Exit options from Biglaw IP Litigation or Prosecution? Forum

[middlemarch]

Reading other threads, TLSers seem to think that the exit options for Biglaw litigation are worse than for Biglaw transactional folks.

1. What about the exit options for IP litigation or IP prosecution in Biglaw (e.g. from a prominent large firm like Cravath, Kirkland, MoFo, Weil, etc.)?
2. Are there comparable government positions akin to AUSA for general/white-collar litigators?
3. Do science background, law school grades and school prestige, and/or clerkships matter for certain exit options?
4. Would some experience for the IP litigator or prosecutor assisting on IP licensing/transactions improve his/her exit options?

[84651846190]

Exit options from IP litigation = more IP litigation at firms.

Exit options from prosecution are much more interesting (in house, firm, solo, etc.).

There aren't as many patent-related government positions. I think there are a few in the USPTO and ITC, but definitely not as many as the number of AUSA positions.

Law school/grades matter most for IP litigation. For prosecution, it's a mix of law school, grades, technical background/work experience, whether you have an advanced degree, your undergraduate grades, and whether you've passed the patent bar. For both IP litigation and prosecution, these things matter a lot more for getting an entry level position than for lateral positions. Your past experience in litigation/prosecution matters a lot more when you're looking to lateral.

[middlemarch]

Thanks for your input. If I may ask a follow-up: would the government options lead to a "revolving door" back to a good firm? E.g. if a general lit. person were to go off and work in a US Atty's office, DOJ, SEC, WH Counsel for a few years, he/she may often be recruited to come back to a prestigious firm, and compensated well. Is that also common for people who go off to do USPTO or ITC for some years?

[84651846190]

Thanks for your input. If I may ask a follow-up: would the government options lead to a "revolving door" back to a good firm? E.g. if a general lit. person were to go off and work in a US Atty's office, DOJ, SEC, WH Counsel for a few years, he/she may often be recruited to come back to a prestigious firm, and compensated well. Is that also common for people who go off to do USPTO or ITC for some years?

Maybe, but I haven't seen this. That may be because there are so few IP-related positions for attorneys to begin with.

[bk1]

I think there are a few in the USPTO and ITC, but definitely not as many as the number of AUSA positions.

Curious: I had thought that USAOs that take biglaw castoffs preferred them based on the amount of substantive experience they had and that practice area wasn't as big a deal. Is that not right?

[84651846190]

I think there are a few in the USPTO and ITC, but definitely not as many as the number of AUSA positions.

Curious: I had thought that USAOs that take biglaw castoffs preferred them based on the amount of substantive experience they had and that practice area wasn't as big a deal. Is that not right?

I don't know. All I know is that there are a lot of very smart white collar/securities/non-IP regulatory associates gunning for AUSA. I'd be surprised to see an IP litigation shithead get picked over a white collar person who has likely been tailoring his/her resume for an AUSA positions right from the get go.

[Anonymous User]

I know of one ex-IP litigator who became criminal AUSA, but he did a stint at the DA/County Attorney for trial experience before joining USAO. It's rare but it can happen for people with the right experience.

[bk1]

I don't know. All I know is that there are a lot of very smart white collar/securities/non-IP regulatory associates gunning for AUSA. I'd be surprised to see an IP litigation shithead get picked over a white collar person who has likely been tailoring his/her resume for an AUSA positions right from the get go.

Makes sense.

[Anonymous User]

I don't know. All I know is that there are a lot of very smart white collar/securities/non-IP regulatory associates gunning for AUSA. I'd be surprised to see an IP litigation shithead get picked over a white collar person who has likely been tailoring his/her resume for an AUSA positions right from the get go.

Makes sense.

Is it accurate to say that an IP litigator could 5 years down the road do just general litigation. Thinking of a situation where you do NYC Big law IP then transfer to your home market in middle America that gets basically no IP work? The mechanics of the job are still largely the same right? A firm in that situation won't think that you can't just do regular lit will they?

Thanks.

[wert3813]

Whoop, accidentally anon. Sorry.

[SpAcEmAn SpLiFF]

dumb question: what is AUSA?

[bk1]

dumb question: what is AUSA?

Assistant United States Attorney

[84651846190]

I don't know. All I know is that there are a lot of very smart white collar/securities/non-IP regulatory associates gunning for AUSA. I'd be surprised to see an IP litigation shithead get picked over a white collar person who has likely been tailoring his/her resume for an AUSA positions right from the get go.

Makes sense.

Is it accurate to say that an IP litigator could 5 years down the road do just general litigation. Thinking of a situation where you do NYC Big law IP then transfer to your home market in middle America that gets basically no IP work? The mechanics of the job are still largely the same right? A firm in that situation won't think that you can't just do regular lit will they?

Thanks.

The mechanics are very different depending on the type of litigation you'd be moving to. The transition would not be easy. I suppose someone has probably done it, though. You would have to find someone in the locale where you'd be moving to to take you under his/her wing, introduce you the plaintiffs'/defendants' bar, introduce you to experts, give you the rundown on judges, teach you about the local filing nuances, etc.

[gk101]

Exit options from IP litigation = more IP litigation at firms.

Exit options from prosecution are much more interesting (in house, firm, solo, etc.).

There aren't as many patent-related government positions. I think there are a few in the USPTO and ITC, but definitely not as many as the number of AUSA positions.

Law school/grades matter most for IP litigation. For prosecution, it's a mix of law school, grades, technical background/work experience, whether you have an advanced degree, your undergraduate grades, and whether you've passed the patent bar. For both IP litigation and prosecution, these things matter a lot more for getting an entry level position than for lateral positions. Your past experience in litigation/prosecution matters a lot more when you're looking to lateral.

This is a solid answer. Everyone I know who has left my practice group (mix of IP pros and lit) has done one of the above with in house being the most popular for the midlevel people. Juniors who left moved to other firms generally

[Anonymous User]

Exit options from IP litigation = more IP litigation at firms.

Exit options from prosecution are much more interesting (in house, firm, solo, etc.).

There aren't as many patent-related government positions. I think there are a few in the USPTO and ITC, but definitely not as many as the number of AUSA positions.

Law school/grades matter most for IP litigation. For prosecution, it's a mix of law school, grades, technical background/work experience, whether you have an advanced degree, your undergraduate grades, and whether you've passed the patent bar. For both IP litigation and prosecution, these things matter a lot more for getting an entry level position than for lateral positions. Your past experience in litigation/prosecution matters a lot more when you're looking to lateral.

This is a solid answer. Everyone I know who has left my practice group (mix of IP pros and lit) has done one of the above with in house being the most popular for the midlevel people. Juniors who left moved to other firms generally

Sorry for the necro-bump but it seems recent enough and germane enough to warrant one...

Would this hold true for boutique exit options wrt patent pros? Just depends on who your clients are? When someone goes in-house, they're still doing patent pros? Or do they work to expand their practice area to include more general OGC duties?

[Anonymous User]

I have had a different experience. The vast majority of IP lit associates who leave my firm go in-house. I can only think of a couple folks that went to other firms.

[84651846190]

I have had a different experience. The vast majority of IP lit associates who leave my firm go in-house. I can only think of a couple folks that went to other firms.

I'm guessing they probably had tech backgrounds, though.

[Abbie Doobie]

Would this hold true for boutique exit options wrt patent pros? Just depends on who your clients are? When someone goes in-house, they're still doing patent pros? Or do they work to expand their practice area to include more general OGC duties?

you are generally not writing applications and responding to office actions as an in-house attorney. patent counsels typically manage oc patent pros counsel, conduct prc meetings, follow up with inventors regarding idfs. there might be some opportunities to do some licensing, trade secret stuff, pre-litigation planning, etc, but i used to be a member of the prc at my old company and i didn't see any associate patent counsels doing these things. i'm sure there are patent counsels at other companies doing these things though.

[r6_philly]

I don't know. All I know is that there are a lot of very smart white collar/securities/non-IP regulatory associates gunning for AUSA. I'd be surprised to see an IP litigation shithead get picked over a white collar person who has likely been tailoring his/her resume for an AUSA positions right from the get go.

Makes sense.

Is it accurate to say that an IP litigator could 5 years down the road do just general litigation. Thinking of a situation where you do NYC Big law IP then transfer to your home market in middle America that gets basically no IP work? The mechanics of the job are still largely the same right? A firm in that situation won't think that you can't just do regular lit will they?

Thanks.

The mechanics are very different depending on the type of litigation you'd be moving to. The transition would not be easy. I suppose someone has probably done it, though. You would have to find someone in the locale where you'd be moving to to take you under his/her wing, introduce you the plaintiffs'/defendants' bar, introduce you to experts, give you the rundown on judges, teach you about the local filing nuances, etc.

I do both general lit and IP lit. I don't get why you think it's difficult. There are specialized parts to IP lot, but if you are a junior/mid level you will be dealing with discovery issues. Yes contentions are unique, but fact discovery and depos are about the same as any. So if you have 4-5 years of IP lit you can convert to general lit no issues. The other way is rougher.

[r6_philly]

I have had a different experience. The vast majority of IP lit associates who leave my firm go in-house. I can only think of a couple folks that went to other firms.

Ditto. If you had good lit experience, you know good claims from bad ones. I can't see why I wouldn't be able to manage prosecution counsel. You can also manage litigation. In house is a decent fit. Small firm and solo is possible too but lit associates probably haven't had enough client exposure to build a book.

[r6_philly]

I have had a different experience. The vast majority of IP lit associates who leave my firm go in-house. I can only think of a couple folks that went to other firms.

I'm guessing they probably had tech backgrounds, though.

It's difficult to get IP lit without tech background nowadays even though not strictly required. There are a lot of law students with tech backgrounds and it's easier to pitch to clients.

[Abbie Doobie]

I have had a different experience. The vast majority of IP lit associates who leave my firm go in-house. I can only think of a couple folks that went to other firms.

Ditto. If you had good lit experience, you know good claims from bad ones. I can't see why I wouldn't be able to manage prosecution counsel. You can also manage litigation. In house is a decent fit. Small firm and solo is possible too but lit associates probably haven't had enough client exposure to build a book.

i don't think that the issue is whether an IP litigator would be able to manage prosecution counsel. those that hire for patent counsel positions typically want someone with 5-10 years prosecution experience, so the issue is how does an ip litigator get an interview and job offer without the requisite experience. which is why not very many litigators become patent counsels.

[totesTheGoat]

those that hire for patent counsel positions typically want someone with 5-10 years prosecution experience

I've heard of many switching to in-house at 3 years. There are also a handful of companies trying out direct-from-law-school in-house patent counsel, but those are unicorn jobs at this point.

so the issue is how does an ip litigator get an interview and job offer without the requisite experience. which is why not very many litigators become patent counsels.

Most IP lit associates that I know who have a reg number do both. They carry a prosecution docket for when lit is slow.

[Desert Fox]

[totesTheGoat]

Perhaps my (admittedly anecdotal) experience is not representative, but I know of one big law firm that makes their associates do both. I know of another where doing both is an option, but not required. My observation is that some firms are trying to blend their lit and pros teams in order to bolster their IPR practice.