patent litigator taking questions Forum

[markman]

What are the exit options like, particularly in-house? I know you mentioned that lateral hiring is hot, but I wasn't sure if that included non-firm stuff. What kind of in-house positions would patent lit set you up for (only litigation, or compliance/transactional as well), and what kind of qualifications do you need to bring with you? Is in-house hiring as competitive as I imagine?

exit options are good if you have prosecution/transactional experience, or are at least able to talk about them. there, things are gravy esp if you have the relevant bg, e.g. EE for Intel.

there are litigation in-house options, they're just not as numerous as the former i discussed. there was a post yesterday on patentlyo with a dozen lateral options. browse thru.

[markman]

what are the top 5 or so patent lit departments in your opinion (firms) ??

depends on what type of tech you're referring to and what geo region. Also, ITC is a different animal, as are patent appeals. Pharma is a different beast. EE is different.

Overall, I think the top "nationwide" firms are likely Kirkland, Weil, Quinn, Fish, Finnegan, MoFo, Irell, Wilmer, Ropes, McKool.

I know I'm missing at least a half dozen who are just as strong as any of the above. (Orrick, Sidley, Baker Botts, Foley, don't go by Vault on these - IP groups come in diff shapes/sizes)

[markman]

just based on general tenor of questions, i'll go ahead and issue this disclaimer.

i started off in prosecution, i did not graduate from a t14, and one reason (well, the main reason) i got my first job was my tech bg.

i think you guys will get very different advice from some of my friends who majored in history and are excelling as patent litigators.

as you advance in patent litigation, or lit generally, you'll find out that you are better at certain things than others. Some lawyers are exceptional at briefing, others are exceptional at client relationships (book building), others are very fast/efficient writers, others are very proficient at preparing witnesses/taking depositions. Kinda like basketball, different positions. The goal should be, for any litigator, to assess one's own strengths, play to them, while improving on weaknesses.

your biggest edge with tech bg will come in staffing, pitches, and by the fact that extremely talented lawyers will run scared from MOSFETs. Just like with your success at getting SAs and perm offers, you will find that the same psychological comfort with MOSFETs will assist you in doing well as a litigator.

I hope, for example, to get an opportunity to cross-examine an MIT-trained research scientist one day (again, altering facts slightly to stay anon). And I hope to skip over people a couple years ahead of me who are scared to cross this guy/gal. For the meantime, I get to take an MIT-trained scientist's deposition and I got this opportunity OVER my peer who were not EE. And I'm noticing that opposing counsel has prepped the expert differnetly given that I have a tech bg. You'll notice this too.

Another big advtg I come in with is my experience as a prosecutor. That really helps with things on an almost daily basis. I am on all types of emails from people dipping their toes in pat lit who don't understand nuances of a file.

My single recommendation to you is - take the patent bar, go work at a patent boutique, do all three (lit, lic, pros), and then see where you want life to take you. Wow this post was massive.

[lblelalr]

How is work life balance as a prosecutor vs litigator? Is the general consensus that patent prosecution has fewer and more stable hours true? And are there differences in compensation/lateral options between prosecution and litigation?

[markman]

How is work life balance as a prosecutor vs litigator? Is the general consensus that patent prosecution has fewer and more stable hours true? And are there differences in compensation/lateral options between prosecution and litigation?

Harder to bill as a prosecutor. But life is still better because it's very predictable. You can plan vacations. You can have a family life. Almost no travel. Limited upside relative to litigation. But the benefits of knowing exactly what to expect with your work schedule MONTHS in advance is a blessing. You still deal with type-A people, but they're not type-A'hole; they're just type-A.

Litigation? It depends. You can have a great life if you play your cards right and get a little lucky. But most likely you'll be putting out fires almost routinely. Forget about planning vacations. But - easy to bill hours. Very interesting work. You can make a lot of money in patent litigation as a partner with your own book. Just pray/hope you get a good mentor/partner who cares about you as a human being and doesn't see you as a fungible entity, which is damn near impossible these days. You get to deal with type-A'holes all the time. Nothing like a nasty email war with opposing counsel.

It's kinda rare to switch from litigation to prosecution and back. Most people just pick one or the other at some point. But I know many people who do just that, pick up pros work when lit is light and vice versa. I personally think doing both makes you better at both. Ppl often only say doing pros makes you better at lit, I argue it also works the other way in a much more profound way.

[Anonymous User]

Hey markman, I REALLY appreciate what you are doing, but it seems you jumped right over my questions (copied below). I am going to one of the well known IP boutiques this summer so I am really curious about this. Thanks.

Thank you for doing this. Too little information here on the patent field beside the PLIP and "I don't have a science degree can I do patent lit?" threads.

How long were you at the boutique and why did you leave?

What were your hours at the boutique like?

You say you did a ton of pros at the boutique, how much lit then? Were you steered one way or the other?

Where do you see yourself in 5 years?

Thanks!

[Anonymous User]

Ppl often only say doing pros makes you better at lit, I argue it also works the other way in a much more profound way.

Do you think that you can elaborate on that? Do you just mean in terms of focusing for litigation?

People seem to have inconsistent beliefs. Some have told me that it's good to have the litigation experience, but most seem to consider it to be a potential negative since the practitioners over-focus on the litigation audience.

[Anonymous User]

More Qs:

ITC works seems really interesting, but all I really know about it at this point is that it's fast (half a year?) and it's a LOT of work (because it's fast). So here my two questions about that:

(1) For an associate who wants to minimize involvement with menial tasks and wants to do substantive work as soon as possible, is it fair to say that there is a much greater likelihood of the latter with ITC investigations because there probably isn't time for voluminous doc productions and attendant doc review?

(2) Have you found that there is greater reward in working on something that gets resolved in a couple of months (ITC), rather than on some litigation which began before you and may be ongoing after you (District Ct.)?

Thank you so much.

[markman]

More Qs:

ITC works seems really interesting, but all I really know about it at this point is that it's fast (half a year?) and it's a LOT of work (because it's fast). So here my two questions about that:

(1) For an associate who wants to minimize involvement with menial tasks and wants to do substantive work as soon as possible, is it fair to say that there is a much greater likelihood of the latter with ITC investigations because there probably isn't time for voluminous doc productions and attendant doc review?

No. You can't get pregnant deliver a baby in two months. I think the same applies for developing skills. Doc review and discovery in general is something that can't just be "skipped." Knowing how a record is manufactured is very important. Some kinds of doc review are useless beyond a certain point, and yes - I agree that they don't denote "forward progress" in your career. But look, someone has to do it and someone has to do it cheap. If you can get a clerkship and skip your first year as a law firm associate, then that's one way to minimize what you're referring to. But at some point you're going to have to put your time in.

And ITC isn't really a good way to learn litigation skills. It is extremely intense and not conducive to learning. Too fast. If you do a two-year long district court litigation from start to finish, you learn the basic fundamentals soundly and that makes you an attractive mid-level and/or lateral candidate.

(2) Have you found that there is greater reward in working on something that gets resolved in a couple of months (ITC), rather than on some litigation which began before you and may be ongoing after you (District Ct.)?

No. I'm happy when I don't have to go looking for work on a new project. I'm very happy to have a slow-moving case where I can bill for months without worrying about it settling. And that goes to show how screwy the billable system is. If something settles, I don't celebrate unless I'm burned out.

On the other hand, if we have a large client in an ITC or district case who is not cost-conscious and I can go to trial, it is the easiest in terms of billing hours. Weeks fly by faster at trial. And then you can take a vacation if you want at most firms for a week, maybe two weeks - just because of how much you're billing.

This goes back to why doing a mix of pros and lit is helpful. Prosecution lifestyles are much more predictable and preferable for many ppl. But if you glorify GP firms and chastise patent prosecution as "below than," you miss out on a LOT.

[markman]

Thank you for doing this. Too little information here on the patent field beside the PLIP and "I don't have a science degree can I do patent lit?" threads.

How long were you at the boutique and why did you leave?

What were your hours at the boutique like?

You say you did a ton of pros at the boutique, how much lit then? Were you steered one way or the other?

Where do you see yourself in 5 years?

Thanks!

Most of the above involve risking outing myself. I've changed facts in my responses while staying true to the spirit of the questions asked without giving misleading answers.

Not sure I can answer any of the above. I'll say this, I left when I decided to see what it would be like at a GP firm (just out of curiosity more than anything else, I felt like I was in a patent bubble at the boutique). I wasn't steered AT ALL while at the boutique. I am being steered toward lit here.

[angrybird]

this thread is great.

random question that you may not be able to answer: i'm working at a smallish firm that has a significant reexamination practice. so far i've been doing a mix of pros/lit work. should i try to get some reexam experience? worth it or not a big deal? let's say i'm aiming for firms like finnegan, fish, etc.

[markman]

this thread is great.

random question that you may not be able to answer: i'm working at a smallish firm that has a significant reexamination practice. so far i've been doing a mix of pros/lit work. should i try to get some reexam experience? worth it or not a big deal? let's say i'm aiming for firms like finnegan, fish, etc.

AIA will hurt firms that specialize in stuff like inter-partes reexam because the volume of that work is almost certain to go down, or at least decelerate compared to what was going on in the latter half of the most recent decade.

I would not try to jump into reexam if you're trying to lateral to finnegan or fish. If you're working at a firm that affords you the opportunity to do lit/pros, I frankly don't see the added benefit of lateraling to a larger boutique and starting over. Key point, starting over. The mid-size patent boutiques that are full-service IP firms that I'm familiar with in several cities do not pay substantially lower wages than Fish or Finnegan.

I would look very close at finnegan and fish because the two firms have very different cultures that vary by office, if you do go down that road. I have friends at both firms spread across a half dozen offices. Every single one of them has a different experience, obviously.

[angrybird]

this thread is great.

random question that you may not be able to answer: i'm working at a smallish firm that has a significant reexamination practice. so far i've been doing a mix of pros/lit work. should i try to get some reexam experience? worth it or not a big deal? let's say i'm aiming for firms like finnegan, fish, etc.

AIA will hurt firms that specialize in stuff like inter-partes reexam because the volume of that work is almost certain to go down, or at least decelerate compared to what was going on in the latter half of the most recent decade.

I would not try to jump into reexam if you're trying to lateral to finnegan or fish. If you're working at a firm that affords you the opportunity to do lit/pros, I frankly don't see the added benefit of lateraling to a larger boutique and starting over. Key point, starting over. The mid-size patent boutiques that are full-service IP firms that I'm familiar with in several cities do not pay substantially lower wages than Fish or Finnegan.

I would look very close at finnegan and fish because the two firms have very different cultures that vary by office, if you do go down that road. I have friends at both firms spread across a half dozen offices. Every single one of them has a different experience, obviously.

sorry my post wasn't clear: this is a 1L summer job. a full-time offer is possible, but unlikely (firm hires almost exclusively laterals).

[markman]

this thread is great.

random question that you may not be able to answer: i'm working at a smallish firm that has a significant reexamination practice. so far i've been doing a mix of pros/lit work. should i try to get some reexam experience? worth it or not a big deal? let's say i'm aiming for firms like finnegan, fish, etc.

AIA will hurt firms that specialize in stuff like inter-partes reexam because the volume of that work is almost certain to go down, or at least decelerate compared to what was going on in the latter half of the most recent decade.

I would not try to jump into reexam if you're trying to lateral to finnegan or fish. If you're working at a firm that affords you the opportunity to do lit/pros, I frankly don't see the added benefit of lateraling to a larger boutique and starting over. Key point, starting over. The mid-size patent boutiques that are full-service IP firms that I'm familiar with in several cities do not pay substantially lower wages than Fish or Finnegan.

I would look very close at finnegan and fish because the two firms have very different cultures that vary by office, if you do go down that road. I have friends at both firms spread across a half dozen offices. Every single one of them has a different experience, obviously.

sorry my post wasn't clear: this is a 1L summer job. a full-time offer is possible, but unlikely (firm hires almost exclusively laterals).

It doesn't matter what you do during your 1L summer. Just do one or two projects well enough that you can talk about them during 2L OCI interviews with patent firms.

Seek out a procedurally interesting issue like the evidentiary admissibility of a reexam request grant or a substantively interesting issue like the implications of Prometheus. Whatever project you get tasked to do, do a bang up job, get a writing sample out of it, and collect talking points.

1L summer in the patent world should be about talking points plus getting to figure out the difference between pros and lit, and getting a sense of who you are/want to be in the patent industry. And frankly, collecting cash.

[Anonymous User]

What's the longest it's taken you to get up to speed on some unfamiliar technology?

Is that time billable?

[markman]

What's the longest it's taken you to get up to speed on some unfamiliar technology?

Is that time billable?

It's taken me a long time. Many times. I've had to call friends back from college to go over some basics.

Yes. That time is absolutely billable. In Ethics, you learn that it is OK to bill even if it takes you 2x long to do something. The client can take their legal needs elsewhere if they cannot afford to pay for you to get up to speed with technology in complex patent disputes. It is different if you're being unproductive, though.

[Anonymous User]

Thank you very much for doing this. I will just ask some pretty general questions.

Q1: Can you share your experience on transitioning from pros to lit? What motivated you? Is it money, life style, type of challenges, or something else?

Q2: I am a typical engineering kid (nerd), who has a strong technical background but wouldn't say fast and efficient reading / writing is one of my strength. My impression is people like me "naturally" fit into pros side. What's you take on this? (even though as you suggested earlier, I should definitely try both of them myself.)

Q2: Other than working hard in my law classes, do you have any suggestion (such as law review, specific types of SA etc.) for typical engineering law students to better prepare themselves for a patent law career, especially patent litigation?

[chem]

My single recommendation to you is - take the patent bar, go work at a patent boutique, do all three (lit, lic, pros), and then see where you want life to take you. Wow this post was massive.

So given the choice, a patent boutique would be a better career choice than a big law firm with a patent practice group?

[markman]

Thank you very much for doing this. I will just ask some pretty general questions.

Q1: Can you share your experience on transitioning from pros to lit? What motivated you? Is it money, life style, type of challenges, or something else?

I wanted to try out everything to see what I was best at. My firm actually encouraged this. So I did. Litigation is fun. It is more interactive. You are doing the things law school teaches you to do. You're applying substantive patent law to very interesting facts and you're following rules of evidence and civil procedure. Prosecution can be solitary.

Q2: I am a typical engineering kid (nerd), who has a strong technical background but wouldn't say fast and efficient reading / writing is one of my strength. My impression is people like me "naturally" fit into pros side. What's you take on this? (even though as you suggested earlier, I should definitely try both of them myself.)

Play a game with me. Go to Wikipedia and teach yourself the difference between impedance and resistance in an electric circuit.

If you found that exercise enjoyable, challenging, and enriching, do prosecution and litigation.

If you found that exercise interesting and doable, but not enriching, do litigation.

If you found that exercise uninteresting, boring, and painstaking, do copyright work.

Q2: Other than working hard in my law classes, do you have any suggestion (such as law review, specific types of SA etc.) for typical engineering law students to better prepare themselves for a patent law career, especially patent litigation?

I was on my school's law review. It helped with bluebooking. I don't think I got much out of that experience other than bluebooking. Maybe the process of editing briefs is easier now. But you can get that from any journal. I remember during one of my callbacks way back when, someone said "Oh wow you're an engineer who can write!" when they noted my LR membership.

[Anonymous User]

Can you be employable as a patent attorney without a degree in science, if you pass the patent bar?

[togepi]

Before my first OCI at law school, is it really worth it to take some time during the year (if it doesn't affect my studies) to study for the patent bar and pass it?

Or are firms more interested in the idea that I'm patent bar (A) eligible?

I was thinking of maybe spending a few months before 1L actually started to buy a prep course for it and maybe take it before 1L or during. (and is it common for people to do this?)

Any advice?

[Anonymous User]

I would not try to jump into reexam if you're trying to lateral to finnegan or fish. If you're working at a firm that affords you the opportunity to do lit/pros, I frankly don't see the added benefit of lateraling to a larger boutique and starting over. Key point, starting over. The mid-size patent boutiques that are full-service IP firms that I'm familiar with in several cities do not pay substantially lower wages than Fish or Finnegan.

I would look very close at finnegan and fish because the two firms have very different cultures that vary by office, if you do go down that road. I have friends at both firms spread across a half dozen offices. Every single one of them has a different experience, obviously.

If an aspiring IP litigator is SAing at Fish/Finnegan, is there reason to reason to look elsewhere after the summer if offered? Assuming one wants to stay in IP/Patent litigation.

Thanks for answering the questions.

[chem]

Before my first OCI at law school, is it really worth it to take some time during the year (if it doesn't affect my studies) to study for the patent bar and pass it?

Or are firms more interested in the idea that I'm patent bar (A) eligible?

I was thinking of maybe spending a few months before 1L actually started to buy a prep course for it and maybe take it before 1L or during. (and is it common for people to do this?)

Any advice?

I've talked to a few patent attorneys and professors about this.

Pros: You get it out of the way, and it helps for your 1L SA prospects immensely. It also signals interest in patent law.

Con: You have to pick up the cost of the test and the prep class

The consensus was you should definitely take it if you can afford the money and time before 1L. Im doing it right now

[markman]

I would not try to jump into reexam if you're trying to lateral to finnegan or fish. If you're working at a firm that affords you the opportunity to do lit/pros, I frankly don't see the added benefit of lateraling to a larger boutique and starting over. Key point, starting over. The mid-size patent boutiques that are full-service IP firms that I'm familiar with in several cities do not pay substantially lower wages than Fish or Finnegan.

I would look very close at finnegan and fish because the two firms have very different cultures that vary by office, if you do go down that road. I have friends at both firms spread across a half dozen offices. Every single one of them has a different experience, obviously.

If an aspiring IP litigator is SAing at Fish/Finnegan, is there reason to reason to look elsewhere after the summer if offered? Assuming one wants to stay in IP/Patent litigation.

Thanks for answering the questions.

I personally feel the best type of IP litigator has a prosecution background. So I don't like the idea of starting at a GP firm. But if you want to branch into litigation, then the GP groups tend to be very high quality.

For me, the ideal scenario is starting at a boutique, lateral to GP, and find good mentors along the way.

[markman]

Can you be employable as a patent attorney without a degree in science, if you pass the patent bar?

I don't know, frankly.