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2018 grad. About a year in plus work at my firm during 2L summer and as a patent agent 3L. I do 95% patent prosecution and I’m worried my experience is going to be so narrow soon I won’t be able to market myself for anything else. My firm doesn’t really have patent people who do much litigation, licensing, etc type work.

Is this too early to start looking to lateral? My long term goal is in house as an IP counsel or something similar, and I don’t think I’ll get there just drafting patents. Any advice, anecdotes, etc?

Many prosecutors pick up transaction work. Doing prosecution + transactions makes it real easy to move in house once you are a mid-senior level person (if you want to move). There *are* in house positions for pure prosecutors, but they prefer people who are more well-rounded.

It's pretty natural at most firms that you will eventually start doing support for transaction/litigation/licensing deals. If your firm doesn't do that, there is no harm in looking around and try to keep your options open. I've known people to make a lateral jump after 3-4 years, there's no need to wait that long if it's not a good fit.

dvlthndr wrote:Many prosecutors pick up transaction work. Doing prosecution + transactions makes it real easy to move in house once you are a mid-senior level person (if you want to move). There *are* in house positions for pure prosecutors, but they prefer people who are more well-rounded.

It's pretty natural at most firms that you will eventually start doing support for transaction/litigation/licensing deals. If your firm doesn't do that, there is no harm in looking around and try to keep your options open. I've known people to make a lateral jump after 3-4 years, there's no need to wait that long if it's not a good fit.

Thanks for the perspective, that’s what I figured. My main concern is that looking at the partners and more senior associates here, the transactions/licensing isn’t really there. A little bit of involvement from our litigation group on occasion, but it doesn’t seem like a priority to anyone to get that experience and certainly not a priority to get me any experience on that side.

If you can't get litigation/transactional experience at your firm, you should probably lateral. I'm IP counsel in-house, with prosecution as my main practice, but that takes 50% of my time max. The rest is transactional and litigation. I know from interviewing at various places that most in-house departments want a mix of experience from their IP counsel.

jhett wrote:If you can't get litigation/transactional experience at your firm, you should probably lateral. I'm IP counsel in-house, with prosecution as my main practice, but that takes 50% of my time max. The rest is transactional and litigation. I know from interviewing at various places that most in-house departments want a mix of experience from their IP counsel.

That makes sense. The litigation opportunities really aren’t there at my firm until you’re close to the partner level. And there’s not much transactional IP work here to speak of.

It’s mostly churning out apps and responses, which has been good experience but after looking around at the more senior folks in my office I don’t see many other opportunities here coming around beyond getting more efficient at what I’m already doing. I’d really rather not have to jump ship so early but I guess if it’s not a good fit long term then it is what it is.