Biglaw V50 Practice Group Selection Help (IP v. Healthcare) Forum

[Anonymous User]

Hey Everyone,

I'm a 3L graduating this May with a Biglaw job lined up in a major market thankfully. Before law school, I got a doctorate degree in the hard sciences with a slight lean towards health and public policy (sorry for being vague - trying to keep myself anon). I worked briefly but decided on the law school track instead. During law school, I split my courses/experience between intellectual property and healthcare to keep both options on the table. I also passed the Patent Bar Exam.

My firm sent out an email last week asking us to choose our practice group preference. I have a stronger interest in and am better suited for intellectual property but I'm concerned about the outlook for the field. I'm worried that biotech prosecution and litigation have seen better days and the work is drying up. However, I know that having a hard science background gives me a huge advantage.

Healthcare, on the other hand, seems to have more opportunities in areas such as regulatory, fraud/abuse/white collar, or transactional work. Some of that work sounds extremely interesting, especially work related to FDA or fraud and abuse. However, I feel as though I lose the advantage of my additional degree by going into healthcare law. I also feel like I would have wasted years of my life getting the degree that I would no longer really use.

Any thoughts would be appreciated.

[QContinuum]

My firm sent out an email last week asking us to choose our practice group preference. I have a stronger interest in and am better suited for intellectual property but I'm concerned about the outlook for the field. I'm worried that biotech prosecution and litigation have seen better days and the work is drying up. However, I know that having a hard science background gives me a huge advantage.

Does your firm lump prosecution and litigation together? And does your firm not do IP transactional work at all?

Generally firms force IP folks to choose one of the three "branches." You're right to be concerned about prosecution's future, but both IP litigation and IP transactions are healthy practice areas (IP transactions is actually growing) and I don't think there's any particular reason to be concerned.

Healthcare, on the other hand, seems to have more opportunities in areas such as regulatory, fraud/abuse/white collar, or transactional work. Some of that work sounds extremely interesting, especially work related to FDA or fraud and abuse. However, I feel as though I lose the advantage of my additional degree by going into healthcare law. I also feel like I would have wasted years of my life getting the degree that I would no longer really use.

First, unless you do patent prosecution (which may not be the best idea, as stated above), you'd get limited if any use out of your Ph.D. even in IP.

Second, I don't think you'd entirely lose the advantage of your Ph.D. in healthcare. You state yourself that your degree included a "lean" toward health and public policy. I think you could certainly spin that to your advantage in regulatory work especially (less so in white collar, admittedly).

[Anonymous User]

Really appreciate your reply. Sorry, I'm new on the site and don't know how to do the quote thing correctly.

For the first part, yes. The firm lumps litigation, prosecution, and transactional work together. If I ended up choosing IP, I would be doing all three. I would even be doing some work on the biomedical engineering/chemical engineering side. Completely understand the issues with patent prosecution in Biglaw but I'm worried about the litigation side due to AIA changes, namely IPR, which I understand is causing a noticeable decrease in the amount of litigation going to district court. Is that incorrect?

I'm also worried about the post-Alice world with respect to biotech patents and the ability for biotech companies to get patents on inventions related to life sciences. If Alice (and subsequent Fed. Cir./SCOTUS decisions) make it harder for life science inventions to be patent-eligible, wouldn't there be less biotech work to go around? Or is that completely wrong?

For the second part, I see what you're saying. It just seems like overkill having spent five years to get a degree and doing the same work as someone who did a healthcare law journal in law school. Not to put that person down - it just feels like the degree was a waste and doesn't give me any real advantage as it would in IP.

[jhett]

Completely understand the issues with patent prosecution in Biglaw but I'm worried about the litigation side due to AIA changes, namely IPR, which I understand is causing a noticeable decrease in the amount of litigation going to district court. Is that incorrect?

IPRs have not replaced litigation, but have complemented it. Now, defendants usually stay litigations and file IPRs to try and kill the patents-in-suit. IP litigation numbers are in flux, but I don't think it's in a death spiral.

I'm also worried about the post-Alice world with respect to biotech patents and the ability for biotech companies to get patents on inventions related to life sciences. If Alice (and subsequent Fed. Cir./SCOTUS decisions) make it harder for life science inventions to be patent-eligible, wouldn't there be less biotech work to go around? Or is that completely wrong?

Alice does not significantly hinder biotech/pharma patents. It has a larger effect on software and business method patents. I work in a city with a big biotech/pharma scene and that kind of IP is still going gangbusters.

For the second part, I see what you're saying. It just seems like overkill having spent five years to get a degree and doing the same work as someone who did a healthcare law journal in law school. Not to put that person down - it just feels like the degree was a waste and doesn't give me any real advantage as it would in IP.

This is a sunk cost fallacy. It's not like you can rewind your life to get back the 5-7 years, so the feeling that you "wasted" your time by going into healthcare is irrelevant to this decision. The main factors to think about are (a) your interests, and (b) the health and future of each practice group, both in general and at your particular firm.

When I was at my first biglaw firm, I split between IP and healthcare (even though I did not have any education or experience in the healthcare industry, I'm an EE major). I ultimately chose IP because I had more interest in it, but I thought healthcare was a fascinating field and had lots of opportunities for career growth (more people I know in the healthcare group became partners than on the IP side). Healthcare is a consistent industry, and the tendency of the executive and legislative branches to constantly screw around with healthcare legislation means a steady stream of complex work.

[gogu]

With your PhD, a good option would be doing patent prosecution and litigation for 2-3 years and then lateraling to a firm that does a lot of IPR work in your technical area.

[Anonymous User]

OP here. Thanks for the insight. I see your point about the sunk cost fallacy, but part of that train of thought is job security. If I have a doctorate, it keeps me secure in IP rather than healthcare. I see your point though.

Does anyone have any input on long-term options? In house counsel, partnership, government jobs. Is there one of the two fields that has a better outlook in general?

Thanks.

[Anonymous User]

I'm also worried about the post-Alice world with respect to biotech patents and the ability for biotech companies to get patents on inventions related to life sciences. If Alice (and subsequent Fed. Cir./SCOTUS decisions) make it harder for life science inventions to be patent-eligible, wouldn't there be less biotech work to go around? Or is that completely wrong?

Alice does not significantly hinder biotech/pharma patents. It has a larger effect on software and business method patents. I work in a city with a big biotech/pharma scene and that kind of IP is still going gangbusters.

Alice affirmed the Mayo 2-step eligibility test for patent subject matter eligibility. Although Alice dealt with something other than pharma/biotech, the Mayo test is often referred to as the Mayo/Alice test. The courts go through the Mayo/Alice test to determine if a biotech/pharma patent is "directed" to patent ineligible subject matter including a natural law. The Fed. Circ. has been especially harsh on diagnostic patents, but recently provided some optimism for method of treatment claims when it determined them not "directed" to a natural law under Mayo step 1. The USPTO put out guidance after that case that directs examiners to find method of treatment claims patent eligible under Mayo step 1. The recent case, Vanda, is currently pending cert at the Supreme Court. I expect the Supreme Court to take it up but not to clarify §101 but merely to remand back to the Fed. Circ. to reevaluate whether the method of treatment claim is "directed" at a natural law under Mayo Step 1.

OP - getting patents is possible but it largely comes down to better drafting. Also, Congress has been holding meetings to fix this §101 issue. I think you mentioned something about IPRs, my company is often involved in court litigation AND IPRs on the same patents so IPRs have actually increased some of the spending but they can lead to a quicker outcome.

[Anonymous User]

. Completely understand the issues with patent prosecution in Biglaw but I'm worried about the litigation side due to AIA changes, namely IPR, which I understand is causing a noticeable decrease in the amount of litigation going to district court. Is that incorrect?

There might be a decrease in the amount of litigation going to disctrict court, but there is a substantial increase in the amount of proceedings (IPRs/PGRs) in front of the PTAB. If anything, that slightly helps you since you need to be patent bar eligible (STEM degree) and pass the patent bar to argue in front of the PTAB (*although pro hac vice petitions are usually granted to experienced non-patent barred litigators). It also introduces substantially more strategy, since there may be estoppel concerns and overlapping strategies when there are parallel IPR and district court litigation. Overall, the AIA was likely a big win for law firms.

I'm also worried about the post-Alice world with respect to biotech patents and the ability for biotech companies to get patents on inventions related to life sciences. If Alice (and subsequent Fed. Cir./SCOTUS decisions) make it harder for life science inventions to be patent-eligible, wouldn't there be less biotech work to go around? Or is that completely wrong?

Making patents harder to get just means patent drafting becomes *more* important, i.e. high quality patent work will be more valued (and high costs for prosecution more justifiable). A lot would have to happen before biotech companies actually stop trying to patent their work. We are nowhere near that.