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Been working in patent pros for about 3 years now at a V100, and another year part time during LS (~30 hrs/wk, ABA be damned). My bg is EE.

Well, after putting in 2100, 2200, 2200, I'm getting a bit burned out. Has anyone had lateraled out of pros after a similar amount of exp? If so, what was your experience in doing so and what options did you have?

ptntprsctn wrote:Been working in patent pros for about 3 years now at a V100, and another year part time during LS (~30 hrs/wk, ABA be damned). My bg is EE.

Well, after putting in 2100, 2200, 2200, I'm getting a bit burned out. Has anyone had lateraled out of pros after a similar amount of exp? If so, what was your experience in doing so and what options did you have?

Yes, people lateral out of patent prosecution jobs to other patent pros-related jobs all the time.

With an EE background and three years of pros experience, you have more options than almost anyone else practicing law right now. There are quite literally hundreds of firms and companies looking for people with your experience. And no, this is not flame.

Biglaw_Associate_V20 wrote:

ptntprsctn wrote:Been working in patent pros for about 3 years now at a V100, and another year part time during LS (~30 hrs/wk, ABA be damned). My bg is EE.

Well, after putting in 2100, 2200, 2200, I'm getting a bit burned out. Has anyone had lateraled out of pros after a similar amount of exp? If so, what was your experience in doing so and what options did you have?

Yes, people lateral out of patent prosecution jobs to other patent pros-related jobs all the time.

With an EE background and three years of pros experience, you have more options than almost anyone else practicing law right now. There are quite literally hundreds of firms and companies looking for people with your experience. And no, this is not flame.

This is 100% accurate. Patent pros with EE background and 3 years experience is an incredible place to be. You should be able to move in-house (most likely a lot of app drafting) or just go to other firms with better hours and at some places, better pay as well.

Also those are some insane hours for patent pros. No wonder you are burned out.

Thank you both for your replies! It seems I should be a bit clearer as to what I'm asking.

While I realize the market is relatively favorable for someone in my position, the pros work is what is burning me out. Writing apps and responding to OAs can get tedious. I do a little diligence and litigation support as well, but the former is rare and the latter is simply a different variation of normal pros.

As a result, I'm making an effort to consider other options while I am at a marketable point my career. I wouldn't mind doing some pros going forward, but I would like to diversify and/or shift a bit if possible. In essence, my inquiry is directed more toward shifting practices (while likely staying within IP - say lit or tech transactions) rather than just finding a job with different hours/lifestyle.

Has anyone experienced or heard of anything along these lines?

ptntprsctn wrote:Thank you both for your replies! It seems I should be a bit clearer as to what I'm asking.

While I realize the market is relatively favorable for someone in my position, the pros work is what is burning me out. Writing apps and responding to OAs can get tedious. I do a little diligence and litigation support as well, but the former is rare and the latter is simply a different variation of normal pros.

As a result, I'm making an effort to consider other options while I am at a marketable point my career. I wouldn't mind doing some pros going forward, but I would like to diversify and/or shift a bit if possible. In essence, my inquiry is directed more toward shifting practices (while likely staying within IP - say lit or tech transactions) rather than just finding a job with different hours/lifestyle.

Has anyone experienced or heard of anything along these lines?

Bump

I would look in-house or at universities' tech transfer depts

ptntprsctn wrote:Thank you both for your replies! It seems I should be a bit clearer as to what I'm asking.

While I realize the market is relatively favorable for someone in my position, the pros work is what is burning me out. Writing apps and responding to OAs can get tedious. I do a little diligence and litigation support as well, but the former is rare and the latter is simply a different variation of normal pros.

As a result, I'm making an effort to consider other options while I am at a marketable point my career. I wouldn't mind doing some pros going forward, but I would like to diversify and/or shift a bit if possible. In essence, my inquiry is directed more toward shifting practices (while likely staying within IP - say lit or tech transactions) rather than just finding a job with different hours/lifestyle.

Has anyone experienced or heard of anything along these lines?

your best bet might be trying to switch into IPR work and maybe transition into litigation that way. From what I have seen, moving from pros to litigation or tech transaction is difficult. I know of one person who did this as a third year and gave up a year of seniority/pay bump because he really wanted litigation. Does your current firm do IPR/litigation work? A lot of times, your billing rates will rise to the point that you are not really profitable doing 100% pros and your firm will transition you to the lit group (if you are good that is)

moving in-house is another good option but they generally ask for 3-5 years of pros experience plus at least some background in licensing work

I don't think that it'd be too hard to segue into patent lit, if it is really just prosecution, and not law practice, that you're burnt out on. I don't know an immense amount about prosecution (aside from what I've reviewed in a few file wrappers), but it seems like someone doing that work would be pretty useful to have around for infringement/invalidity contentions at the very least, if not most of the process around that.

As far as less-than-strictly legal work, I would think you could start looking at in-house patent portfolio "management" (that's not the right word, but I can't think of the right title) jobs. I believe decent sized technology companies will often have patent counsel to oversee their IP protection programs and work. I assume this is a more senior function, but maybe big companies have teams handling this work - and if not, then there is still a track which leads you there (which is probably prosecution for a bit longer, but at least it's a plan).

As people say, and you acknowledge: you are in a pretty enviable position. Best of luck.

handsonthewheel wrote:I don't think that it'd be too hard to segue into patent lit, if it is really just prosecution, and not law practice, that you're burnt out on. I don't know an immense amount about prosecution (aside from what I've reviewed in a few file wrappers), but it seems like someone doing that work would be pretty useful to have around for infringement/invalidity contentions at the very least, if not most of the process around that.

As far as less-than-strictly legal work, I would think you could start looking at in-house patent portfolio "management" (that's not the right word, but I can't think of the right title) jobs. I believe decent sized technology companies will often have patent counsel to oversee their IP protection programs and work. I assume this is a more senior function, but maybe big companies have teams handling this work - and if not, then there is still a track which leads you there (which is probably prosecution for a bit longer, but at least it's a plan).

As people say, and you acknowledge: you are in a pretty enviable position. Best of luck.

I am fairly familiar with a lot of the IP firms in DC and Chicago and the bolded is just not true in my experience. Even though the pros experience might be beneficial to IP litigation, lateral hiring does not work that way. lateral hiring is mostly done based on immediate need and you'd have to be exceptionally talented for a IP lit group to hire someone they'd have to babysit for a while.

gk101 wrote:

handsonthewheel wrote:I don't think that it'd be too hard to segue into patent lit, if it is really just prosecution, and not law practice, that you're burnt out on. I don't know an immense amount about prosecution (aside from what I've reviewed in a few file wrappers), but it seems like someone doing that work would be pretty useful to have around for infringement/invalidity contentions at the very least, if not most of the process around that.

As far as less-than-strictly legal work, I would think you could start looking at in-house patent portfolio "management" (that's not the right word, but I can't think of the right title) jobs. I believe decent sized technology companies will often have patent counsel to oversee their IP protection programs and work. I assume this is a more senior function, but maybe big companies have teams handling this work - and if not, then there is still a track which leads you there (which is probably prosecution for a bit longer, but at least it's a plan).

As people say, and you acknowledge: you are in a pretty enviable position. Best of luck.

I am fairly familiar with a lot of the IP firms in DC and Chicago and the bolded is just not true in my experience. Even though the pros experience might be beneficial to IP litigation, lateral hiring does not work that way. lateral hiring is mostly done based on immediate need and you'd have to be exceptionally talented for a IP lit group to hire someone they'd have to babysit for a while.

I don't know what "fairly familiar with a lot of the IP firms in DC and Chicago" means, but I have first hand seen the opposite.