Biglaw patent prosecution Forum

[Anonymous User]

The consensus for junior associate biglaw work is well known: long hours doing tedious, menial work. Doc review for litigation, and whatever the equivalent is for the corporate crowd. Thus, substantive work is difficult to come by for a long time.

But what about patent prosecution? It seems to me that juniors are immediately assigned to responding to office actions and drafting applications, which is real, substantive work and the bread and butter of a patent attorney. As a result, the conventional wisdom dictating that first years do menial work does not appear to apply to patent prosecution. Can anyone confirm this?

I summered at an IP firm last year, but somehow forgot to get a good feel for this, so focused I was on litigation. But I did get a prosecution assignment from a first year, and it was an office action response. I don't think he would have assigned me this work if it were not routine for him (unless his upcoming vacation had something to do with it...).

TL;DR: Do biglaw patent prosecution first years get substantive work right away? If not, then what do they do?

[hurldes]

Yes, patent prosecution attorneys work on office action responses in their first year.. although I'm not sure how many would agree that this is "substantive work."

[Anonymous User]

Yes, patent prosecution attorneys work on office action responses in their first year.. although I'm not sure how many would agree that this is "substantive work."

How is amending claims and traversing rejections not substantive work? I know it gets old after a while, but it's what patent prosecution attorneys at any level do or supervise; it requires an understanding of the application and prior art, and some claim drafting skills. That's no menial task. And it's certainly not in the same category as reading countless docs to find evidence, finding authority for some proposition in someone else's brief, or proof-reading someone else's documents. Am I missing something?

[lukertin]

Lol biglaw patent prosecution

[Anonymous User]

Lol biglaw patent prosecution

Not sure I get the funny. There was a ton of prosecution at the firm last summer, and plenty of lawyers who did exclusively that.

[androstan]

Lol biglaw patent prosecution

Not sure I get the funny. There was a ton of prosecution at the firm last summer, and plenty of lawyers who did exclusively that.

If one defines biglaw conservatively, then none do prosecution. Even with a more liberal definition only a few biglaw firms do it, mostly the ip giants i.e. fish, finnegan, knobbe, etc.

[09042014]

Lol biglaw patent prosecution

Not sure I get the funny. There was a ton of prosecution at the firm last summer, and plenty of lawyers who did exclusively that.

If one defines biglaw conservatively, then none do prosecution. Even with a more liberal definition only a few biglaw firms do it, mostly the ip giants i.e. fish, finnegan, knobbe, etc.

This isn't true. It's getting more and more rare, but some V100 firms do it.

[Anonymous User]

Lol biglaw patent prosecution

Not sure I get the funny. There was a ton of prosecution at the firm last summer, and plenty of lawyers who did exclusively that.

Ya maybe Jones Day, Cooley etc. do it but in patent prosecution -- training is responding to Office Actions, and post-training is patent preparation and portfolio management. Not sure whether it matters how you label 'substantive work' but if you'll be happy with that, then sure.

[Anonymous User]

TL;DR: Do biglaw patent prosecution first years get substantive work right away? If not, then what do they do?

Research for freedom to operate analyses (FTOs), info disclosure statements (IDSs); i.e., due diligence re: patent applications. But I think this can/does move quickly into responding to office actions, etc., depending on the need. Probably your best resource is to ask people you worked with directly, though.

Yes, patent prosecution attorneys work on office action responses in their first year.. although I'm not sure how many would agree that this is "substantive work."

How is amending claims and traversing rejections not substantive work? I know it gets old after a while, but it's what patent prosecution attorneys at any level do or supervise; it requires an understanding of the application and prior art, and some claim drafting skills. That's no menial task. And it's certainly not in the same category as reading countless docs to find evidence, finding authority for some proposition in someone else's brief, or proof-reading someone else's documents. Am I missing something?

Agree with your response above. But then, of course, some tend to view much of associates' work in biglaw as not especially substantive.

I do wonder though whether the 'race to the bottom' in patent prosecution will continue. Will the current level of biglaw patent prosecution jobs hold steady? This probably depends much on the industry, but I would think (hope) that investors will continue to value higher quality patent prosecution, which will cost more money, whether done at biglaw or high-end boutiques.

[Anonymous User]

Lol biglaw patent prosecution

Not sure I get the funny. There was a ton of prosecution at the firm last summer, and plenty of lawyers who did exclusively that.

If one defines biglaw conservatively, then none do prosecution. Even with a more liberal definition only a few biglaw firms do it, mostly the ip giants i.e. fish, finnegan, knobbe, etc.

OP here. Finnegan and Fish have 350+ att'y each, multiple offices in the US and overseas, and pay $160,000 to start where appropriate. They are both within the V100, and associates bill well north of 2000 hours at both firms. They are giants of their practice area, and consistently rank 1st or 2nd in surveys in various categories of IP surveys. A significant portion of associates at these firms has or will clerk at the federal circuit.

What credible definition of biglaw, conservative or otherwise, could possibly exclude either firm?

Research for freedom to operate analyses (FTOs), info disclosure statements (IDSs); i.e., due diligence re: patent applications. But I think this can/does move quickly into responding to office actions, etc., depending on the need. Probably your best resource is to ask people you worked with directly, though.

Great, this is what I was looking for. Thanks.

[sfhaze]

If one defines biglaw conservatively, then none do prosecution. Even with a more liberal definition only a few biglaw firms do it, mostly the ip giants i.e. fish, finnegan, knobbe, etc.

OP here. Finnegan and Fish have 350+ att'y each, multiple offices in the US and overseas, and pay $160,000 to start where appropriate. They are both within the V100, and associates bill well north of 2000 hours at both firms. They are giants of their practice area, and consistently rank 1st or 2nd in surveys in various categories of IP surveys. A significant portion of associates at these firms has or will clerk at the federal circuit.

What credible definition of biglaw, conservative or otherwise, could possibly exclude either firm?

I agree with OP totally, for what it's worth. Also, established biglaw firms like MoFo and WSGR, just as examples, do substantial work in patent prosecution-related matters, depending on the partners involved and client needs. This is obvious or can be confirmed looking at published attorney bios and related clients/patents.

[Anonymous User]

OP here: I also know a first year at a different biglaw firm who recently tasked with drafting a fed circuit brief for an appeal from the BPAI. He did clerk for two years (HYS before that) in that court before coming to the firm so I guess that makes him a third year. And I am not sure drafting a fed. cir. brief, even on an appeal from the BPAI qualifies as "prosecution."

[Anonymous User]

I am a 1st year associate doing patent prosecution at a large firm. I received lots of substantive work from day 1 - drafting office actions, drafting patents, and even FTO opinions (of course with partner oversight). Lots of client contact too, which is fun.

If you are brought in for patent prosecution, then you likely have a technical expertise. It would be a waste of that expertise to staff you on doc-review type projects.

[Agent]

Good thread. A few thoughts:

How is amending claims and traversing rejections not substantive work? . . . Am I missing something?

^I agree with you, but I think it's worth commenting on the perceived rift between litigation v. prosecution folks. I can see why some people dismiss prosecution as non-substantive—perhaps it has something to do with the fact that Patent Agents and Student Associates with lower billing rates often perform this work, and that more senior attorneys can easily price out of it if they do not become extremely efficient as their billing rates increase.

Lol biglaw patent prosecution

^Why bother posting that?

If one defines biglaw conservatively, then none do prosecution. Even with a more liberal definition only a few biglaw firms do it, mostly the ip giants i.e. fish, finnegan, knobbe, etc.

^Sure, many biglaw GP firms stick to litigation. I can think of many, however, that do prosecution (several have already been mentioned in this thread). And I expect that more will do prosecution as GP firms wade deeper into the IP game.

This isn't true. It's getting more and more rare, but some V100 firms do it.

^Perhaps you're right, but I get the impression that it's becoming less rare as (a) GP firms absorb small, profitable IP boutiques and (b) firms more closely guard business from litigation clients who demand inexpensive prosecution (i.e., they avoid outsourcing that work).

[iconoclasttt]

I do wonder though whether the 'race to the bottom' in patent prosecution will continue. Will the current level of biglaw patent prosecution jobs hold steady? This probably depends much on the industry, but I would think (hope) that investors will continue to value higher quality patent prosecution, which will cost more money, whether done at biglaw or high-end boutiques.

Predictions: yes, and perhaps not. High volume clients continue to be more concerned about standardizing prosecution costs per application, and driving the average cost down. Such clients are rarely willing to pay more for "quality." Some clients do attempt to sort their portfolios into critical vs. non-critical assets and spend more on the critical bucket, but those are the exception.

Prosecution tends to be a loss leader in biglaw firms, conducted for the benefit of retain higher-margin litigation business. It's extraordinarily difficult to do quality prosecution at the billing rates biglaw firms command even for relatively junior associates ($350+ for second year, for example), given that for routine matters, many clients are loath to spend more than, say, $3k for an OA response. An experienced prosecutor who's familiar with a matter can be pretty efficient at $350+, but it probably takes a good 3-5 years to reach that level.

Over the last decade or so, I've seen average fixed/capped fees rise considerably slower than inflation, and I've seen a fairly constant migration of work from larger firms to smaller, cheaper ones. There will probably always be a place in biglaw for at least some routine prosecution, but I see it at best remaining stable.

[sfhaze]

I do wonder though whether the 'race to the bottom' in patent prosecution will continue. Will the current level of biglaw patent prosecution jobs hold steady? This probably depends much on the industry, but I would think (hope) that investors will continue to value higher quality patent prosecution, which will cost more money, whether done at biglaw or high-end boutiques.

Predictions: yes, and perhaps not. High volume clients continue to be more concerned about standardizing prosecution costs per application, and driving the average cost down. Such clients are rarely willing to pay more for "quality." Some clients do attempt to sort their portfolios into critical vs. non-critical assets and spend more on the critical bucket, but those are the exception.

Prosecution tends to be a loss leader in biglaw firms, conducted for the benefit of retain higher-margin litigation business. It's extraordinarily difficult to do quality prosecution at the billing rates biglaw firms command even for relatively junior associates ($350+ for second year, for example), given that for routine matters, many clients are loath to spend more than, say, $3k for an OA response. An experienced prosecutor who's familiar with a matter can be pretty efficient at $350+, but it probably takes a good 3-5 years to reach that level.

Over the last decade or so, I've seen average fixed/capped fees rise considerably slower than inflation, and I've seen a fairly constant migration of work from larger firms to smaller, cheaper ones. There will probably always be a place in biglaw for at least some routine prosecution, but I see it at best remaining stable.

Are your predictions relevant to all industries? For example, it seems pharma values its patents much more than, say, many computer tech co's, Apple's recent patent lit victories notwithstanding. So, the simple expectation might be that tech co's would be more willing to cut corners on prosecution 'quality.' Or is this too naive?

[iconoclasttt]

Are your predictions relevant to all industries? For example, it seems pharma values its patents much more than, say, many computer tech co's, Apple's recent patent lit victories notwithstanding. So, the simple expectation might be that tech co's would be more willing to cut corners on prosecution 'quality.' Or is this too naive?

Good point. In my view, pharma/bio/chem is a very different market from computer-related technologies (I've always thought that the statute should account for those differences, but that's a whole other topic). The dynamics of those markets correspondingly vary. As has been frequently noted by various commentators, a given pharma product may implicate on the order of tens of patents, whereas a computer-related product may implicate thousands. If my memory serves, Dennis Crouch has periodically produced statistics that show that the number of filings by art area tends to reflect this distribution.

I'm not familiar with the cost structures that prosecution clients in the non-computer-related arts typically employ, but it would be rational to me if such clients were willing to spend more per patent. That said, those technologies aren't driving the majority of jobs.

[Anonymous User]

If you could do biglaw (market-paying) patent prosecution/counseling anywhere, where would it be? What do you think of the patent agent -> patent attorney path, where firms pay for part-time school?

[iconoclasttt]

If you could do biglaw (market-paying) patent prosecution/counseling anywhere, where would it be? What do you think of the patent agent -> patent attorney path, where firms pay for part-time school?

(1) I have always been much more partial to smaller firms than larger ones. Smaller firms, IMO, offer more opportunity to those with an entrepreneurial mindset (granted, not the majority of law students). Financially, for talented folks, at a boutique it's possible to do as well or even better than biglaw--if not right out the outset, at least with a few years of development. So for me, the answer would be either at my current firm, or a firm of my own creation. Admittedly, others may have different motivations and criteria.

(2) Even if a firm isn't going to pay for law school, I think it makes a hell of a lot of sense to spend a year or two actually doing prosecution before deciding to commit 3+ years and associated costs. The vast, vast majority of law students have no idea what legal practice entails before they've made that commitment, and the results are too frequently tragic. Agents with a couple years' experience have at least some idea what they're getting themselves into. HIGHLY recommended for those looking to focus on prosecution.

[SubwaySandwich]

I know that combination of patent lit + prosecution or transactional is very rare. But how common do you guys think it is for a Biglaw attorney to do a combination of prosecution + transactional?

[iconoclasttt]

I know that combination of patent lit + prosecution or transactional is very rare. But how common do you guys think it is for a Biglaw attorney to do a combination of prosecution + transactional?

Lit+pros is rare, though I don't know if I'd say "very rare"; I remember a lot of guys at Fish telling me that they had mixed practices, and this may be more true at large boutiques.

Depends on what you mean by "transactional." Preliminarily, I wouldn't characterize counseling/opinion work as necessarily transactional; in my mind that's more along the lines of lit support especially if defensive. Depending on the client base, I would expect there to be a fair number of counseling opportunities for a Biglaw prosecutor, though opinion work has declined substantially in the wake of Seagate.

As for transactional, there's diligence in support of corporate deals (i.e., portfolio analysis as a part of overall asset analysis), and transactions involving patents themselves (e.g., licensing). It's not uncommon for prosecutors to get involved in diligence for deal support, but this is probably more common at firms that do both corporate and patent and so are driving the deal. From what I've seen, licensing tends to stand apart a bit from pros or lit. A lot of large institutional clients that do a substantial amount of licensing out or in have in-house counsel driving negotiations and use outside corporate counsel to structure the deal. There is sometimes a supporting diligence opportunity here for prosecutors.

In short, for at least some types of "transactional," not terribly uncommon to see it in combination with straight pros--but it really depends on the firm and the clients. Generally speaking, whenever a client wants advice as to the intrinsic strengths/weaknesses of a particular patent, I think an experienced prosecutor is typically in a better position to do that analysis than a litigator, because prosecutors tend to be closer to the technology and and the prosecution history. This is, of course, not an absolute statement.

FWIW, though I'm not in biglaw, I've had occasional opportunities to do all of the above, though I've seen a lot of the deal support/diligence work go in house over the last three years owing to cost pressures (fallout from the economy).

[Anonymous User]

Generally speaking, whenever a client wants advice as to the intrinsic strengths/weaknesses of a particular patent, I think an experienced prosecutor is typically in a better position to do that analysis than a litigator, because prosecutors tend to be closer to the technology and and the prosecution history. This is, of course, not an absolute statement.

That's akin to saying the best person to give a valuation opinion as to a particular patent is a primary examiner from the USPTO who examines in that particular technology. I kind of lol'd.

[iconoclasttt]

Generally speaking, whenever a client wants advice as to the intrinsic strengths/weaknesses of a particular patent, I think an experienced prosecutor is typically in a better position to do that analysis than a litigator, because prosecutors tend to be closer to the technology and and the prosecution history. This is, of course, not an absolute statement.

That's akin to saying the best person to give a valuation opinion as to a particular patent is a primary examiner from the USPTO who examines in that particular technology. I kind of lol'd.

No, not really "akin" to that at all. Prosecutors and litigators are attuned to different things; your assumption that examiners understand the technology and the law as well as either is what made me lol.

EDIT: If you want to call me out, feel free, but don't use anon as a cover.

[Anonymous User]

No, not really "akin" to that at all. Prosecutors and litigators are attuned to different things; your assumption that examiners understand the technology and the law as well as either is what made me lol.

So why do most prosecutors default to examiners during prosecution? Why do specialized pros shops like to leech primaries from the USPTO? Because they're the ones who have been searching the same things in the same technology for years, and they're in a better position to identify innovative features; it's laughable that you think an attorney who rarely becomes specialized in a certain technology could come close to the average primary examiner (who probably is more educated and has more industry experience than his counterpart) in terms of mastery of a technological field. These people can look at your average patent application and can immediately pull up 5 anticipatory prior art references from memory to reject all the claims therein. If a prosecutor had anywhere near the same level of understanding of the art they would not be drafting such craptastic poor quality claims (assuming that prosecutor isn't working for a troll).

As for understanding of the law, you assume examiners a) don't have law degrees, b) aren't licensed lawyers, c) never worked as a lawyer or patent agent in their life, d) are incapable of reading a court opinion and understanding it, or e) if any of a-d are true, they don't have the same legal knowledge as practicing attorneys. I'm not going to argue e) because that's an extremely factual situation that requires determination on a case-by-case basis. That said, only a person operating from complete ignorance who has an overinflated opinion in the value of a JD would make any of the first four assumptions; furthermore, of the number (25+ in my limited experience) of "legal arguments" (I distinguish legal arguments from art arguments) I've seen, I've read about 2 that had a solid basis in a proper understanding of the law. Every other argument I've read either a) misstated the law, b) cited old case law that has since been overturned, or c) is entirely tangential to their argument and doesn't address the issue at hand. Such masterful grasp of patent law! Oh dear, whatever will the inventors in this country do?

EDIT: If you want to call me out, feel free, but don't use anon as a cover.

The only person calling anyone out here is you.

[iconoclasttt]

No, not really "akin" to that at all. Prosecutors and litigators are attuned to different things; your assumption that examiners understand the technology and the law as well as either is what made me lol.

So why do most prosecutors default to examiners during prosecution?

I don't know what you mean by "default to examiners." Amending claims? Just because I amend doesn't mean the examiner's right; the client may want to get a quick issuance and file a CON. If a rejection is BS, I appeal it. (Fact is that in the art units I deal with, allowances have been easier to come by in the Kappos years.)

Why do specialized pros shops like to leech primaries from the USPTO?

They do? Of the "specialized pros shops" I work with, fewer than 10% of the professionals are former examiners. Maybe this is different at the largest shops like Oblon; I don't know.

Because they're the ones who have been searching the same things in the same technology for years, and they're in a better position to identify innovative features; it's laughable that you think an attorney who rarely becomes specialized in a certain technology could come close to the average primary examiner (who probably is more educated and has more industry experience than his counterpart) in terms of mastery of a technological field. These people can look at your average patent application and can immediately pull up 5 anticipatory prior art references from memory to reject all the claims therein. If a prosecutor had anywhere near the same level of understanding of the art they would not be drafting such craptastic poor quality claims (assuming that prosecutor isn't working for a troll).

I get it. You're an examiner, or a former examiner, and I touched a nerve.

Some examiners are good. The overall quality of the corps has improved over the last few years. But most OAs I see still reflect the fact that examiners have little time to spend with the application, a marginal understanding of the relevant technology, and/or a misunderstanding that BRI means that "a claim term means whatever I want it to mean."

As for understanding of the law, you assume examiners a) don't have law degrees, b) aren't licensed lawyers, c) never worked as a lawyer or patent agent in their life, d) are incapable of reading a court opinion and understanding it, or e) if any of a-d are true, they don't have the same legal knowledge as practicing attorneys. I'm not going to argue e) because that's an extremely factual situation that requires determination on a case-by-case basis.

I don't much care about (a)-(d), although the fact of the matter is that most junior examiners satisfy one or more of (a)-(c). My opinion of the corps in general is informed by over ten years in dealing with it; although some examiners are good, most are not.

For that matter, I have a similar opinion of many prosecutors, but overall, my opinion of the patent bar as a whole is somewhat higher than the corps as a whole.

That said, only a person operating from complete ignorance who has an overinflated opinion in the value of a JD would make any of the first four assumptions; furthermore, of the number (25+ in my limited experience) of "legal arguments" (I distinguish legal arguments from art arguments) I've seen, I've read about 2 that had a solid basis in a proper understanding of the law. Every other argument I've read either a) misstated the law, b) cited old case law that has since been overturned, or c) is entirely tangential to their argument and doesn't address the issue at hand. Such masterful grasp of patent law! Oh dear, whatever will the inventors in this country do?

Pardon me while I dust off all this straw.

EDIT: If you want to call me out, feel free, but don't use anon as a cover.

The only person calling anyone out here is you.

OK, anon.