(IP) Not getting enough work at firm... Forum

[Jackoose]

Can anyone comment on the ramifications of this and if I should think about moving.

This is patent drafting and prosecution in biglaw (I'm an Agent, for those not in patent law a patent agent does the same prep/prosecution work as an attorney but just took the patent bar and never went to law school, they are treated like an attorney in most respects day to day, but have lower billable requirements and cannot climb the ladder to partnership). I'm 3 years into prosecution work and worked at two different firms.

I still get work from almost all of the partners or senior counsel I've worked for. I have gotten praise for the quality of the work. It just is not enough work to meet my billables. I've also been told by senior ppl and partners that its normal to not make your billables during your first year at a firm. I am very happy at this firm as far as they way I'm treated, the teamwork, and my colleagues. The hours issue is the only thing that concerns me.

Getting work/meeting billables was not a problem at my old firm. I'm concerned about never having enough work in several respects. Not developing my experience and it just looking bad even though everyone says it's ok. Not meeting billables is a good excuse to fire someone if the firm needs to drop personnel.

Can anyone comment on this situation? Is moving something to consider?

[jhett]

It's tough to do patent prosecution at a biglaw firm because your billing rates, even as a patent agent, are higher than smaller IP boutiques. And this will only be exacerbated as the firm keeps raising the billing rates year to year. It's hard for the partners to keep bringing in business when the clients compare their billing rates with those of smaller competitors. See Ropes & Gray, which recently cut loose its entire prosecution practice because it couldn't be successful within a biglaw firm.

Talk to the other patent agents and patent attorneys in your firm - ask them if they also have difficulty meeting hours. Also figure out what happens to the patent agents/associates as they get more senior - do they hang around, switch practice groups, leave for other firms? Abnormal levels of attrition indicate that it's tough to remain a patent prosecutor at your firm. Lastly, look at whether you usually run under or over budget on your matters. If you are running over and you consider yourself fairly efficient, it's an indication that your rates are too high.

Taking into account all these factors, you should be able to see whether you need to jump ship.

[Jackoose]

It's tough to do patent prosecution at a biglaw firm because your billing rates, even as a patent agent, are higher than smaller IP boutiques. And this will only be exacerbated as the firm keeps raising the billing rates year to year. It's hard for the partners to keep bringing in business when the clients compare their billing rates with those of smaller competitors. See Ropes & Gray, which recently cut loose its entire prosecution practice because it couldn't be successful within a biglaw firm.

Talk to the other patent agents and patent attorneys in your firm - ask them if they also have difficulty meeting hours. Also figure out what happens to the patent agents/associates as they get more senior - do they hang around, switch practice groups, leave for other firms? Abnormal levels of attrition indicate that it's tough to remain a patent prosecutor at your firm. Lastly, look at whether you usually run under or over budget on your matters. If you are running over and you consider yourself fairly efficient, it's an indication that your rates are too high.

Taking into account all these factors, you should be able to see whether you need to jump ship.

Hours definitely don't seem to be abundant all around. There is a decent amount of attrition but also many people that have been here since being summer's and now are 7-10 years in, so I wouldn't call it abnormal.


I'm more worried about how it will look on my resume, that I keep switching firms after a year time. (this would be my second move after only being a at a firm for a year). My recruiter will tell me that its totally normal to switch every year (of course he would say that because he gets paid whenever people switch firms)

[jhett]

I'm more worried about how it will look on my resume, that I keep switching firms after a year time. (this would be my second move after only being a at a firm for a year). My recruiter will tell me that its totally normal to switch every year (of course he would say that because he gets paid whenever people switch firms)

It's not a big deal as long as you have a good explanation if you're asked about it in interviews. Something like "I am not getting the quantity/quality of work that allows me to develop as an attorney at my current firm, so I am seeking a firm with a strong and busy practice in XY technologies."

Also, as long as you are still in your current firm's good graces, there is no rush to jump ship. You can take your time to research other firms and see which ones are best for you. For example, if it takes about a year to land another lateral spot, you would have been with your current firm for two years and so it wouldn't look like you jumped ship quickly.

[Anonymous User]

I'm more worried about how it will look on my resume, that I keep switching firms after a year time. (this would be my second move after only being a at a firm for a year). My recruiter will tell me that its totally normal to switch every year (of course he would say that because he gets paid whenever people switch firms)

It's not a big deal as long as you have a good explanation if you're asked about it in interviews. Something like "I am not getting the quantity/quality of work that allows me to develop as an attorney at my current firm, so I am seeking a firm with a strong and busy practice in XY technologies."

Also, as long as you are still in your current firm's good graces, there is no rush to jump ship. You can take your time to research other firms and see which ones are best for you. For example, if it takes about a year to land another lateral spot, you would have been with your current firm for two years and so it wouldn't look like you jumped ship quickly.

I agree there is still lots of time to work things out at this stage.

Is in house work like this? Is the whole scenario where you really have to hustle to get the work that allows you to add your value, or is it just there for you to take and the only burden is showing that at you can produce quality in a timely manner, not that you can find the work and then produce quality in a timely manner?

i have seen many people go in house at the firms i've been at. I have assumed its because they want to work less. Lately I've been wondering if its not that and there is more to it.

[jhett]

I agree there is still lots of time to work things out at this stage.

Is in house work like this? Is the whole scenario where you really have to hustle to get the work that allows you to add your value, or is it just there for you to take and the only burden is showing that at you can produce quality in a timely manner, not that you can find the work and then produce quality in a timely manner?

i have seen many people go in house at the firms i've been at. I have assumed its because they want to work less. Lately I've been wondering if its not that and there is more to it.

I'm in-house doing patent prosecution. Working fewer hours is a big factor. There is also the factor of better control of the work I do (choosing what to do myself and what I send to outside counsel), getting more insights into the business and how that affects my work (e.g., knowing better how to amend claims because I know what direction the company's technology is going), expanding my practice (not just siloed doing pp, but involved in other legal issues as well), and managing outside counsel rather than being managed by outside counsel. There are downsides to being in-house, but there are usually far more upsides.

There is no need to hustle for work in-house. Unlike law firms, in-house lawyers are cost centers, not revenue generators (for the most part). That means legal departments usually don't over-hire and there is more than enough work to go around. It also means that we don't generate legal work just for the sake of working more hours - more legal work cuts into the company's profits. An in-house legal department is more successful if we can reduce legal costs.

For example, at a law firm you want to bill more hours by drafting more applications and responding to more office actions. This comes at the expense of a client's legal budget. In the in-house IP environment, we try to minimize costs by evaluating each piece of IP at drafting and prosecution to determine whether there is enough value to carry on or whether the matter should be dropped. Our value to the company does not come from time, but from the decisions we make.