IP transactional

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IP transactional

Postby Anonymous User » Sat Jun 03, 2017 1:32 pm

TLS conventional wisdom says that Corporate biglaw tends to be inhumane in ways that have been endlessly discussed around here and thus well-documented.

How about IP transactional work, can an associate expect a similar grind?

Also, what kind of responsibility would a patent agent have in such a practice?

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Re: IP transactional

Postby Anonymous User » Sat Jun 03, 2017 2:48 pm

My practice is IP transactions or tech transactions. The hours are definitely more predictable than normal biglaw hours. At most firms, the work involves either deal support (e.g. M&A, financings, public/private offerings) or licensing/commercial agreements. There is almost no overlap with what a patent agent would do (e.g. writing or prosecuting patents).

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Roy McAvoy

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Re: IP transactional

Postby Roy McAvoy » Sat Jun 03, 2017 2:49 pm

Patent agent wouldn't do much. They're just licensed before the PTO to prosecute applications. Not authorized to act as an attorney in stuff like that.

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Re: IP transactional

Postby Anonymous User » Sat Jun 03, 2017 3:33 pm

Roy McAvoy wrote:Patent agent wouldn't do much. They're just licensed before the PTO to prosecute applications. Not authorized to act as an attorney in stuff like that.


Certainly but define "act as an attorney." I know patent agents who do a lot more than draft and prosecute patent applications, granted they were law students or JDs. The only people who "act as lawyers" in any firm are the people whose names appear on court filings and client correspondence. Most of us here research or review facts and law and draft various documents for these people. What does it matter if those doing the grunt work are associates, patent agents, or law clerks? Hell, I've even heard that paralegals do legal research at some firms. Are they "acting as attorneys"?

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Roy McAvoy

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Re: IP transactional

Postby Roy McAvoy » Tue Jun 06, 2017 9:37 am

Anonymous User wrote:
Roy McAvoy wrote:Patent agent wouldn't do much. They're just licensed before the PTO to prosecute applications. Not authorized to act as an attorney in stuff like that.


Certainly but define "act as an attorney." I know patent agents who do a lot more than draft and prosecute patent applications, granted they were law students or JDs. The only people who "act as lawyers" in any firm are the people whose names appear on court filings and client correspondence. Most of us here research or review facts and law and draft various documents for these people. What does it matter if those doing the grunt work are associates, patent agents, or law clerks? Hell, I've even heard that paralegals do legal research at some firms. Are they "acting as attorneys"?



Opinion work, any client correspondence, contracts (licensing stuff, NDA's, etc), things like that. You're asking about IP transactional which will involve a lot of licensing work and things like that, which a patent agent can't put his/her name on since he/she isn't an attorney yet.

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Re: IP transactional

Postby Night_L » Tue Jun 06, 2017 11:16 am

Opinion work, any client correspondence, contracts (licensing stuff, NDA's, etc), things like that

Sorry but it's clear that you know little about actual legal practice, which is fine since apparently you are a 2L and may not have worked in a law firm before. I have drafted every single one of these things as a law clerk, long before I graduated from law school or even became a patent agent. Again, it doesn't matter who does the grunt work because it is supervised and reviewed by the responsible attorneys before it goes out. My initials were on these documents right next to the responsible partners or associates.

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Re: IP transactional

Postby Anonymous User » Tue Jun 06, 2017 11:54 am

Anonymous User wrote:TLS conventional wisdom says that Corporate biglaw tends to be inhumane in ways that have been endlessly discussed around here and thus well-documented.

How about IP transactional work, can an associate expect a similar grind?

Also, what kind of responsibility would a patent agent have in such a practice?


Have done this, and know of people in this position working at big firms- depends (predictably) in part on how busy the M&A group is, because the majority of the work is deal support, how big the IP group is (in terms of how thinly you can spread the work around), and how much the M&A groups think they can handle the IP themselves, or would rather just pass it along to you.

This is obviously anecdotal, but still, I think it would be a mistake to believe IP transactional work at a big firm is different than any other specialty such as exec comp, etc. (Except for trust & estates- those people coast down easy street)

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Roy McAvoy

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Re: IP transactional

Postby Roy McAvoy » Tue Jun 06, 2017 12:15 pm

Night_L wrote:
Opinion work, any client correspondence, contracts (licensing stuff, NDA's, etc), things like that

Sorry but it's clear that you know little about actual legal practice, which is fine since apparently you are a 2L and may not have worked in a law firm before. I have drafted every single one of these things as a law clerk, long before I graduated from law school or even became a patent agent. Again, it doesn't matter who does the grunt work because it is supervised and reviewed by the responsible attorneys before it goes out. My initials were on these documents right next to the responsible partners or associates.


You're correct, and I'm doing all of this right now as a summer as well. I just meant you can't put only your name on it as if you did it all unsupervised, whereas my understanding is that as a patent agent you're pretty much running your own case load of apps and office actions. I was trying to draw that distinction. I may not have articulated that very well - my apologies.

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Re: IP transactional

Postby Night_L » Tue Jun 06, 2017 6:04 pm

Roy McAvoy wrote:
Night_L wrote:
Opinion work, any client correspondence, contracts (licensing stuff, NDA's, etc), things like that

Sorry but it's clear that you know little about actual legal practice, which is fine since apparently you are a 2L and may not have worked in a law firm before. I have drafted every single one of these things as a law clerk, long before I graduated from law school or even became a patent agent. Again, it doesn't matter who does the grunt work because it is supervised and reviewed by the responsible attorneys before it goes out. My initials were on these documents right next to the responsible partners or associates.


You're correct, and I'm doing all of this right now as a summer as well. I just meant you can't put only your name on it as if you did it all unsupervised, whereas my understanding is that as a patent agent you're pretty much running your own case load of apps and office actions. I was trying to draw that distinction. I may not have articulated that very well - my apologies.


No harm done. Now to be fair, to some extent, it does matter to some clients who does the grunt work. So a marquee client may balk at seeing on their bill that the legal research supporting some important question they asked was mostly conducted by a patent agent or paralegal, with the senior associate and or partner billing 0.5 or some such to revise the draft. For example, if your SA is at biglaw, your work is almost certainly written off. There are even tales of clients refusing to pay for 1st year associate work. In all these cases, it's not a matter of authorization to act as an attorney but rather the client's trust in the person's work product given his credentials.

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Re: IP transactional

Postby h2go » Thu Jun 08, 2017 3:11 am

Night_L wrote:There are even tales of clients refusing to pay for 1st year associate work.


This is pretty common.



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