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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.

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?

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.

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

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.

jhett wrote: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 wrote: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?