patent litigator taking questions Forum

[Big Shrimpin]

I think you could be a hot commodity in the soon-to-be-real patent commodities market.

Snark or legit theory? Sources? TYIA.

[Anonymous User]

I think you could be a hot commodity in the soon-to-be-real patent commodities market.

Snark or legit theory? Sources? TYIA.

This. If actual, could you expand on this?

[markman]

IPAM (intel prop asset mgt) is booming in parts of the country. Lots of companies who can't be described as anything other than i-banks for patents. this stuff is in its very nascent stage right now, but 5 years from now this could be a pretty good mkt

i've known ppl who lateraled out of big law work at RPX (former weil), ACP, Lazard, and Acacia. it's an interesting lateral other than in-house, gov, or pat lit.

Finance will also help in pat transactional work.

there's nothing established out there, so all these companies are usually populated with ppl with extensive legal backgrounds, i.e., not entry level hacks. But that could change.

[Anonymous User]

I'm currently a rising 3L at a T20 wanting to go into patent lit after graduation. I'm barred at the PTO but only have an undergraduate chem degree. I have median grades and no law review or journal. Decided to do environmental law this summer at a government agency so did not summer anywhere. Have ties to DC and NY.

Anyone have advice on which firms I should be targeting?

Do you want to do prosecution?

No I would prefer not to do prosecution, I enjoy litigation and most of my experiences in law school have been based on litigation (1L summer doing copyright litigation, doing a clinic at school, working at the USAO's office, judicial internship...)

Not the original person who asked the question, but I am in a similar, although not identical situation (chem degree, 1L summer with a fed judge, but my 2L summer is with in-house patent counsel and I am at a school in the mid T2 range). However I don't have ties to DC or NY.
I would love your thoughts on this.

[ip2012]

Great answer, thanks Markman

btw, how do you conduct most of your research when dealing with unfamiliar technologies?
I was wondering if you could share any favorite online resources you might have that assist in patent litigation (construing claims, claim charts, invalidity opinions, etc)

Markman, if you are still answering questions, I would like to know how much background technical knowledge is needed to practice IP lit?
(for example, will someone with a bio background be in over their heads trying to do infringement claim charts for a software program?)

for PRG you'll need bar license. PTAB can pro hac you, but they won't if you're not reg'd. just look up these acronyms and read some literature you'll figure out what I just said.

PRG will be important. They're trying to go from district courts to PTAB and they'll succeed to some extent.

Speaking about D.Cts and ITC alone, you don't "need" tech bg, but how you're going to construe claims or prep noninfr or inval contentions without a tech bg is your call.

Employers use tech bg as proxy for competence. But it's more than that. Lots of cases I've worked on, I've had to employ my tech bg and have actually had to jog my memory back to college.

[Anonymous User]

You mentioned that you have some knowledge of the culture at different IP boutique offices. Without outing the firm you specifically worked at, could you elaborate on that a bit? People always say look at the differences in culture and then never actually tack down what they mean by that.

[fatduck]

;llllllllllllllllllll

edit: my cat posted that. i'll pass your answer along to her.

[ip2012]

Markman, have you found any patent books useful in your practice?
some of the PLI books by Faber and others seem to have good reviews. They are quite expensive and was wondering if you had any experience with them.

[Bosque]

Markman, have you found any patent books useful in your practice?
some of the PLI books by Faber and others seem to have good reviews. They are quite expensive and was wondering if you had any experience with them.

Most firms will get you materials like this if you ask, or might already have them in the library. I wouldn't buy it yourself until you find out if that is an option.

[markman]

Markman, have you found any patent books useful in your practice?
some of the PLI books by Faber and others seem to have good reviews. They are quite expensive and was wondering if you had any experience with them.

Matthews Moys Chisum all good.
Patentlyo used to be good. Now i am meh re it. Dennis is the only good one on tuere.
Law360 is good for news. Prob best patlit coverage. Req inst subscription though.

[Anonymous User]

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?

This is to my interest as well, and thanks for doing this.

It is clear to me that if I only want to do prosecution, boutique is definitely the way to go. But if I want to do both prosecution and litigation, would it still be better to work for a boutique (e.g. Fish/Knobbe/Kenyon) than for a full service IP GP firm (e.g. K&E/Mofo/Ropes)?

I've had some IP boutique SA experience but no GP experience, so would really like to hear your opinion on this.

[r6_philly]

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?

This is to my interest as well, and thanks for doing this.

It is clear to me that if I only want to do prosecution, boutique is definitely the way to go. But if I want to do both prosecution and litigation, would it still be better to work for a boutique (e.g. Fish/Knobbe/Kenyon) than for a full service IP GP firm (e.g. K&E/Mofo/Ropes)?

I've had some IP boutique SA experience but no GP experience, so would really like to hear your opinion on this.

I think this is mostly true for smaller boutiques like Knobbe/Kenyon types. Not true for bigger firms like Fish. I think it's hard to pick up the same skills and experiences with the rest of your class in a bigger firm setting if you split time between both sides.

[ejrubin]

Hi,

I'm completing my Masters in CS right now and will be applying to LS in the fall. I will be eligible to take the patent bar under Category B Option 4, although I still must take two physics courses to complete the requirement.

A few questions:

1.) For patent bar eligibility, does it matter where I take the two physics courses? Could I just take the courses from a certified online college or a local community college?

2.) With regard to employers, how hard is it to find patent work for someone with a MSCS and a JD? I am looking to work in Boston, but am contemplating getting a scholarship to a more distant school (UConn) instead of paying ticket for BU/BC. What I can't get a good hold of is the demand for someone with my background. With good grades at a lower-tier school, I wonder if a tech background will still allow me to get patent work in a major city like Boston.

3.) Do IP Firms focus their associates on what area of science they are most proficient at? In other words, for people with a CS degree, would most IP firms assign them work on Mech E. patents or some other less related field?

4.) It seems that passing the patent bar before law school would be helpful in finding a LS summer internship. With that said, how helpful would it be? If studying for the patent bar before LS would be extremely difficult, would it be worth the misery? Or would someone with a tech background and good LS grades not necessarily need that extra bump.

Thanks.

[Anonymous User]

Hi,

I'm completing my Masters in CS right now and will be applying to LS in the fall. I will be eligible to take the patent bar under Category B Option 4, although I still must take two physics courses to complete the requirement.

A few questions:

1.) For patent bar eligibility, does it matter where I take the two physics courses? Could I just take the courses from a certified online college or a local community college?

2.) With regard to employers, how hard is it to find patent work for someone with a MSCS and a JD? I am looking to work in Boston, but am contemplating getting a scholarship to a more distant school (UConn) instead of paying ticket for BU/BC. What I can't get a good hold of is the demand for someone with my background. With good grades at a lower-tier school, I wonder if a tech background will still allow me to get patent work in a major city like Boston.

3.) Do IP Firms focus their associates on what area of science they are most proficient at? In other words, for people with a CS degree, would most IP firms assign them work on Mech E. patents or some other less related field?

4.) It seems that passing the patent bar before law school would be helpful in finding a LS summer internship. With that said, how helpful would it be? If studying for the patent bar before LS would be extremely difficult, would it be worth the misery? Or would someone with a tech background and good LS grades not necessarily need that extra bump.

Thanks.

An MS. in CS is extremely valuable, decent grades and work will come easy.

I have had the most success interviewing with boutiques, and the patent bar hasn't even come up in an interview yet, beyond possibly a "you're eligible, right?" comment.

Harder for me to comment on what you'll be doing, but from what I understand you mostly work in "other" areas if there isn't a whole lot of work in your own area. However, there is plenty of software to go around, so I'd imagine that would be the vast majority of your work.

[Anonymous User]

Thoughts on best place for IP lit?

Dechert SV
Cooley SV
Quinn SV
Akin nyc
Kaye scholer nyc

Strong preference for SV.

[Anonymous User]

Thoughts on best place for IP lit?

Dechert SV
Cooley SV
Quinn SV
Akin nyc
Kaye scholer nyc

Strong preference for SV.

not the OP but had a similar decision:

best practice is probably Quinn SV (quality of attorneys/cases/clients). However, its probably also the worst quality of life on that list. I don't think Dechert SV has much going for it. Cooley SV would be a good choice if the hours/culture of Quinn is a turnoff. I think either Quinn or Cooley SV would be a fine choice over your NY options.

[Anonymous User]

Any opinions on WilmerHale DC versus Covington DC?

[patentlybored]

For perspective, here are a couple of the OP's posts over on the intelproplaw forums. He has 6 total posts on those forums, two of which are as follows. Not sure if this has been covered yet in this thread

Markman 2-04-12 at 9:04 pm:

I'm a single, 33 year old guy. I'm looking for an area where beautiful, single women are plentiful but yet at the same time I can still have a decent commute to the PTO. Any suggestions?

Markman 08-03-12 at 4:11 PM

My Advice for Single Male Examiners Relocating to the Area

Hello everyone, I've been an examiner for a few months now and I'm fortunate enough to be in TC 1700 where roughly 40-50% of my lab is female. This is by far not typical of the PTO as a whole, I'd guess that the PTO as a whole is about 10-20% female. But I frequently go out to lunch with the female examiners in my lab and by far the biggest complaint they have is that they get hit on incessantly by male examiners.

I have a theory. Because the PTO is about 80% men and because the immediate surrounding area reflects that demographic, these men will be in a ruthless competition for the 20% single women around the PTO, and these women will probably have a knee-jerk reaction to men who hit on them around the PTO since they get hit on all the time.

So my advice for single male patent examiners who are just starting and looking to move to the area? Don't live in the immediate area around the PTO. The DC area has one of the most favorable gender ratios for single men and you'll be shooting yourself in the foot by relocating close to the PTO.




Awk

Edit: oh and here is the link

http://www.intelproplaw.com/ip_forum/in ... ts;u=49122

[wiseowl]

TBF, "markman" would be a pretty common, nondescript name for someone interested in patents

[patentlybored]

TBF, "markman" would be a pretty common, nondescript name for someone interested in patents

valid

[markman]

Not me.

[markman]

Thoughts on best place for IP lit?

Dechert SV
Cooley SV
Quinn SV
Akin nyc
Kaye scholer nyc

Strong preference for SV.

I'd probably pick Cooley and Quinn as two good ones. Cooley has some good patent litigators. Kaye Scholer NYC has good patent litigators.

[Anonymous User]

If you are still taking questions, I would love to hear what you have to say about odds of making partner at a larger ip boutique. I will be joining one of the larger ones (200+) that do both prosecution and litigation. Is it hard not to make partner? I am sure associates choose to leave on their own will or they choose to lateral to another firm or go in house. But for the associates who want to stay put and make partner, what are your thoughts on the odds? I would think it would be harder to make partner at a GP firm.

Additionally, if one laterals to a GP firm after 3 or so years, do your odds of making partner increase at that GP firm that you lateraled to? Do talks of partnership come up during the interviewing/post-offer conversations with the lateral firm?

[markman]

If you are still taking questions, I would love to hear what you have to say about odds of making partner at a larger ip boutique. I will be joining one of the larger ones (200+) that do both prosecution and litigation. Is it hard not to make partner? I am sure associates choose to leave on their own will or they choose to lateral to another firm or go in house. But for the associates who want to stay put and make partner, what are your thoughts on the odds? I would think it would be harder to make partner at a GP firm.

Additionally, if one laterals to a GP firm after 3 or so years, do your odds of making partner increase at that GP firm that you lateraled to? Do talks of partnership come up during the interviewing/post-offer conversations with the lateral firm?

yeah its easier to make partner on a statistical basis in a patent boutique than a random associate at a GP firm. But the relevant comparison is with the odds of making partner as a patent litigator in a GP firm, isn't it? I don't know the answer.

If I had a choice between being partner at a large IP boutique versus GP, I'd take GP any day. IP boutiques have a horrendous track record of surviving. Only three major boutiques have actually survived. When the rest imploded, partners had to find other options. So I wouldn't pursue the higher odds of partnership at a patent boutique and sit pretty. But see Dewey for a counterpoint in the GP world.

[dood]

TBF, "markman" would be a pretty common, nondescript name for someone interested in patents

also, i dont see wats wrong with that post at intelprop forums. bro is asking where the women are plentiful. how is that not one of life's most important questions?? like almost by definition, since reproduction is basic need.