Patent Prosecution vs. Litigation

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gravity
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Patent Prosecution vs. Litigation

Postby gravity » Fri Jul 18, 2008 12:49 am

What are some differences (hours/salary/etc) between prosecution and litigation?

I hear, for prosecution, you don't really meet clients, and you work alone all day in your office.

Also, for EE/CS, is it hard to get a job at a top firm without an advanced degree (MS/PhD)?

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koggit
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Re: Patent Prosecution vs. Litigation

Postby koggit » Fri Jul 18, 2008 12:50 am

Good questions, I'd also like to hear what people have to say.

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Formerbruin
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Re: Patent Prosecution vs. Litigation

Postby Formerbruin » Fri Jul 18, 2008 12:58 am

Joke one of my professors told:

How do you tell an extroverted patent prosecutor from an introverted patent prosecutor?

The extroverted patent prosecutor will look at the other person's shoes when he speaks.

patentlaw
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Re: Patent Prosecution vs. Litigation

Postby patentlaw » Fri Jul 18, 2008 8:06 am

gravity wrote:What are some differences (hours/salary/etc) between prosecution and litigation?

I hear, for prosecution, you don't really meet clients, and you work alone all day in your office.

Also, for EE/CS, is it hard to get a job at a top firm without an advanced degree (MS/PhD)?


Pros.: hours are very steady, mostly equal salaries but a lot of top firms don't have large prosecution arms (it's mostly lower margin work for the firms). You probably meet with your clients less, but I think it depends on the client. I certainly spoke with the clients a lot while doing pros.

Lit.: Unpredictable hours and lots of them.


Advanced degrees are unnecessary for EE/CS only bio needs advanced degrees.

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rhit2004
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Re: Patent Prosecution vs. Litigation

Postby rhit2004 » Fri Jul 18, 2008 9:13 am

My understanding is that there is not much travel involved with patent prosecution as much of the work can be done via telephone. What is the travel situation like for patent litigation? Are depositions done live or are they all done via video conferencing now?

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koggit
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Re: Patent Prosecution vs. Litigation

Postby koggit » Fri Jul 18, 2008 1:13 pm

patentlaw wrote:
gravity wrote:What are some differences (hours/salary/etc) between prosecution and litigation?

I hear, for prosecution, you don't really meet clients, and you work alone all day in your office.

Also, for EE/CS, is it hard to get a job at a top firm without an advanced degree (MS/PhD)?


Pros.: hours are very steady, mostly equal salaries but a lot of top firms don't have large prosecution arms (it's mostly lower margin work for the firms). You probably meet with your clients less, but I think it depends on the client. I certainly spoke with the clients a lot while doing pros.

Lit.: Unpredictable hours and lots of them.


Advanced degrees are unnecessary for EE/CS only bio needs advanced degrees.


Thanks -- when you contrast steady/unpredictable hours are you implying that the two positions put in the same amount of hours per year?

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gravity
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Re: Patent Prosecution vs. Litigation

Postby gravity » Fri Jul 18, 2008 2:04 pm

patentlaw wrote:a lot of top firms don't have large prosecution arms

does that mean it's more common for patent practitioners to start their own firm or do solo practice?

patentlaw
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Re: Patent Prosecution vs. Litigation

Postby patentlaw » Fri Jul 18, 2008 11:04 pm

rhit2004 wrote:My understanding is that there is not much travel involved with patent prosecution as much of the work can be done via telephone. What is the travel situation like for patent litigation? Are depositions done live or are they all done via video conferencing now?


There's still a lot of travel with litigation. Pros. depends on the firm, some go to DC a lot for examiner interviews, it depends on the client as well.

patentlaw
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Re: Patent Prosecution vs. Litigation

Postby patentlaw » Fri Jul 18, 2008 11:08 pm

koggit wrote:
patentlaw wrote:
gravity wrote:What are some differences (hours/salary/etc) between prosecution and litigation?

I hear, for prosecution, you don't really meet clients, and you work alone all day in your office.

Also, for EE/CS, is it hard to get a job at a top firm without an advanced degree (MS/PhD)?


Pros.: hours are very steady, mostly equal salaries but a lot of top firms don't have large prosecution arms (it's mostly lower margin work for the firms). You probably meet with your clients less, but I think it depends on the client. I certainly spoke with the clients a lot while doing pros.

Lit.: Unpredictable hours and lots of them.


Advanced degrees are unnecessary for EE/CS only bio needs advanced degrees.


Thanks -- when you contrast steady/unpredictable hours are you implying that the two positions put in the same amount of hours per year?


Well your billables are your billables. So at a firm that does both, you've got the same requirements. Actually, pros. is a bit harder to bill for in my experience. You start and stop a lot on pros. so your billable to non-billable rate is a bit higher.

patentlaw
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Re: Patent Prosecution vs. Litigation

Postby patentlaw » Fri Jul 18, 2008 11:09 pm

gravity wrote:
patentlaw wrote:a lot of top firms don't have large prosecution arms

does that mean it's more common for patent practitioners to start their own firm or do solo practice?


No but you'll find smaller firms or boutiques doing more pros. The top Biglaw firms that do pros. don't do a lot of it.

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wakama
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Re: Patent Prosecution vs. Litigation

Postby wakama » Mon Jul 21, 2008 5:44 pm

gravity wrote:What are some differences (hours/salary/etc) between prosecution and litigation?

I hear, for prosecution, you don't really meet clients, and you work alone all day in your office.

Also, for EE/CS, is it hard to get a job at a top firm without an advanced degree (MS/PhD)?


it certainly doesn't hurt to have an MS instead of just a BS though. even with a EE/CS degree.

jhett
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Re: Patent Prosecution vs. Litigation

Postby jhett » Mon Jul 21, 2008 6:43 pm

Hours: it's harder to bill for patent prosecution since clients don't want to spend that much money on obtaining patents (you'll need to write off some of your time). In litigation, the hours come easier since you usually bill all of your time. However, some IP firms have a lower billable hours requirement for prosecution to offset this.

Salary: at the large firms, you get paid the same in base. I'm not sure if bonus differs based on whether you're in lit or pros.

Degree: you generally need an advanced degree for biotech, pharm, and medical patent prosecution, but not for EE/CS/ME prosecution. I only have a bachelors in EE but was quite sought after in OCI.

Work: actually, I think in prosecution you get more client contact than in litigation. In large firms, the junior associates are stuck doing doc review and legal research while the partners talk with the clients. In prosecution, many times you need to talk to the client to discuss the invention as you're writing the patent. When I was a summer associate last year, I called clients (and they called me) many times. Also, you can expand beyond simply prosecution and do corporate/transactional IP work (e.g. licensing, opinions, due diligence) which can expose you to clients as well.

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zoysite
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Re: Patent Prosecution vs. Litigation

Postby zoysite » Wed Aug 06, 2008 9:00 am

Which (lit. or pro.) would allow you the freedom to move cities or work long-distance without losing business or position in a firm?

In biotech, would having 3 years of research experience but no advanced degree be enough to do pro.?

Thanks!

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brokendowncar
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Re: Patent Prosecution vs. Litigation

Postby brokendowncar » Wed Aug 06, 2008 9:09 am

zoysite wrote:In biotech, would having 3 years of research experience but no advanced degree be enough to do pro.?

I am also interested in this.

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GodSpeed
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Re: Patent Prosecution vs. Litigation

Postby GodSpeed » Wed Aug 06, 2008 6:23 pm

After the initial offer, lawyers don't get paid based on credentials like an engineer would (+$10k for MS). They don't care if you were home schooled by retarded orphan chimps.

Do you get results?
Yes: O
No: O

Please check one.



To answer some questions, based on what other IP lawyers have told me:
Litigation - stressful, high pressure, big dollar, company on the line, million dollar legal fees. It requires less technical expertise, but it's more demanding in terms of stress, dedication and time. Apparently, it's not rare for an electrical engineer to litigate a case about patent infringement on a mechanical device.

Prosecution is more 9-5 in an office, advising clients and etc. It requires more specialized knowledge, but it comes with less stress, predictable hours, and whatnot.




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