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with an EE degree don't be surprised if you end up getting pushed into pros full time

I have been advised by multiple senior attorneys that starting out in prosecution is credited, but you have to work hard to not be shoehorned into it forever. PTO practice is a highly specialized skill whereas "litigation is litigation."

So prosecution transitioning into some combination of litigation and counseling seems to be the path. One successful patent attorney partner advised me that after your first year or two of prosecution a great way to transition (if your firm isn't cooperating with your goals) is to do a CAFC clerkship.

I'm going to a large (100+ attorneys) IP boutique in the Fall and I'll be doing 50/50 at first, but they have a rapidly expanding lit practice so that may change depending on whether they continue to get the inflow of work they expect. I'm chem.

androstan wrote:I have been advised by multiple senior attorneys that starting out in prosecution is credited, but you have to work hard to not be shoehorned into it forever. PTO practice is a highly specialized skill whereas "litigation is litigation."

Is there anything that makes one preferable to the other in terms of job security, advancement, or lateral transfer opportunities? If someone prefers prosecution to litigation, are they screwing themselves if they *do* get pigeonholed into it?

better in house options for pros but fewer firm opportunities. it's a much lower margin business. better hours though.

ScottRiqui wrote:

androstan wrote:I have been advised by multiple senior attorneys that starting out in prosecution is credited, but you have to work hard to not be shoehorned into it forever. PTO practice is a highly specialized skill whereas "litigation is litigation."

Is there anything that makes one preferable to the other in terms of job security, advancement, or lateral transfer opportunities? If someone prefers prosecution to litigation, are they screwing themselves if they *do* get pigeonholed into it?

Second question first: From what I understand, even if litigation is not your thing at all, you really want to transition from prosecution per se into counseling and portfolio management. Most prosecution per se is highly commoditized so, like Pato said, it has a low profit margin which requires high volume. Places like Sughrue and Oblon have basically perfected this business model.

First question: This basic debate has raged on for quite some time on various forums i.e. intelproplaw.com. The AIA greatly expanded USPTO practice and I don't see that going anywhere. With respect to litigation, Congress seems eager to pass something to curb litigation abuse, which will also inevitably cut into normal good-faith litigation. So imho going to a firm with a healthy USPTO practice and making sure to acquire at least basic USPTO skills (even if you spend 80% of your time on lit) is credited right now if job security is valuable to you.

Lateral transfer opportunities to other firms I can't speak to, lateral firm market is generally very volatile. Lateral to in-house is a lot easier if you have a USPTO skillset. Lateral opportunities for litigators outside of firms are pretty scarce.

Advancement opportunities within a firm I still think are better in litigation. Litigation is just more lucrative. It's easier to bill a ton of hours on a litigation project, clients aren't as cost-sensitive as with prosecution, and it's "real lawyer work." So if you want to be a highly paid partner, I still think lit is the way to go. But considering everything I would hedge a bit and do all I can to acquire some USPTO experience.