Patent Agent in Law School --> Patent Litigation? Forum

[Anonymous User]

Hi all,

I'm a 3LE at one of GULC/GW/GMU evening programs that is also a registered Patent Agent at a large IP-only firm (Finnegan/Fish/Kenyon, etc.). Thinking about whether I should (1) consider doing litigation after law school, and (2) if so, if at my current firm or at a GP firm. I believe that my firm's patent and litigation practices are both highly regarded, and that salaries are comparable to GP firm (we start at market).

For background, I've been with my firm for about 4 years now. While I have done a lot of prosecution, I've also worked on a bunch of post-grant litigation (IPRs, PGRs, etc.) that are often tangential to litigation. I'd say my work here is fairly substantive - I regularly manage clients, prepare patent applications/OA responses without much partner oversight, and get tasked with pretty interesting projects. In short, I've loved working both in prosecution, and at the current firm. My law school grades are good (but not great) (~top 25%).

I generally understand the difference between work-life balance between prosecution and litigation (e.g., hours, regularity of work, etc.). I guess what I'm more interested to hear is the long-term benefits of (1) doing prosecution vs. litigation after law school, (2) going to GP firm after law school rather than staying at my current firm, (3) the option with the greatest salary prospects.

The current impression I seem to get, at least at my firm, is that attention to litigation matters trump attention to prosecution matters because more is on the line for the client. This seems to be reflected within the culture within my present firm where the litigating partners are often commended more for their skills, whereas prosecuting partners do not receive the same. I've also felt like law school classmates project this notion (perhaps because patent litigation jobs are similar to other types of non-IP recruitment). Often times, I wonder if the industry's perception of prosecution, given the lower costs and profit margins and the ability to practice w/o a law degree, results in a disconnect between practitioners in the field where litigators are held to higher esteem than prosecutors. Would this be a superficial reason to switch after finishing law school?

Thoughts?

[Anonymous User]

(1) consider doing litigation after law school,

At this point I think you should have a pretty solid grasp on the differences between pros and lit based no your experience. If not, you should be talking to people at the firm to understand it. Now is the time to make the change or attempt to straddle the line, 3 years down the road it will be much harder to do with your higher billable rate. Pros vs. Lit comes down to what you want to do, your experience as an agent will help you tremendously in either, so I don't see any current hurdles to choosing either path at this point in your career.

(2) if so, if at my current firm or at a GP firm.

Unless you are unhappy, I would stay at your current firm mostly because the opportunity to jump ship was really during OCI's and through the summer program. While anything is possible, you'll have better options a few years down the road as opposed to trying to move now.

As far as boutique vs. GP firm, that again comes down to what interests you, and the general practices at the boutiques and GPs your comparing. Some firms you'll get a lot of cross-selling, and with that comes the opportunity to do more diligence and work with corporate guys, or work in a wider array of IP litigation matters (getting involved with things like trade secrets and trademarks).

the long-term benefits of (1) doing prosecution vs. litigation after law school,

long-term? it all depends on where you want to end up. Partner? In-house? Retired early? Generally, pros will have slightly better exit options than lit. As you've eluded to, pros vs. lit is a much different experience in terms of your overall work-life balance as well as the substantive work you want to do. Pros can tend to become challenging as you get older, the work remains the same, but your billable rate gets very high and its hard to be efficient enough to stay within budgets that are just getting tighter these days. Being a long-term pros guy can be challenging from a firm finance perspective down the road, and may lead to insecurity in that regard if you're not a partner track type rain maker by that point.

(2) going to GP firm after law school rather than staying at my current firm,

GP firms may have better exit options than boutiques because of a wider client base, but thats probably not significant. In my experience you'll have a more diverse group of peers, and will get exposed to a wider area of the law, so those are a plus. The big boutiques though tend to carry a bit more preftiege.

(3) the option with the greatest salary prospects.

Most large firm major markets are going to pay the same for pros and lit. Both will give you the "IP bump" if applicable. Pros will run in to billable pressure a lot sooner than litigation because those lit dollars just keep coming. But like I said earlier, in house options are probably slightly better for a well versed pros guy who has been doing deal and diligence work. It all depends on what you want to do, both now, and long term.

[Anonymous User]

The current impression I seem to get, at least at my firm, is that attention to litigation matters trump attention to prosecution matters because more is on the line for the client. This seems to be reflected within the culture within my present firm where the litigating partners are often commended more for their skills, whereas prosecuting partners do not receive the same. I've also felt like law school classmates project this notion

Same anon as above, just adding to this.

This is at least a byproduct of the nature of lit vs pros work. Lit is very feast or famine. Pros is slow and steady. As such they inherently aren't going to have the same feel. Yes, lit cases usually have large budgets because of what is at risk, however that does not mean the partners are making more money. Some of the highest earning partners where I have worked have been pros guys that have fat, reliable books in technology areas they know well (and thus they, and their associates/agents, can work efficiently).

[h2go]

As the other poster mentioned, it really depends what your long term prospects are. The minor bump in perceived prestige is not really a good reason to switch if you like what you are doing now.

[Anonymous User]

(1) consider doing litigation after law school,

At this point I think you should have a pretty solid grasp on the differences between pros and lit based no your experience. If not, you should be talking to people at the firm to understand it. Now is the time to make the change or attempt to straddle the line, 3 years down the road it will be much harder to do with your higher billable rate. Pros vs. Lit comes down to what you want to do, your experience as an agent will help you tremendously in either, so I don't see any current hurdles to choosing either path at this point in your career.

(2) if so, if at my current firm or at a GP firm.

Unless you are unhappy, I would stay at your current firm mostly because the opportunity to jump ship was really during OCI's and through the summer program. While anything is possible, you'll have better options a few years down the road as opposed to trying to move now.

As far as boutique vs. GP firm, that again comes down to what interests you, and the general practices at the boutiques and GPs your comparing. Some firms you'll get a lot of cross-selling, and with that comes the opportunity to do more diligence and work with corporate guys, or work in a wider array of IP litigation matters (getting involved with things like trade secrets and trademarks).

the long-term benefits of (1) doing prosecution vs. litigation after law school,

long-term? it all depends on where you want to end up. Partner? In-house? Retired early? Generally, pros will have slightly better exit options than lit. As you've eluded to, pros vs. lit is a much different experience in terms of your overall work-life balance as well as the substantive work you want to do. Pros can tend to become challenging as you get older, the work remains the same, but your billable rate gets very high and its hard to be efficient enough to stay within budgets that are just getting tighter these days. Being a long-term pros guy can be challenging from a firm finance perspective down the road, and may lead to insecurity in that regard if you're not a partner track type rain maker by that point.

(2) going to GP firm after law school rather than staying at my current firm,

GP firms may have better exit options than boutiques because of a wider client base, but thats probably not significant. In my experience you'll have a more diverse group of peers, and will get exposed to a wider area of the law, so those are a plus. The big boutiques though tend to carry a bit more preftiege.

(3) the option with the greatest salary prospects.

Most large firm major markets are going to pay the same for pros and lit. Both will give you the "IP bump" if applicable. Pros will run in to billable pressure a lot sooner than litigation because those lit dollars just keep coming. But like I said earlier, in house options are probably slightly better for a well versed pros guy who has been doing deal and diligence work. It all depends on what you want to do, both now, and long term.

+1 to everything here. It almost exactly matches my intuition as someone who worked as a patent agent for a GP firm for several years.

[Anonymous User]

OP here, thanks for all the feedback! Just to clarify, I can still do OCI (I have 2 years remaining), and it seems like perhaps I give it a try and see how things fair there.

With respect to long-term prospects, I'm interested in making partner (even as unrealistic as it may be). My understanding is that the requirements to make partner at a GP firm are extremely unfavorable given the size, politics, and requisite business to pull in, but that large boutiques are a bit easier because some have two-tiered partnership models and lower requirements to bring in business (e.g., for prosecution, some partners just manage large clients and supervise juniors and bring in smaller clients on the side). Would this be sufficient to choose my current firm over a GP firm? My understanding is that it's always possible to lateral from a GP firm to a large boutique as well.

[Anonymous User]

OP here, thanks for all the feedback! Just to clarify, I can still do OCI (I have 2 years remaining), and it seems like perhaps I give it a try and see how things fair there.

With respect to long-term prospects, I'm interested in making partner (even as unrealistic as it may be). My understanding is that the requirements to make partner at a GP firm are extremely unfavorable given the size, politics, and requisite business to pull in, but that large boutiques are a bit easier because some have two-tiered partnership models and lower requirements to bring in business (e.g., for prosecution, some partners just manage large clients and supervise juniors and bring in smaller clients on the side). Would this be sufficient to choose my current firm over a GP firm? My understanding is that it's always possible to lateral from a GP firm to a large boutique as well.

[Anonymous User]

First/Second anon here.

I'm not sure that I would agree that, in general, making partner is any easier at a boutique than a GP firm. There are even IP practices at GP firms that are managed internally as micro-boutiques (because of how different the practice is) and, as such, already have a different partnership track, compensation/bonus schedule, etc from other practice groups.

I would say that this is far more of a firm to firm distinction than a GP vs boutique distinction with the caveat that if you're talking about small boutiques because then "partner" means something very different. As to two-tiered, most GP firms also have non-equity and equity tiers (sometimes even more than that). This is incredibly firm specific though. I would start by applying and seeing where you get offers (not interviews) and using incredibly specific criteria like this to choose between offers (not between places to apply).

[kcdc1]

There are firms where you can do a mix of district court litigation, post-grant lit, and prosecution. You could try summering at one of those firms and see if you like it. FWIW, I agree that prosecution is perceived as commoditized, and that this perception carriers certain negatives for attorneys who focus only in prosecution.