Patent litigation offer, no technical degree Forum

[Anonymous User]

So I got an offer at a firm that largely does patent litigation, with the understanding that I would also be doing largely patent litigation. I have a humanities degree. I like the people there and everything and I'm on the verge of accepting, but I have some niggling doubts/questions:

1. Would I be at a disadvantage - in terms of not only getting work, but also being able to do the work? I know the reasoning here is that they wouldn't have given me the offer unless they thought I could do it, but would the playing field be even enough for me to do as well as everyone else? Or would there be a strong limitation?

2. Would there be a ceiling in terms of how far I could progress in patent litigation, without the science background?

3. I really liked what I did of general litigation. Is patent litigation work similar to most litigation? Would I be able to transfer my skills to other types of litigation if it didn't work out?

4. What are exit options like for patent litigation, for in-house? Better or worse than corporate?

Would appreciate any answers.

[Anonymous User]

1. Yes you will be at a disadvantage. Without elaborating too much, these lawyers probably need you to do some routine briefs and motions while an engineer is analyzing the claims. The managing partners will simply make sure all is good and let the client know how things are moving along.

2. All indications point to patent litigation dying. All the recent legislative developments post-AIA are meant to diminish the need for litigation. This is why Fish as well as Finnegan have seen their revenues sink recently.

3. Certainly patent litigation, which hinges on the ability to prove infringement, is addressed by a different procedure than other forms of litigation. So you can get away without too much reference to the drawings during trial, but your credibility will still depend on your capacity to articulate specifications of the invention.

4. In-house would be your best bet or otherwise work for a patent assertion entity (aka patent-troll). Most boutiques rely on prosecution work which won't be accessible to you unless you are allowed to practice before the USPTO by passing the patent bar.

Hopefully this is valuable insight for you, OP.

I predict many critical responses to these loaded claims most likely due to their ominous (yet realistic) nature but I have no intention to address any.

[Anonymous User]

1. Yes you will be at a disadvantage. Without elaborating too much, these lawyers probably need you to do some routine briefs and motions while an engineer is analyzing the claims. The managing partners will simply make sure all is good and let the client know how things are moving along.

2. All indications point to patent litigation dying. All the recent legislative developments post-AIA are meant to diminish the need for litigation. This is why Fish as well as Finnegan have seen their revenues sink recently.

3. Certainly patent litigation, which hinges on the ability to prove infringement, is addressed by a different procedure than other forms of litigation. So you can get away without too much reference to the drawings during trial, but your credibility will still depend on your capacity to articulate specifications of the invention.

4. In-house would be your best bet or otherwise work for a patent assertion entity (aka patent-troll). Most boutiques rely on prosecution work which won't be accessible to you unless you are allowed to practice before the USPTO by passing the patent bar.

Hopefully this is valuable insight for you, OP.

I predict many critical responses to these loaded claims most likely due to their ominous (yet realistic) nature but I have no intention to address any.

Wow, this is kind of scary. It's also opposite of what two people in patent litigation (neutral 3rd parties) have said. I don't know what to think/believe.

[Desert Fox]

1. Yes you will be at a disadvantage. Without elaborating too much, these lawyers probably need you to do some routine briefs and motions while an engineer is analyzing the claims. The managing partners will simply make sure all is good and let the client know how things are moving along.

2. All indications point to patent litigation dying. All the recent legislative developments post-AIA are meant to diminish the need for litigation. This is why Fish as well as Finnegan have seen their revenues sink recently.

3. Certainly patent litigation, which hinges on the ability to prove infringement, is addressed by a different procedure than other forms of litigation. So you can get away without too much reference to the drawings during trial, but your credibility will still depend on your capacity to articulate specifications of the invention.

4. In-house would be your best bet or otherwise work for a patent assertion entity (aka patent-troll). Most boutiques rely on prosecution work which won't be accessible to you unless you are allowed to practice before the USPTO by passing the patent bar.

Hopefully this is valuable insight for you, OP.

I predict many critical responses to these loaded claims most likely due to their ominous (yet realistic) nature but I have no intention to address any.

The reason Fish and Finnegan are having trouble is the exactly the opposite. Their patent lit partners are sick and tired of subsidizing the less profitable prosecution partners, who just create a buttload of conflicts for the firms. So they left

IPR might decrease litigation some but the effect is not large yet.

[eng2law]

1. Yes you will be at a disadvantage. Without elaborating too much, these lawyers probably need you to do some routine briefs and motions while an engineer is analyzing the claims. The managing partners will simply make sure all is good and let the client know how things are moving along.

2. All indications point to patent litigation dying. All the recent legislative developments post-AIA are meant to diminish the need for litigation. This is why Fish as well as Finnegan have seen their revenues sink recently.

3. Certainly patent litigation, which hinges on the ability to prove infringement, is addressed by a different procedure than other forms of litigation. So you can get away without too much reference to the drawings during trial, but your credibility will still depend on your capacity to articulate specifications of the invention.

4. In-house would be your best bet or otherwise work for a patent assertion entity (aka patent-troll). Most boutiques rely on prosecution work which won't be accessible to you unless you are allowed to practice before the USPTO by passing the patent bar.

Hopefully this is valuable insight for you, OP.

I predict many critical responses to these loaded claims most likely due to their ominous (yet realistic) nature but I have no intention to address any.

Every single point in this response is inaccurate, but I have no intention to address any.

[84651846190]

Patent litigation is not "dying" but it certainly isn't the same as it was in the good ole days (but then again, neither are a lot of practices).

[Jchance]

Every single point in this response is inaccurate, but I have no intention to address any.

+1.

[patogordo]

Every single point in this response is inaccurate, but I have no intention to address any.

+1.

[Anonymous User]

Bump, any accurate info then?

[patogordo]

Plenty of non-technical people in patent lit, it's not much different from general lit, I wouldn't really worry about it unless you know something about your specific firm that I don't.

[Anonymous User]

I know this won't be what you want to hear, but the honest answer is that it's entirely firm (and maybe even office) dependent.

I'm an associate with Quinn, and here your situation wouldn't be a problem, but I've heard from friends at other firms that it can be a major problem career-wise. The best way to get answers is to look at the associate bios on the firm's website and contact someone with a similar background to your own.

Good luck.

[gk101]

I suspect IPRs will have a noticeable effect on patent litigation but most firms doing patent litigation now will just move in the IPR space. Lol at patent litigation dying. If anything, most big firms are trying to get rid of their prosecution practices because of the low profit margin and the high number of conflicts raised because of them.

[Anonymous User]

I suspect IPRs will have a noticeable effect on patent litigation but most firms doing patent litigation now will just move in the IPR space. Lol at patent litigation dying. If anything, most big firms are trying to get rid of their prosecution practices because of the low profit margin and the high number of conflicts raised because of them.

+1. And IPR usually demands the litigator to have certain technical degree in the field, so the litigator can pick up things very fast due to the audience and short span of IPR.

[gk101]

I suspect IPRs will have a noticeable effect on patent litigation but most firms doing patent litigation now will just move in the IPR space. Lol at patent litigation dying. If anything, most big firms are trying to get rid of their prosecution practices because of the low profit margin and the high number of conflicts raised because of them.

+1. And IPR usually demands the litigator to have certain technical degree in the field, so the litigator can pick up things very fast due to the audience and short span of IPR.

I sort of agree with what you are saying but I don't think patent litigation practice is in any danger of slowing down in the next few years. I think there will be an uptick in IPR filings trying to invalidate a lot of patents (because of SCOTUS decisions like Alice etc) while keeping the costs down relative to fighting in the courts. However, my understanding is that companies still prefer to litigate these patents outside of IPR-like proceedings for various reasons and I don't see that changing anytime soon.

It's advantageous to be an IP litigator with a technical background but that has always been the case and I don't think any of the post-AIA legislative developments indicate patent litigation dying

[patogordo]

I don't think IPR is hurting patent lit, it's mostly extra work atm. And you can pro hac anyway.

[Anonymous User]

District court litigation will continue to be the only option for most 101-related invalidity challenges, so long as the rules stay the same. 101 can't be a grounds for IPR, and PGR (where it can be a ground) is only available for claims filed after March 16, 2013. Anything before that, you'd still have to hash out through the district courts.

To the main question of the thread, as some have already said, the answer as usual is "it depends." There are litigations I've been involved with (I'm a third year who does have a tech background) that I absolutely could have handled with only a humanities degree. On the other hand, there are cases where I would have been immediately lost and would almost certainly have made a crippling mistake without my background knowledge to fall back on.

Sure, "you can learn." But you'd probably need to do so under huge time constraints. No one is going to pause the case so you can learn basics of small-molecule biochemistry before invalidity contentions are due.

[Desert Fox]

I don't think IPR is hurting patent lit, it's mostly extra work atm. And you can pro hac anyway.

I think it probably hurts a little. 50% of the time the case gets stayed and instead of going through discovery and non-infringement analysis, you just do streamlined claim construction and invalidity shit.

[patogordo]

I don't think IPR is hurting patent lit, it's mostly extra work atm. And you can pro hac anyway.

I think it probably hurts a little. 50% of the time the case gets stayed and instead of going through discovery and non-infringement analysis, you just do streamlined claim construction and invalidity shit.

I think long-term it basically goes back to normal. Unless IPR stays a death squad but I dunno. Either way it's not end of days

[Desert Fox]

I don't think IPR is hurting patent lit, it's mostly extra work atm. And you can pro hac anyway.

I think it probably hurts a little. 50% of the time the case gets stayed and instead of going through discovery and non-infringement analysis, you just do streamlined claim construction and invalidity shit.

I think long-term it basically goes back to normal. Unless IPR stays a death squad but I dunno. Either way it's not end of days

And it might create more work because low cost IPRs might be a better alternative than the TROLL TOLL.

[jbagelboy]

Patent lit is in no way a dying field. That's just ridiculous and shamefully bad market prediction. That being said, we're definitely seeing prosecution work marginalized or squeezed out of traditional "big law", since as DF mentioned its way less profitable and brings in fewer hours. But this isn't a concern for you since you can't get a reg number anyway.

I will say re: pt 2 that after having worked principally in patent lit this past summer (for whatever that's worth), I concluded one remains at a slight disadvantage for long term career development (building a book of IP clients & partnership) without a desirable degree -- that is, EE/CS or a PhD in biotech if your firm has a large bio sector client roster. Having a non-technical or less desirable technical degree won't be an obstacle, but ceteris paribus you won't advance as quickly. I noticed clients would start asking for associates with engineering backgrounds to staff their litigation teams. In IP, when you do a pitch, the attorneys list their names and qualifications, and many tech GCs will want to see a certain # or % of EEs on the team.

Closer contact with clients and desirability for staffing can impact you in several ways. For going in-house counsel in a few years (and some tech giants like HP or apple are growing their inhouse presence), you'll want to have worked closely with that client on numerous cases and demonstrated added value, which often requires being staffed on the pitch or shortly after. At large firms, partnership decisions will also depend on client relationships and how in demand you are - esp since this can effect your billables. Now this doesn't mean you'll be shitcanned as a second year with an english BA, but its food for thought down the line.

ETA: also, not an EE here and probably not going back to patent lit for related reasons

[Desert Fox]

While certainly many firms will let you do patent lit without a degree, many won't. I wonder how exit options into smaller firms or even other biglaw firms are affected by lack of a tech degree. I know my firm demands a tech degree and we aren't even considering anyone not a EE/CS because we have too many MechE. Not sure how common that is

[gk101]

I don't think IPR is hurting patent lit, it's mostly extra work atm. And you can pro hac anyway.

I think it probably hurts a little. 50% of the time the case gets stayed and instead of going through discovery and non-infringement analysis, you just do streamlined claim construction and invalidity shit.

I think long-term it basically goes back to normal. Unless IPR stays a death squad but I dunno. Either way it's not end of days

And it might create more work because low cost IPRs might be a better alternative than the TROLL TOLL.

basically this. I think IPRs will end up being additional work while having maybe a small effect on patent litigation

[Anonymous User]

OP here - thanks for all the info. This particular firm says that they like having at least some non-technical people on each project (paired with technical people) so that they're able to explain the concepts in a clear way to lay people. I've spoken to the non-technical patent litigation people and they seem to corroborate this, and also have said they don't feel like they're held back. I didn't know if this was just blowing up smoke, but it sounds like with the "it depends" answers here that it's not entirely impossible.

The firm also does general M&A and other transactional work, though that group is much smaller. If I did enough of it in the summer, they'd let me go into the corporate group instead - maybe this is preferable, given better exit options and limitations otherwise.