Lateraling from general lit to IP

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Lateraling from general lit to IP

Post by Anonymous User » Thu Apr 08, 2021 4:23 pm

I’m a second year associate in my V20 firm’s litigation group in a major market. My goal is to go in house, which I recognize is very hard to do as a general litigator.

I’ve been thinking about lateraling to another firm to focus on soft IP (trademarks and copyright). My hope is that I can develop subject matter expertise to make me marketable for an in house job in a few years, because I don’t see that happening in my current group. Unfortunately, I don’t have anything on my resume that shows any interest in IP (liberal arts degree, didn’t take IP classes or join clubs in law school, etc.), but from conversations I’ve had I think I would enjoy the work. My ideal outcome is to work for a tech or media company.

A couple of questions:
1) How hard is to make a jump like this? Any tips on how to sell to firms that I want to make a career pivot?

2) How much better will my exit options be if I joined an IP group? I know IP/tech transactions provides even more in house opportunities, but I don’t think I’m looking for a complete retool like that.

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Re: Lateraling from general lit to IP

Post by Anonymous User » Fri Apr 09, 2021 5:19 pm

First, be really really careful with the word "IP" as it relates to searching for a job around trademarks and copyright. Are they IP? Yes. Do most biglaw firms have the same people doing (non-software) copyright and trademark that they have doing patent stuff? Not in my experience. Also don't call it "soft IP" - trademark and copyright folks hate that. If you see a group that's called "IP litigation," at most firms that means patent litigation (and maybe some other technical focused litigation). Does that mean that they won't confusingly list people who do other IP on that page? Of course not - there are still rankings that rank "IP" groups at firms, so you gotta play the game.

Second, straight up trademark and copyright jobs aren't super easy to come by. Prosecution related work on the trademark side requires lower billing rates so you age out quickly. Trademark is a practice group most firms have to provide extra services to clients, not to make money. Litigation cases aren't always plentiful enough to keep people fully occupied, so often they end up in general lit groups and some trademark people get pulled in. That said, there isn't any particular background trademark/copyright groups are really looking for, so liberal arts is not any kind of issue. There is basically no connection between technology and that work. You're junior enough to retool at this stage, but you'd need to have a compelling reason you find trademark/copyright work fascinating.

Third, while I'm not sure if there will be more exit options, if you can get a gig as in house trademark counsel, it seems like pretty much the easiest chillest job in the big company world. (Note - I don't do this work but I know plenty of people who do and they seem inordinately happy, particularly in comparison to their general and patent litigation colleagues. I think in house patent prosecutors are happy too, but that requires a tech degree.) And it's not a bad path to in house because more big companies are trying to bring a lot of that work in house in general. Note that continuing to do some litigation makes you an attractive candidate for a slightly smaller company due to having skills beyond just regular litigation and skills beyond just trademark prosecution.

Ultimately - reframe this question as looking for either a trademark/copyright group or a litigation group with a lot of trademark/copyright work, not an "IP group." Develop a compelling story about what you like about this kind of work. Talk to a recruiter about your chances. And don't ever, ever use the phrase "soft IP" or say "I wasn't sure I could do IP because I don't have a tech background."

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Re: Lateraling from general lit to IP

Post by justanotherlurker » Mon Apr 12, 2021 10:41 am

All of the advice in the first Anon response is excellent.

If the goal is in-house, spend a few hours looking into identifying the specific job you want, and what the requirements are.

For example, I think you are going to find only a small handful of dedicated in-house CR/TM litigation jobs. At tech companies, the "IP Litigation" group is generally very focused on patents, with very few CR/TM/TS cases. Perhaps media companies have dedicated CR/TM litigators, but my guess is that they're mostly general litigators who spent time doing CR/TM cases.

If you want to do in-house CR/TM, there are MANY more jobs in the corporate side of things, and you'd reach your goal much more quickly and easily completely retooling into a tech/IP transactions position. After 2-3 years of that, you'd be very marketable for in-house positions - for licensing, acquisitions, product counsel jobs, etc.

But if litigation is your goal, your best bet is to find a firm that has a strong CR/TM practice and has the kinds of clients that you want to end up working for. Firms that come to mind in NY are Kirkland, Debevoise, Davis Wright, Fross Zelnick, Frankfurt Kurnit. You'll probably want to apply for specific CR/TM litigation openings in these groups, as they may or may not be insulated from the rest of the general litigation or IP Lit groups.

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Re: Lateraling from general lit to IP

Post by jotarokujo » Mon Apr 12, 2021 11:53 am

what about general lit to normal IP lit (aka mostly patent lit)? my understanding is that ip lit is generally more competitive than general lit, but less than appellate lit, for example. that's just the impression i got at OCI though

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Re: Lateraling from general lit to IP

Post by Anonymous User » Mon Apr 12, 2021 1:24 pm

jotarokujo wrote:
Mon Apr 12, 2021 11:53 am
what about general lit to normal IP lit (aka mostly patent lit)? my understanding is that ip lit is generally more competitive than general lit, but less than appellate lit, for example. that's just the impression i got at OCI though
Patent litigator here. I guess I can only speak to my firm, but if you didn't even take IP courses in law school and have zero technical background, I cannot imagine anyone is going to be interested in hiring you as a junior lateral to take up patent litigation. You don't technically need to be able to sit for the patent bar to do it, but with IPRs being so important (for the moment at least) I cannot imagine a firm wanting to deal with a junior associate who couldn't.

If you are talking more generally and not just about the OP, I still couldn't really see this being a thing other than very specific circumstances. If you had some specific experience, like working on non-IP ITC investigations, maybe. Or you are just a really good senior litigator, but by that point you are sort of defining your own practice based on what clients will let you do, so that is a different question. But in general, unless you had the technical background to do patent lit in the first place and just chose not to, I am not sure its realistic to look to lateral to do it now.

justanotherlurker

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Re: Lateraling from general lit to IP

Post by justanotherlurker » Mon Apr 12, 2021 11:37 pm

jotarokujo wrote:
Mon Apr 12, 2021 11:53 am
what about general lit to normal IP lit (aka mostly patent lit)? my understanding is that ip lit is generally more competitive than general lit, but less than appellate lit, for example. that's just the impression i got at OCI though
I don’t think it’s a matter of competitiveness; it’s just different criteria.

Assuming your firm has a patent lit group, my recommendation would be to try to take on some of those cases. I’ve worked on patent cases with non-patent litigators, and there’s lots they can do without too much extra training.

I’m not as pessimistic as the poster directly above me, but I agree it would be an uphill climb to lateral to a new firm as a brand new patent litigator with no experience or background. There would just be a lot of learning you’d need to do on the law and procedures.

And there’s the question of technical background. I’m a patent litigator with no technical training and am not eligible for the patent bar. There are probably some firms that wouldn’t hire me as a result, though many of the top IP firms have non-technical IP litigators.

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