Patent Pros Looking to Lateral Forum

[Anonymous User]

When is too early to lateral from a patent pros position? I have always been told to wait 3 years before lateraling, but I am curious what it looks like if only 2 years. And if it is only 2 years, how much before the two years should I start looking? For example, should I start looking 2 months out of 2 years? Would the answer to the previous question be based on bonus time if going from one big law firm to another big law firm?

[h2go]

Why are you trying to lateral? Do you not like the firm or are looking to switch practice areas or need to change geographic location?

[Bluem_11]

When trying to lateral in pros, your portfolio is going to be important. Have you written several patents and seen them through to issue? How many apps have you written? Those are key questions you'll be asked. As a lateral, firms want you to be able to start there day 1 without much assistance. If you feel you can do that, you'll be in their wheelhouse.

[Anonymous User]

Your experience matters more than years. You can be in pros for two years and have only written three apps, or you could be in pros 2 years and have written 30 distinct apps. Same goes for other skills. It depends on your expertise and your firm. Your skills also affect how fast you get a job. So does your area of expertise (I.e., may take longer for a physics major to lateral than EE/biochem).

I don't know what you mean by bonus time.

In general I wouldn't recommend a lateral to biglaw unless you have other patent skills like lit/transactions. Pros is becoming increasingly untenable at GP firms. Some GP firm's still have it/are even still hiring for it, but I think it's likely to just become a more and more miserable experience for all involved.

[Anonymous User]

OP here.

I am looking to lateral for three main reasons: 1. I would like a practice that includes both prosecution and due diligence, which is not really a thing at my firm; 2. I would like a firm with a bigger name for in-house lateral positions later on; and 3. the firm is more geographically desirable, but still fairly close to where current firm is.

Firm that I am at is fine. There are good people and bad people, just like at any firm.

Seeing as I am a second year, I obviously have not seen a patent that I wrote through to allowance... but I wrote approximately 30 distinct applications in my first year of practice and saw many other applications to allowance (not that allowances really matter at my level because of the amount of supervision given).

Ha 2 years with only 30 distinct apps? That sounds like small firm prosecution... But regardless, I am not really worried about my ability to get another job, I am wondering how it will look. I can obviously wait 2 or 3 years until I change firms. I am just curious what it looks like for my next move. As I am pretty sure that I am not interested in making partner, I will likely have to make a move at least one additional time in my career. I am really looking for an answer to when is a good time to move based on someone looking at my resume after the fact, not when would I be ABLE to move based on my current credentials.

By bonus time, I mean the time that a bonus is received. For example, I could wait until I received my bonus before I move.Or I could look at moving before I get my bonus, and hope that the new firm will give me a bonus to make up for lateraling before I received my bonus (and before people say that this does not happen, it is not uncommon in my practice area).

You say that you would not recommend a lateral to biglaw unless I have other patent skills. I would like to reiterate that I am already at a biglaw firm. I am trying to lateral from one biglaw firm to another biglaw firm so that I can gain these other patent skills that you describe.

[Anonymous User]

You say that you would not recommend a lateral to biglaw unless I have other patent skills. I would like to reiterate that I am already at a biglaw firm. I am trying to lateral from one biglaw firm to another biglaw firm so that I can gain these other patent skills that you describe.

My point still stands. You are better off at a boutique unless you already have those skills.

[jhett]

I am looking to lateral for three main reasons: 1. I would like a practice that includes both prosecution and due diligence, which is not really a thing at my firm; 2. I would like a firm with a bigger name for in-house lateral positions later on; and 3. the firm is more geographically desirable, but still fairly close to where current firm is.

On point 1, I think you mean transactions in general (e.g., drafting and negotiating licenses or IP components of deals) rather than due diligence. Diligence is one of the crappiest aspects of transactional work. When you interview, don't say you look forward to diligence work, but rather the higher level stuff.

On point 2, your work experience and technical background matter more than the name of the firm. Plenty of in-house patent folks come from smaller firms and boutiques, not just from biglaw. While you're still at your current firm, try to get in varied types of work (appeals, PTAB proceedings, opinions, FTOs, etc.) and in different tech areas in order to make yourself more attractive to other firms.

Ha 2 years with only 30 distinct apps? That sounds like small firm prosecution... But regardless, I am not really worried about my ability to get another job, I am wondering how it will look. I can obviously wait 2 or 3 years until I change firms. I am just curious what it looks like for my next move. As I am pretty sure that I am not interested in making partner, I will likely have to make a move at least one additional time in my career. I am really looking for an answer to when is a good time to move based on someone looking at my resume after the fact, not when would I be ABLE to move based on my current credentials.

It's fine to lateral after two years, and probably better if you want to branch out into transactions or lit. Stay too long in prosecution and firms may pigeonhole you as a pros person, or may ask you to take a big hit to your seniority because you don't have experience in those areas. The biggest factor when lateraling are the current firm needs (in the technology area and/or level of experience), so you should start looking now. You can't just start applying to every lateral opening you see - you have to make sure your tech area and experience level match up with what they are asking for.

By bonus time, I mean the time that a bonus is received. For example, I could wait until I received my bonus before I move.Or I could look at moving before I get my bonus, and hope that the new firm will give me a bonus to make up for lateraling before I received my bonus (and before people say that this does not happen, it is not uncommon in my practice area).

Well, that depends on when the opportunities arise. If there is a great opportunity available in April or May, take it. If the opportunity comes along in November or December, then drag the process out a bit so you can get your bonus before leaving.

[Anonymous User]

OP here.

Thank you for all the comments. They are helpful. I have a few follow-on questions below.

On point 1, I think you mean transactions in general (e.g., drafting and negotiating licenses or IP components of deals) rather than due diligence. Diligence is one of the crappiest aspects of transactional work. When you interview, don't say you look forward to diligence work, but rather the higher level stuff.

Could you please explain a little bit more about what you mean when you say higher level stuff. The area that I am interested in is the deal aspect, but I thought that the patent side of that is just the diligence (e.g., looking at patents involved in the deal). I would be interested to hear what the higher level stuff for transactions in general are.

It's fine to lateral after two years, and probably better if you want to branch out into transactions or lit. Stay too long in prosecution and firms may pigeonhole you as a pros person, or may ask you to take a big hit to your seniority because you don't have experience in those areas.

While I have little to no interest in litigation, I am interested in transactions. Am I correct to understand your comment above in that the sooner the better? While I am a second year now, I do not have two years of experience. I figured that I should at least wait until I hit that two-year mark for experience before I start looking. Do you have any comments on this? Should I just start looking now?

Again, I would like to thank you for all of your insights, and I apologize for my cluelessness.

[Anonymous User]

Due dilligence is as far as a typical pros attorney gets into transactions, yes; but there are much more complex transactional tasks you can do as a patent attorney, generally. Before you lateral you're probably going to want to do some research to see what the IP transaction attorneys in your firm are doing, and seeing if that's what you want to do.

As for when to lateral, "two years of experience" is not a meaningful metric, as your experience can vary widely in those two years. As others have mentioned, it is also important to get skills in a number of different patent disciplines as soon as possible, from a marketability standpoint. You'll get pigeon-holed into pros if you don't get that experience early (when you're billing less), and it will limit your ability to do other aspects of patent law (which arguably deal with more "lawyerly" tasks). So don't wait for an arbitrary year to start looking. Also make sure that the firm you transfer to does actually provide the opportunity to do all the different aspects of patent law (even lit, because even if you don't want to be a trial attorney, it's still important to understand for the other two). You don't want to hop from one firm to the other just to find out they don't want you taking work from the litigation/transactions attorneys.

[jhett]

Could you please explain a little bit more about what you mean when you say higher level stuff. The area that I am interested in is the deal aspect, but I thought that the patent side of that is just the diligence (e.g., looking at patents involved in the deal). I would be interested to hear what the higher level stuff for transactions in general are.

Transactional work takes many forms. The exact mix of work you'll do depends on the firm. Here are a few examples:
- Negotiating specific agreements that involve IP, such as licenses, IP transfers, joint development, software development, NDAs/confidentiality, etc.
- Being part of a deal team for a transaction such as M&A, PE, or debt finance. This usually involved negotiating the IP portions of the asset/stock purchase agreement or financing agreement and ancillary documents, and verifying all the information on the IP schedules. Usually this does not involve a deep dive of the IP unless it's a big part of the deal. Rather, you'll just be verifying stuff like assignments and whether IP has expired or not (the crappy diligence I mentioned).
- Non-infringement and invalidity opinions and FTOs, which is quasi transactional and quasi prosecution work
- IP review/assessment, for example when a VC firm wants to invest in a company but wants a review of the strength of IP and IP risks. This does involve a deep dive of the IP.

While I have little to no interest in litigation, I am interested in transactions. Am I correct to understand your comment above in that the sooner the better? While I am a second year now, I do not have two years of experience. I figured that I should at least wait until I hit that two-year mark for experience before I start looking. Do you have any comments on this? Should I just start looking now?

As I said before, it depends on each firm's particular needs at the time and what experience you have. I suggest you at least start looking at the job postings (if not applying) and gauging the current demand and what firms are looking for. Then try to expand your work at the current firm to move into technology areas/work experience that are in demand. Along the way, if you spot a job that looks like a good fit, go ahead and apply. It's an evolving process and may take a while, so that's why I suggest starting now.

Since you want to move into transactions, try to target firms that don't subdivide IP into pros, trans, and lit but rather have a unified IP department (e.g., I know WilmerHale does that). That way, you can get in on the strength of your pros experience but be able to migrate over to transactions once you're in.

[Anonymous User]

OP here.

Before you lateral you're probably going to want to do some research to see what the IP transaction attorneys in your firm are doing, and seeing if that's what you want to do.

My firm does not have much of an IP transaction practice at all. Most transactions just come up through other avenues and are one offs. I would be curious to hear more about what IP transaction attorneys do. Although, that being said, I do not want to stop prosecuting, I just want to add another patent area to my practice, as a supplement. And in that case, I believe most of my work for a transaction would be diligence (correct me if I am wrong)

Also make sure that the firm you transfer to does actually provide the opportunity to do all the different aspects of patent law (even lit, because even if you don't want to be a trial attorney, it's still important to understand for the other two). You don't want to hop from one firm to the other just to find out they don't want you taking work from the litigation/transactions attorneys.

I am 100% sure that the firm that I am thinking of going to does both IP lit and IP transactions (and has their patent pros attorneys help out).

[SplitMyPants]

OP here.

Before you lateral you're probably going to want to do some research to see what the IP transaction attorneys in your firm are doing, and seeing if that's what you want to do.

My firm does not have much of an IP transaction practice at all. Most transactions just come up through other avenues and are one offs. I would be curious to hear more about what IP transaction attorneys do. Although, that being said, I do not want to stop prosecuting, I just want to add another patent area to my practice, as a supplement. And in that case, I believe most of my work for a transaction would be diligence (correct me if I am wrong)

Also make sure that the firm you transfer to does actually provide the opportunity to do all the different aspects of patent law (even lit, because even if you don't want to be a trial attorney, it's still important to understand for the other two). You don't want to hop from one firm to the other just to find out they don't want you taking work from the litigation/transactions attorneys.

I am 100% sure that the firm that I am thinking of going to does both IP lit and IP transactions (and has their patent pros attorneys help out).

Baker botts is also very well known for forcing their IP associates to get their hands on pros, lit, and transactional work for at least the first little bit.

Also, how sure are you that that their pros folks get to have a hand in the other areas? I summered at a firm that made similar representations (had all three IP sub groups), but after being there for a summer, it was very clear that there was a distinct wall between all three departments.

[Anonymous User]

OP here.

I have a friend that works at the firm that I am talking about. She has been telling me about her work ever since I started at my firm, in an attempt to recruit me over.

[Anonymous User]

OP here. What is the protocol with lateraling as a patent prosecutor? I have lots of applications that I still need to write (probably at least 6 weeks worth of work). Do I tell current firm now that I have been given an offer at another firm, when i accept at other firm, when I at least clear out a majority of the applications? I feel that if I give notice now, it is in an awkward position. There are several applications that would not make sense for anyone but me to write (I took disclosures and there may or may not be recordings of disclosures). But at same time, I feel like firm would be very sensitive in the time that I take to finish applications. They do not want to pay for for 2 months with what I could get done in 1 month.

[Abbie Doobie]

Definitely do not give notice until you accept your offer and clear the conflicts check at the new firm.

[jhett]

Definitely do not give notice until you accept your offer and clear the conflicts check at the new firm.

Agree with above.

As for your docket, just drop whatever isn't necessary for you to do. For app drafting, if you think the IDF, your notes, any recordings, and a brief discussion with you are enough for someone else to work on it, then don't do it. Your colleagues are smart and they can get missing information from the inventors if necessary. On the pros side, I suggest finishing up things that are due within a week of your expected last date.

Congrats on the offer, btw.

[Night_L]

How is the new job, OP?

Also, your posts suggest that you consider 30 applications in a year or two to be a small number? What number is typically expect from a biglaw prosecutor?

Can you describe your duties in the job you left (as in, what did you do beside draft applications and respond to office actions)? And how does the new job compare?

[Anonymous User]

Also, your posts suggest that you consider 30 applications in a year or two to be a small number? What number is typically expect from a biglaw prosecutor?

You can expect to write 30+ applications each year.