DC Patent Market? Forum

[Anonymous User]

I am considering in latering to DC. Can anyone shine some light on the patent market there? Developing a client base? Chances for in-house ? How is the market effected there when there is a recession?

I would be looking to do a mixture of litigation and prosecution, or mostly prosecution.

[jhett]

The patent market in DC is a little odd. There are GP firms that do IP lit and appellate work (e.g., Wilmer, Sidley), big IP boutiques that do both litigation and prosecution (e.g., Fish, Finnegan, Sterne Kessler), and a lot of smaller IP boutiques. Many of the smaller IP shops are basically prosecution mills that churn through office actions for foreign clients - so not a place you'd want to lateral to.

Developing clients and moving in-house are actually pretty tough things to do. There actually aren't that many companies in the area that have large IP portfolios, so there aren't many opportunities to snag them as clients, and not many openings for in-house roles. When an in-house position does pop up, the competition is fierce. Many companies in the area are government contractors and don't focus on IP, so most of the clients for DC-based firms are not local. Also, the start-up scene is rather anemic. Can't speak about what happens in a recession.

I lived in DC for a while due to my spouse's job, and the IP job market was surprisingly disappointing considering it's the seat of the USPTO and the Fed Circuit. My advice is to go for the big-name firms only, and if you don't get them don't move.

[integralx2]

The patent market in DC is a little odd. There are GP firms that do IP lit and appellate work (e.g., Wilmer, Sidley), big IP boutiques that do both litigation and prosecution (e.g., Fish, Finnegan, Sterne Kessler), and a lot of smaller IP boutiques. Many of the smaller IP shops are basically prosecution mills that churn through office actions for foreign clients - so not a place you'd want to lateral to.

Developing clients and moving in-house are actually pretty tough things to do. There actually aren't that many companies in the area that have large IP portfolios, so there aren't many opportunities to snag them as clients, and not many openings for in-house roles. When an in-house position does pop up, the competition is fierce. Many companies in the area are government contractors and don't focus on IP, so most of the clients for DC-based firms are not local. Also, the start-up scene is rather anemic. Can't speak about what happens in a recession.

I lived in DC for a while due to my spouse's job, and the IP job market was surprisingly disappointing considering it's the seat of the USPTO and the Fed Circuit. My advice is to go for the big-name firms only, and if you don't get them don't move.

OP here. So basically stick to the big IP boutique that do litigation and prosecution firms. I do have a question as to how some firms get clients in DC if they don’t have any outside offices such as Sterne Kessler. Is it better to aim for a top IP boutique firm or a larger GP firm that does prosecution and litigation - long term career wise.

[Anonymous User]

Is it better to aim for a top IP boutique firm or a larger GP firm that does prosecution and litigation - long term career wise.

The advice I've gotten is to go with the strongest practice group in your tech area and, if applicable, desired market segment (brand v. generic pharma in my case). Regardless, the correct answer here will depend on your specific long-term career goals - boutiques might have better partnership outcomes, BigLaw might be better for going in-house, etc.

[jhett]

OP here. So basically stick to the big IP boutique that do litigation and prosecution firms. I do have a question as to how some firms get clients in DC if they don’t have any outside offices such as Sterne Kessler. Is it better to aim for a top IP boutique firm or a larger GP firm that does prosecution and litigation - long term career wise.

DC-only firms get clients through the usual ways - references/word of mouth, networking, attending conferences/trade fairs, writing articles, giving informational webcasts, etc. They are also willing to travel on their own dime to visit prospective clients.

You will definitely need to do litigation if you want to stick around the large IP boutiques and GP firms. It's hard to make prosecution work in a biglaw setting (even in large IP boutiques), especially as you get more senior. I know many of the firms try to push you into litigation or transactional work as your billing rate increases. DC is littered with small prosecution boutiques started by former biglaw senior associates or partners that wanted to continue doing prosecution but were discouraged from doing so at their firms.

When looking at the top firms, there is no set rule regarding whether to go to a boutique or a GP firm. Depends on the type of work they have, their culture and your fit with that culture, what you're looking for, pay, etc.

[Anonymous User]

I'm a patent pros. associate at a V100 firm with a CS undergrad. I will say that if your background is in Electrical Engineering/Computer Engineering/Computer Science, there are definitely firms with more prosecution work than they are staffed for right now. I know my firm is/was hiring people straight out of undergrad who were interested in patent law with the understanding that they would take the patent bar soon, and they had the option of going to law school part-time to eventually get on the associate track, assuming they are good at the work. Talking to friends at comparable firms with a big D.C. presence, this is not unique to our firm (at least with the shortage of EE/CompE/CS people, not necessarily with the desire to hire people earlier).

ETA: I am a junior associate so I wasn't even in law school during the recession, but talking to more senior associates and partners, my understanding is that patent prosecution weathered the storm better than most practice areas. We've occasionally had people go in-house, but you can't really control if and when those opportunities come up.

[Anonymous User]

I'm a patent pros. associate at a V100 firm with a CS undergrad. I will say that if your background is in Electrical Engineering/Computer Engineering/Computer Science, there are definitely firms with more prosecution work than they are staffed for right now. I know my firm is/was hiring people straight out of undergrad who were interested in patent law with the understanding that they would take the patent bar soon, and they had the option of going to law school part-time to eventually get on the associate track, assuming they are good at the work. Talking to friends at comparable firms with a big D.C. presence, this is not unique to our firm (at least with the shortage of EE/CompE/CS people, not necessarily with the desire to hire people earlier).

ETA: I am a junior associate so I wasn't even in law school during the recession, but talking to more senior associates and partners, my understanding is that patent prosecution weathered the storm better than most practice areas. We've occasionally had people go in-house, but you can't really control if and when those opportunities come up.

OP here. I do have a degree in EE. Do large IP boutiques pay on par with V100 firms in the area? Bonus structure? I was looking to do prosecution but also board work such as IPRs, assuming the Supreme Court doesn’t axe it.

[Anonymous User]

OP here. I do have a degree in EE. Do large IP boutiques pay on par with V100 firms in the area? Bonus structure? I was looking to do prosecution but also board work such as IPRs, assuming the Supreme Court doesn’t axe it.

Well, some large IP boutiques are also V100 firms (Fish and Finnegan are both V100 firms based out of DC, for example), so yes, compensation isn't an issue if you're at a large IP boutique in DC. I honestly don't know how the bonus structures are, comparatively speaking, with other firms. My firm's bonuses sizes vary greatly, usually based on realization and other factors in addition to billable hours.

As for IPRs, a lot of firms have pros. attorneys work on them. Lead counsel has to be someone who's passed the patent bar in an IPR, so there's sometimes a pros. attorney that is listed as lead counsel even if a lit. attorney ends up presenting the case (some firms require their patent litigators to be patent bar'd, but most don't). It's definitely something you can ask about if you're interviewing with any of the big IP firms.

You'll also have the opportunity to handle administrative appeals to the PTAB when appealing examiner decisions as a prosecutor, so there's that too.