Going from in-house back to a firm to change practice groups Forum

[Anonymous User]

I am an in-house patent attorney (about 2 years experience). My responsibilities thus far have been the same as my responsibilities when I was at a firm: patent prep/pros. I went in house because the legal department of the company I joined was structured in a way that would have allowed me to transition from patent prosecution into IP/tech transactions. And my long-term goal is to be more of a general in-house IP attorney that handles patents, trademarks, transactions, etc., as opposed to one who focuses solely on patents and portfolio management.

However, our department recently went through a big restructuring, and now it looks like that transition will no longer be an option and there is a decent possibility that there may be layoffs in the future. Now I'm contemplating going back to a firm to transition to IP/tech transactions. I've looked at a few other in-house opportunities, but they all seem to focus mostly on patent prep/pros and portfolio management.

Do you think it is possible to change practice groups this way? If so, does anyone have any suggestions for applying to firms? I was thinking of targeting patent prosecution positions at firms that allow their associates to do a mix of IP work. I have a feeling I won't have any luck with applying to straight up IP/tech transactions postings since they are going to want someone who can come in and hit the ground running.

[Anonymous User]

Bump

As I feared, some layoffs in our group just happened. I survived this time but I suspect that there will be more in the near future. Anybody have any input on this?

[jhett]

Do you work with outside patent counsel who also do tech trans, or do they work at a firm where you could do both pros and tech trans? That might be a good place to start. Hit up people in your network too.

[Anonymous User]

I know Baker Botts' IP group makes a point to train their patent associates in a balance of pros, lit, and trans work.

[Anonymous User]

Not sure about a total change in practice groups. However, I went from a regional biglaw firm where I was splitting my time in corporate and tech trans to a full time tech trans position.

Not sure if it can be done going from inhouse..... I would try to get some more tech trans experience in-house and try to sell that.

There are a ton of corporate counsel related inhouse positions that you would probably qualify for.

[Anonymous User]

Do you work with outside patent counsel who also do tech trans, or do they work at a firm where you could do both pros and tech trans? That might be a good place to start. Hit up people in your network too.

OP here. That's actually a pretty good idea. Unfortunately, since we pay bottom-dollar for outside prep/pros, we tend to only work with very small firms (sometimes solo practitioners) that do only patent work.

[Anonymous User]

There are a ton of corporate counsel related inhouse positions that you would probably qualify for.

OP here. Are you talking non-IP related corporate counsel roles? I'm interested but how would I qualify for those?