors could write better patents if they could slow down and give more attention to each patent, or do pure prosecutors just lack the necessary understanding as to what makes a strong patent?

What are the most frustrating flaws you come across?

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Re: [OP] Re: Senior Associate IP Lit Taking Questions

Postby Anonymous User » Wed Nov 06, 2013 11:09 am

yeast master wrote:
As a litigator, I'll tell you that most patent prosecutors don't know how to write a patent that will be useful in litigation (or business). It's infuriating.


How much of this do you think is a result of limited budgets for prosecution? Is it that prosecutors could write better patents if they could slow down and give more attention to each patent, or do pure prosecutors just lack the necessary understanding as to what makes a strong patent?

What are the most frustrating flaws you come across?


Pros associate here - I find that even minimal experience with patent lit gives you incredible perspective on what makes a patent better for litigation. That's experience that most prosecutors don't ever get, and they are often (not always) worse off for it.

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Re: [OP] Re: Senior Associate IP Lit Taking Questions

Postby Anonymous User » Thu Nov 07, 2013 3:24 pm

[OP]

yeast master wrote:
As a litigator, I'll tell you that most patent prosecutors don't know how to write a patent that will be useful in litigation (or business). It's infuriating.


How much of this do you think is a result of limited budgets for prosecution? Is it that prosecutors could write better patents if they could slow down and give more attention to each patent, or do pure prosecutors just lack the necessary understanding as to what makes a strong patent?

What are the most frustrating flaws you come across?


No idea about budgets. I think it is because prosecutors have a different goal in mind: getting the patent granted, rather than focusing on how it will be used in litigation.

I could write a treatise on the flaws. I'd rather not do it here, though, since the odds are more likely that you kids will write patents that I need to defend against rather than those I'll assert. ;)

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Re: Senior Associate IP Lit Taking Questions

Postby Anonymous User » Thu Nov 07, 2013 5:52 pm

I am a patent litigator who is working on an IPR now with patent prosecutors. When I (try to) talk to them, it is like I am entering a parallel universe. And yes, they don't seem to care about litigation. When I say, for the 20 thousandth time, OMG YOU ARE NOT INCLUDING ALL REFERENCES ON THE CLAIM CHARTS, ESTOPPEL FOR OUR INVALIDITY CASE IF IPR UNSUCCESSFUL....the response is like, oh, don't worry about that, no biggie.

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Re: Senior Associate IP Lit Taking Questions

Postby Anonymous User » Fri Nov 08, 2013 4:37 am

Generally, there are lots of audiences for prosecution: the in-house attorney, inventor, engineers, examiner and other USPTO interests, litigator, licensing attorneys, jury, judge, etc. You can't satisfy them all. Having experience in those areas is also useful for prosecution. However, you also cannot experience all of those.

I work with a lot of former litigators turned prosecutors. I find that they generally have a poorly developed sense of novelty. It's frustrating to prosecute their applications. So, I suppose both sides have complaints!

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Re: [OP] Re: Senior Associate IP Lit Taking Questions

Postby mbison » Fri Nov 08, 2013 9:51 am

Anonymous User wrote:[OP]

No idea about budgets. I think it is because prosecutors have a different goal in mind: getting the patent granted, rather than focusing on how it will be used in litigation.

I could write a treatise on the flaws. I'd rather not do it here, though, since the odds are more likely that you kids will write patents that I need to defend against rather than those I'll assert. ;)


I used to do mostly litigation and now do mostly prosecution. One thing litigators don't typically have to deal with is the very strict budget caps that prosecutors get. The reality is the vast majority of patents are never litigated. I try to think about how my applications may some day be used in litigation, but really, it's low on the priority list.

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Re: Senior Associate IP Lit Taking Questions

Postby Anonymous User » Tue Dec 31, 2013 1:26 pm

Not sure if this thread is still active, but I'll take a shot. Somehow I scored an interview at an IP boutique firm even though I have no science or engineering background. The job posting "preferred" candidates with a technical background, but also noted that the associate would also work on commercial litigation as well.

Any recommendations on how I should approach the interview? I am planning on emphasizing my strengths on the commercial litigation aspect of the job, but didn't know what was the best approach for the IP side.

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Re: Senior Associate IP Lit Taking Questions

Postby Anonymous User » Sat Dec 13, 2014 12:34 pm

Bump for 2014/2015 market questions/responses

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Re: Senior Associate IP Lit Taking Questions

Postby Anonymous User » Sat Dec 13, 2014 1:18 pm

Any thoughts on the reputation of Fish & Richardson as oppose to, say, big GP firms who do IP (e.g., WilmerHale) or even other "boutiques" (Finnegan, etc.)? Are places like Fish, who do only IP, stable even in the midst of efforts to curtail patent litigation?

Any regrets choosing patent litigation over patent prosecution? Vice versa?




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