Biglaw -> IP boutique -> In-house - taking Qs

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Biglaw -> IP boutique -> In-house - taking Qs

Postby Anonymous User » Mon Jan 16, 2017 11:35 am

Longtime member, infrequent poster. Slow day today, so thought I'd start this.

Spent several years in Biglaw (V25, I think), another couple years at an IP boutique (~20 attorneys), and then jumped in-house to a tech company a few months ago. My practice is mainly patent prosecution, with some IP litigation and transactions on the side.

Happy to answer questions about my experiences at each place, and transitions between jobs.

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Re: Biglaw -> IP boutique -> In-house - taking Qs

Postby Anonymous User » Mon Jan 16, 2017 11:54 am

Was the IP boutique a patent prosecution or a patent lit shop? If the latter, how did you make the move to in-house? Did you do patent prosecution while in biglaw? How do tech companies view patent lit attorneys?

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Re: Biglaw -> IP boutique -> In-house - taking Qs

Postby favabeansoup » Mon Jan 16, 2017 11:56 am

Anonymous User wrote:
Spent several years in Biglaw (V25, I think), another couple years at an IP boutique (~20 attorneys), and then jumped in-house to a tech company a few months ago.


Pay disparity between all three jobs?

Were all three in the same market?

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Re: Biglaw -> IP boutique -> In-house - taking Qs

Postby Anonymous User » Mon Jan 16, 2017 12:05 pm

I'd like to know your thoughts on how workplace culture and work life balance compares between the three.

I'd also be interested to know whether you had a technical background in CS and how much that facilitated your career. Or didn't.

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Re: Biglaw -> IP boutique -> In-house - taking Qs

Postby Anonymous User » Mon Jan 16, 2017 12:28 pm

Anonymous User wrote:Was the IP boutique a patent prosecution or a patent lit shop? If the latter, how did you make the move to in-house? Did you do patent prosecution while in biglaw? How do tech companies view patent lit attorneys?


The IP boutique was mainly a prosecution shop, but also did some patent/trademark litigation. I'd say the revenue split was about 75/25. I personally spent 90% of my time on prosecution. When interviewing for in-house, they were mostly concerned with my prosecution experience as they aren't involved in a lot of patent suits.

Yes, I did patent prosecution in biglaw. I'd say my time was about 50% pros, 25% lit, 25% transactions.

View of litigators depends on if the companies get sued a lot. It also depends on whether the position is for general IP or whether there are separate pros and lit positions. If it's a general IP position, they want litigators to also have experience in pros (e.g., have a USPTO reg number).

favabeansoup wrote:Pay disparity between all three jobs?

Were all three in the same market?


Biglaw was on $160k market rate while I was there. IP boutique was about 3/4 the pay of biglaw, but at 3/4 billable requirement (so, linearly scaled). In-house is higher than IP boutique but lower than biglaw (upper $100k's).

Biglaw and in-house were in the same market, IP boutique in different market. Both markets were large (but not NY).

Anonymous User wrote:I'd like to know your thoughts on how workplace culture and work life balance compares between the three.

I'd also be interested to know whether you had a technical background in CS and how much that facilitated your career. Or didn't.


Biglaw is biglaw, but my firm was actually rather pleasant to work for. Partners were respectful of my time and my workload, and they were always available for chats. I know this isn't always the case, so I felt pretty lucky.

The IP boutique was very flexible and allowed me to work from home a lot. The partners were very nice and mentored me. I loved the environment and it was a tough decision to leave.

In-house is busy or slow depending on what's happening, but at least I don't have to seek out work when it's slow. The legal department are great folks to work with, but the bureaucracy (it's a large multinational) is a pain to deal with. The company is still a bit old school and limits flex time, which is a drawback.

I am EE, not CS, but I know how to program. It's been of great help - I was put on a number of matters (pros and lit) at the law firms specifically because I had programming experience.

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Re: Biglaw -> IP boutique -> In-house - taking Qs

Postby givemesomehelp » Mon Jan 16, 2017 1:48 pm

Thanks for taking questions! I'm leaning toward pros. side if opportunity allows me, and there aren't that many people doing patent prosecution here...

How is the actual practice like, esp. prosecution? Does it require much legal knowledge you learn in law school? I'm in law school, just finished first semester, and am not really finding law interesting whatsoever. If I'm not having fun with law school right now, would you say it's likely I'll hate my job later when I get on in patent job? Or are they quite different that it'll likely be fine once I get past the mandatory 1L classes?

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Re: Biglaw -> IP boutique -> In-house - taking Qs

Postby Anonymous User » Mon Jan 16, 2017 2:45 pm

givemesomehelp wrote:Thanks for taking questions! I'm leaning toward pros. side if opportunity allows me, and there aren't that many people doing patent prosecution here...

How is the actual practice like, esp. prosecution? Does it require much legal knowledge you learn in law school? I'm in law school, just finished first semester, and am not really finding law interesting whatsoever. If I'm not having fun with law school right now, would you say it's likely I'll hate my job later when I get on in patent job? Or are they quite different that it'll likely be fine once I get past the mandatory 1L classes?


Patent prosecution does not require you to use a lot of the substantive knowledge you learn in 1L, but as in all aspects of law you will need to be good at the underlying skills - interpreting statutes, regulations, and case laws, critical analysis, legal writing, etc. On a day to day basis, I work with inventors (i.e., engineers) and help translate their inventions into patent applications. This requires a lot of analytical thinking (how do I describe this invention in a patent claim) and good writing skills to draft a well rounded application. I also respond to office actions from the USPTO arguing around prior art that they have cited against the applications. This requires problem solving and analytical skills (e.g., how do I argue that my patent claim is different from this piece of prior art), applying the most current patent case law (e.g., if I believe the patent examiner has not applied the law correctly), and also good writing skills to draft a compelling response. I also use interpersonal skills to draw information out from inventors (sometimes they don't tell you all the information you need to know), negotiation skills when I interview examiners, and some business sense now that I am in-house.

That said, some people think patent prosecution is interesting, and others think it's ridiculously boring/tedious. You won't know unless you try it yourself. I suggest you try to get to pros work experience in 1L summer if you can. You can also read some patents to get a taste of what the writing is like. Also, look up some patents on Public PAIR (USPTO document repository for publicly available patents and patent apps). Go through the file history (the image wrappers) to see the back and forth between the USPTO and the applicant (i.e., office actions and responses). Read through and see if you are interested in this type of work.

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Re: Biglaw -> IP boutique -> In-house - taking Qs

Postby Anonymous User » Mon Jan 16, 2017 3:18 pm

I'm about to start a prosecution gig. Background is CS/EE. My experience is summering at a boutique and have taken a prosecution course.

1. Is investing in any books/guides worth it to sharpen your skills (the PLI books cost a ridiculous amount of $$$) or should I just rely on the firm's training/mentoring?

2. Do you have any tips on prosecution efficiency? Since a lot of the job comes down to to the hour budgets.

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Re: Biglaw -> IP boutique -> In-house - taking Qs

Postby Anonymous User » Mon Jan 16, 2017 3:43 pm

Anonymous User wrote:I'm about to start a prosecution gig. Background is CS/EE. My experience is summering at a boutique and have taken a prosecution course.

1. Is investing in any books/guides worth it to sharpen your skills (the PLI books cost a ridiculous amount of $$$) or should I just rely on the firm's training/mentoring?

2. Do you have any tips on prosecution efficiency? Since a lot of the job comes down to to the hour budgets.


Not OP, but:

1) Don't spend money on books. Your firm is going to have to train you on how to do things their way, anyway, and if they think you need the extra training to keep up, they'll likely pay for the PLI/whatever.

2) Efficiency is going to get better as you understand how to do the job better (and understand what your supervisor is looking for). You'll develop shortcuts/etc. as you develop your own style, and as you get better at understanding your tech and patent law in general. There is no surefire way to ensure you stay on budget, but one rule of thumb is to keep persistent track of your hours worked so far, and if halfway through you think you're going to go over budget, tell your supervisor. Your supervisor can then decide for you whether or not he should go back and get a higher budget, or whether (s)he wants you to stay under budget, even if it results in a subpar product. Don't spend 30 hours on a project that should have taken 10-15 and then go to the partner saying you still don't have a final draft. (May seem obvious, but I've seen this happen.) Ask questions when things aren't clear, rather than spending a few hours trying to figure it out yourself. Etc. Keep in mind though that everyone's incredibly inefficient when they start out in anything, so don't get discouraged if, for your first year or so, you're about to go over budget on everything.

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Re: Biglaw -> IP boutique -> In-house - taking Qs

Postby Anonymous User » Mon Jan 16, 2017 3:52 pm

Anonymous User wrote:I'm about to start a prosecution gig. Background is CS/EE. My experience is summering at a boutique and have taken a prosecution course.

1. Is investing in any books/guides worth it to sharpen your skills (the PLI books cost a ridiculous amount of $$$) or should I just rely on the firm's training/mentoring?

2. Do you have any tips on prosecution efficiency? Since a lot of the job comes down to to the hour budgets.


Don't bother with books. You will develop the skills through practice. However, if your firm pays for CLEs or training courses/webinars/conferences, take advantage of that.

You will naturally become more efficient with experience. However, here are some tips:
1. Work off templates as much as you can. Find a prior patent app from the same client that describes the same or similar technology, and use that. Reuse figures when possible. Copy/paste from different apps for additional boilerplate or embodiments when necessary.
2. After you've drafted apps from the same client, you should become more familiar with their technology which should speed up the drafting.
3. Try to get as much information from the inventors as possible and clarify things early. This prevents major rewrites later down the road. It takes some experience to ask the right questions, though.
4. The figures control the flow of the application and what needs to be written. Start with the figures, then draft the claims from the figures (revise the figures as necessary), and then draft the specification.
5. Optimize the number of figures you need. Each figure adds additional time to draft the app, so don't go crazy drawing 10 alternative embodiments for everything. You want each figure to add substantial value to the app. If a figure adds only marginal value, just drop it and use a couple sentences instead.
6. Get to know the drafting preferences of the partner and the client. Saves you time on the comments.
7. Learn how to type quickly.
8. Draft to the budget/priority of the app. If you know the app is a low priority for the client, then it's OK not to include every possible variant. On the other hand, if the app is high priority do the best job you can.

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Re: Biglaw -> IP boutique -> In-house - taking Qs

Postby Anonymous User » Mon Jan 16, 2017 8:32 pm

I'm starting as a prosecution associate at one of the big patent firms this fall. T6, median grades, EE background from a top engineering school. Realistically, how soon would I be able to move in house? Not necessarily trying to move in-house quickly, but it's nice to have that option available.

Thanks for answering questions!

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Re: Biglaw -> IP boutique -> In-house - taking Qs

Postby Anonymous User » Mon Jan 16, 2017 9:26 pm

Obviously you left both firms, but could you comment on the feasibility of partnership at both the biglaw firm and the boutique? What about staying as of counsel?

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Re: Biglaw -> IP boutique -> In-house - taking Qs

Postby Anonymous User » Mon Jan 16, 2017 9:36 pm

I am trying to determine if I made the correct decision, but here is my situation. I also, as you, have a degree in EE. I worked three years as a clerk during my law school years at a IP boutique (night student at a reputable school in the IP field). I graduated, and worked one year at the same IP boutique and lateraled to a mid-size firm (about 225 attorneys). I plan to work there for a bit, and try to lateral to a better IP boutique firm ( my previous IP boutique firm was very poorly run, although had fortune 100 clients - this doesn't even make sense to me, but I guess connections). I got a lot of experience at my previous IP boutique in drafting and prosecuting applications, but I am worried at my mid-size firm I might not be able to improve my drafting and prosecuting skills. Do you think I could lateral from my mid-size firm into a better IP boutique ( I am willing to move, if needed). If so, at what at what point should I be trying to ? I am currently in my second-year as an associate.

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Re: Biglaw -> IP boutique -> In-house - taking Qs

Postby Abbie Doobie » Mon Jan 16, 2017 10:57 pm

Anonymous User wrote:I am trying to determine if I made the correct decision, but here is my situation. I also, as you, have a degree in EE. I worked three years as a clerk during my law school years at a IP boutique (night student at a reputable school in the IP field). I graduated, and worked one year at the same IP boutique and lateraled to a mid-size firm (about 225 attorneys). I plan to work there for a bit, and try to lateral to a better IP boutique firm ( my previous IP boutique firm was very poorly run, although had fortune 100 clients - this doesn't even make sense to me, but I guess connections). I got a lot of experience at my previous IP boutique in drafting and prosecuting applications, but I am worried at my mid-size firm I might not be able to improve my drafting and prosecuting skills. Do you think I could lateral from my mid-size firm into a better IP boutique ( I am willing to move, if needed). If so, at what at what point should I be trying to ? I am currently in my second-year as an associate.


not op but i come from the same background as you. here are some thoughts, and i'm interested to here what op and others have to say.

if you really hate it at your current firm or have a compelling reason for leaving, just do it. so long as you can explain it in your interviews. otherwise, i think that two years is generally considered the minimum stay to avoid being viewed as a flight risk/job hopper. even then, you worked at the same previous firm for at least four years. so even if you wanted to leave now, i think you still wouldn't be viewed as a flight risk.

as far as lateraling, i think lateraling to a better ip boutique (or ip biglaw) is definitely a viable option. some thoughts on that: i think that the top ip botiques with large prosecution practices like fish and finnegan take very few laterals. i've seen it happen but not very often. so those may be out of reach. however, if you have connections at those places, definitely leverage them. other well-known boutiques with strong pros practices like banner, knobbe, schwegman, etc. are probably more likely and you definitely have a great shot at those.

some other thoughts: i think that after four years of prosecution experience, you should be at the point where you can learn anything new on your own. you should have solid fundamentals and the ability to tackle new issues by researching. so i'm questioning the benefit of lateraling to a new firm at this point. you should seriously consider the difficulty of making partner at your current firm (if that is something you are interested in, of course) and know that it will probably be more difficult at a highly-touted ip boutique. case in point, if i had stayed at my gp firm, i would have had a much better chance of making partner than the ip firm i lateraled to.

are you not getting substantive work at your mid-size firm? or are you just not getting much in the way of mentorship/feedback?

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Re: Biglaw -> IP boutique -> In-house - taking Qs

Postby Anonymous User » Mon Jan 16, 2017 11:24 pm

Anonymous User wrote:I'm starting as a prosecution associate at one of the big patent firms this fall. T6, median grades, EE background from a top engineering school. Realistically, how soon would I be able to move in house? Not necessarily trying to move in-house quickly, but it's nice to have that option available.

Thanks for answering questions!


You can start moving in house after about 2 years, but it will be into a junior position with someone supervising your work. If you wait until you have 5-6 years experience, you can move into a more senior position. That's my situation. I am in charge of IP for an entire division of the company and my boss never checks my work. He trusts I know what I am doing and just confers with me about strategy and policy. If you make the move early, there is a risk it may take you longer (or you may have to make one or more lateral moves) to move up the corporate chain. So you have to evaluate in-house positions carefully and consider growth potential.

Anonymous User wrote:Obviously you left both firms, but could you comment on the feasibility of partnership at both the biglaw firm and the boutique? What about staying as of counsel?


At the biglaw firm, partnership prospects were next to nil. Prosecution practice does not fit well with biglaw billing rates. The work has much lower margins than big M&A deals, for example, so it's very difficult for them to justify making a pros person a partner. A few associates hit of counsel at the firm but couldn't go any farther. They had to lateral elsewhere to make partner.

At the boutique it was very feasible. The partners there actually told me I had the legal skills to become a partner - they trusted my work. The only thing I needed to do was build up my own book of business. However, I was a) not good at that, and b) not interested in that, so I let the opportunity go. If I had more interest/skills in networking and business development, I definitely could have made partner in one or two more years.

Anonymous User wrote:I am trying to determine if I made the correct decision, but here is my situation. I also, as you, have a degree in EE. I worked three years as a clerk during my law school years at a IP boutique (night student at a reputable school in the IP field). I graduated, and worked one year at the same IP boutique and lateraled to a mid-size firm (about 225 attorneys). I plan to work there for a bit, and try to lateral to a better IP boutique firm ( my previous IP boutique firm was very poorly run, although had fortune 100 clients - this doesn't even make sense to me, but I guess connections). I got a lot of experience at my previous IP boutique in drafting and prosecuting applications, but I am worried at my mid-size firm I might not be able to improve my drafting and prosecuting skills. Do you think I could lateral from my mid-size firm into a better IP boutique ( I am willing to move, if needed). If so, at what at what point should I be trying to ? I am currently in my second-year as an associate.


I am unsure why you think you can't improve your skills at your current firm. How long have you been there, and what type of work have you been given? Without knowing any specifics, I generally suggest to wait at least 1.5 years there before starting the lateral process again (assuming that the firm/work is at least tolerable and not really crappy). In the meantime, try to find good partners to mentor you. There are some firms and/or partners that just want you to churn through apps/OAs and have minimal contact with clients. Avoid them. Find the people who want to invest in you - in building your legal skills and in helping with client relations and business development.

Be very careful with lateral moves. I went through several lateral interviews and saw how different firm cultures could be, whether biglaw or boutiques. Some will work you to the bone and toss you aside when you get too senior, some only do work for foreign clients (avoid at all costs), and some feel like amateur hour. As the poster above said, there are a number of prestigious IP boutiques, but I would proceed with caution with them. A lot of seniors leave those firms because there just isn't a lot of room for them given the nature of the practice. It functions best as a pyramid, with lots of tech advisors and juniors doing the pros (low bill rates make it easy for them) while the seniors need to move into higher value work (e.g., litigation, PTAB, portfolio management) to justify their existence. It may be easier to stick around longer at a smaller IP boutique that doesn't have as much of that pressure.

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Re: Biglaw -> IP boutique -> In-house - taking Qs

Postby Anonymous User » Mon Jan 16, 2017 11:32 pm

1) Can you comment on your hours at all three places, both in terms of amount and predictability?

2) I'll be working at a biglaw firm that does plenty of patent pros and lit (Baker Botts) next fall. Does this mean that if I want to be partner I have to focus on lit and if I want to go in-house I should focus on pros?

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Re: Biglaw -> IP boutique -> In-house - taking Qs

Postby Anonymous User » Tue Jan 17, 2017 10:02 am

Anonymous User wrote:1) Can you comment on your hours at all three places, both in terms of amount and predictability?

2) I'll be working at a biglaw firm that does plenty of patent pros and lit (Baker Botts) next fall. Does this mean that if I want to be partner I have to focus on lit and if I want to go in-house I should focus on pros?


The billable requirement at the biglaw firm was in line with most other firms. The prosecution work was fairly predictable, but the litigation and transactional work was not. I could not hit my billables on prosecution alone, so my schedule did vary wildly depending on the deal schedule or litigation needs - that meant a number of late nights and weekend work.

The IP boutique had a much lower billable requirement (~1500), and I did mostly prosecution so my schedule was highly predictable and I could work from home often. I had very good work life balance there.

My hours at the in-house position are more or less regular business hours. I haven't had to do anything on evenings or weekends yet. However, the mentality is if your busy you've got to stay until you finish and if you're not busy just take it easy. I know my boss works more than I do (and sometimes into the evenings) but he's got more stuff to take care of.

I hadn't considered pros v. lit the way you put it, but on a general level it makes sense (YMMV). Litigation is generally higher margin work than prosecution, so it's easier to make biglaw level profits from it. However, there has been a slowdown in IP lit recently as patent troll litigation has trailed off. I know in the past they were making IP litigators partners left and right, but that's not the case anymore. The chances of making partner on the pros side are very slim in biglaw, but better if you go to smaller firms with lower billing rates. Those firms accept they can't make biglaw profits from pros and so you won't be compared to the M&A or PE folks raking in millions per deal.

On the flip side, there is generally more need for pros than lit on the in-house side. In-house litigators mostly manage outside counsel and can carry 5-10 cases at any one time. In-house prosecutors are more hands on with the work, either doing it directly or reviewing outside counsel's work. Also, companies can churn out hundreds or thousands of patent apps per year, so the volume is much greater than for litigation (one would hope your company is not being sued hundreds of times per year).

My advice is actually to see if you can do all aspects of IP. Some firms don't allow that (don't know about BB), but it's actually the best for your career to be well rounded no matter which route you take.

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Re: Biglaw -> IP boutique -> In-house - taking Qs

Postby Anonymous User » Tue Jan 17, 2017 11:35 am

Anonymous User wrote:My advice is actually to see if you can do all aspects of IP. Some firms don't allow that (don't know about BB), but it's actually the best for your career to be well rounded no matter which route you take.


Can confirm that BB is excellent at allowing (read: forcing) you to do work in all aspects of IP (lit, pros, licensing). After year 2 or 3, you have more say into what work you want to take on. Want all pros? Okay. Want all lit? Great.

Source: I'm a mid-level IP associate at BB.

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Re: Biglaw -> IP boutique -> In-house - taking Qs

Postby Anonymous User » Tue Jan 17, 2017 3:39 pm

Is there a way to break into IP with law school clinical experience as the only source of IP experience? Im currently doing insurance defense at a large ID factory, albeit a more complex work.

I really dont want to pigeonhole myself into doing ID

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Re: Biglaw -> IP boutique -> In-house - taking Qs

Postby Anonymous User » Tue Jan 17, 2017 4:37 pm

Anonymous User wrote:Is there a way to break into IP with law school clinical experience as the only source of IP experience? Im currently doing insurance defense at a large ID factory, albeit a more complex work.

I really dont want to pigeonhole myself into doing ID


You don't really give an indication of why you are interested in IP, but rather only that you don't like ID. Do you have a technical background? Are you interested in prosecution, litigation, or transactional work?

It sounds like you have graduated law school and work in ID, but took an IP clinic in law school. Absent any technical background, it will be very hard to make the switch. Even with a technical background, you would have to explain to interviewers why you went into ID first instead of IP.

Bottom line, you sound like you are grasping at draws because you don't like ID and want out. You need to build a compelling reason to give employers to jump into IP, or any other practice for that matter. You need to show evidence that your interest is serious (e.g. network with IP professionals, take IP CLEs/seminars, pass the patent bar).

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Re: Biglaw -> IP boutique -> In-house - taking Qs

Postby Anonymous User » Tue Jan 17, 2017 4:57 pm

Anonymous User wrote:
Anonymous User wrote:I'm about to start a prosecution gig. Background is CS/EE. My experience is summering at a boutique and have taken a prosecution course.

1. Is investing in any books/guides worth it to sharpen your skills (the PLI books cost a ridiculous amount of $$$) or should I just rely on the firm's training/mentoring?

2. Do you have any tips on prosecution efficiency? Since a lot of the job comes down to to the hour budgets.


Don't bother with books. You will develop the skills through practice. However, if your firm pays for CLEs or training courses/webinars/conferences, take advantage of that.

You will naturally become more efficient with experience. However, here are some tips:
1. Work off templates as much as you can. Find a prior patent app from the same client that describes the same or similar technology, and use that. Reuse figures when possible. Copy/paste from different apps for additional boilerplate or embodiments when necessary.
2. After you've drafted apps from the same client, you should become more familiar with their technology which should speed up the drafting.
3. Try to get as much information from the inventors as possible and clarify things early. This prevents major rewrites later down the road. It takes some experience to ask the right questions, though.
4. The figures control the flow of the application and what needs to be written. Start with the figures, then draft the claims from the figures (revise the figures as necessary), and then draft the specification.
5. Optimize the number of figures you need. Each figure adds additional time to draft the app, so don't go crazy drawing 10 alternative embodiments for everything. You want each figure to add substantial value to the app. If a figure adds only marginal value, just drop it and use a couple sentences instead.
6. Get to know the drafting preferences of the partner and the client. Saves you time on the comments.
7. Learn how to type quickly.
8. Draft to the budget/priority of the app. If you know the app is a low priority for the client, then it's OK not to include every possible variant. On the other hand, if the app is high priority do the best job you can.


Anon from you original quote here. Thank you for your thoughtful reply.

A few others if you don't mind:

1. As a mostly IP pro lawyer, do you feel like maybe law school wasn't worth it since your job overlaps so closely with patent agents?
2. How predictable is the workflow of the job at the boutique (I've been told it is better than average lawyer)? Do you ever/often have a mad rush as a pros attorney? If you knew you wanted to take a long weekend could you prep your docket ahead of time?
3. What kind of targets should young pros attorneys be shooting for in budget realizations (i.e. 150% of budget, 120% etc.) after 1 year, 3 years, 5 years?
4. Cheap one here, do you like what you do?

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Re: Biglaw -> IP boutique -> In-house - taking Qs

Postby Anonymous User » Tue Jan 17, 2017 5:16 pm

Anonymous User wrote:
Anonymous User wrote:Is there a way to break into IP with law school clinical experience as the only source of IP experience? Im currently doing insurance defense at a large ID factory, albeit a more complex work.

I really dont want to pigeonhole myself into doing ID


You don't really give an indication of why you are interested in IP, but rather only that you don't like ID. Do you have a technical background? Are you interested in prosecution, litigation, or transactional work?

It sounds like you have graduated law school and work in ID, but took an IP clinic in law school. Absent any technical background, it will be very hard to make the switch. Even with a technical background, you would have to explain to interviewers why you went into ID first instead of IP.

Bottom line, you sound like you are grasping at draws because you don't like ID and want out. You need to build a compelling reason to give employers to jump into IP, or any other practice for that matter. You need to show evidence that your interest is serious (e.g. network with IP professionals, take IP CLEs/seminars, pass the patent bar).


Regardless of my ID background, IP work is my genuine interest and I have received awards for my work in IP law as a law student. I got into ID work because I needed a job and that was the offer I had. I have been looking for a way out since I graduated. Well, more like I have been looking for a way in to IP, but after many cold emails and apps to IP partners and job postings, I just didnt get a response.

Anonymous User
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Re: Biglaw -> IP boutique -> In-house - taking Qs

Postby Anonymous User » Tue Jan 17, 2017 5:48 pm

Anonymous User wrote:1. As a mostly IP pro lawyer, do you feel like maybe law school wasn't worth it since your job overlaps so closely with patent agents?
2. How predictable is the workflow of the job at the boutique (I've been told it is better than average lawyer)? Do you ever/often have a mad rush as a pros attorney? If you knew you wanted to take a long weekend could you prep your docket ahead of time?
3. What kind of targets should young pros attorneys be shooting for in budget realizations (i.e. 150% of budget, 120% etc.) after 1 year, 3 years, 5 years?
4. Cheap one here, do you like what you do?


1. I don't regret law school. The utility of law school is not so much practical knowledge about your job, but building analytical and legal problem solving skills, and understanding how the courts, legislature, and administrative agencies work. It makes it easier to understand court decisions, actions by the USPTO, etc. Also, as an attorney I can do non-pros IP work such as negotiate agreements, participate in deals, give legal advice, litigate in court, and other things. I would not want to do pros 100% of the time, so I appreciate that as an attorney I can be flexible in what I do day to day.

2. The workflow at the boutique is usually very predictable, assuming you are diligent about managing your docket. I can easily plan around vacations, long weekends, etc. I could also work remotely, so sometimes I took working trips (e.g., accompany my spouse on her business trips). The only real rushes occur when there's a rush filing deadline due to imminent disclosure or some other reason. That may entail some long days/nights. However, if your docket is reasonably full and the rush matter may bleed into your personal plans, you can usually turn those matters down.

3. That's a hard question to answer, and it varies by firm and partner. In the beginning, you should be concerned about getting things right rather than hitting some percentage of the budget cap. Us senior lawyers know you're very inefficient in the beginning because we've all been there. What we want to see is improvement in your drafting skills, so your main aim is reducing the amount of redlines you get from your first drafts. Once you've improved, your already well on your way to getting your time down. Your billing rate increases every year, and your efficiency should at least keep pace with the billing rate increases. As a rough estimate, after about 2 years you should be at or under budget for most matters and that should remain true as your billing rate increases (until you reach senior level - your efficiency is logarithmic but the billing rate increases linearly). Some apps and OA responses are very complex and you will blow through the budget - that's understandable and no one will blame you for it.

One of the problems with prosecution is that budgets are held steady and bill rates keep increasing, but gains in efficiency suffer from diminishing returns. Once you are senior you need to be able to do higher value work - become a reviewing attorney for juniors, do litigation or transactions, etc. My IP boutique based raises on performance and efficiency rather than seniority, so you have to show you are either getting better at pros or doing higher value work in addition to pros to progress. In biglaw, you are eventually priced out of day-to-day pros and must move into higher value work or else get the boot. I could write a lot more about this issue, but I'll stop for now.

4. Yes, I like what I do. Generally, I like learning about new technologies and I like the problem-solving aspect of OA responses (it's like a logic game). Although my work-life balance at the IP boutique was great, I am really enjoying the in-house position. Here I have insight into the business decisions behind each patent application, am gaining experience managing outside counsel, and access to more varied types of legal work. Plus I get to decide which pros matters to keep for myself (the interesting ones) and which to farm out to outside counsel, and the ability to order outside counsel around rather than being the one ordered around :D

Anonymous User
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Re: Biglaw -> IP boutique -> In-house - taking Qs

Postby Anonymous User » Tue Jan 17, 2017 6:13 pm

Anonymous User wrote:3. Your billing rate increases every year, and your efficiency should at least keep pace with the billing rate increases. As a rough estimate, after about 2 years you should be at or under budget for most matters and that should remain true as your billing rate increases (until you reach senior level - your efficiency is logarithmic but the billing rate increases linearly). Some apps and OA responses are very complex and you will blow through the budget - that's understandable and no one will blame you for it.

One of the problems with prosecution is that budgets are held steady and bill rates keep increasing, but gains in efficiency suffer from diminishing returns. Once you are senior you need to be able to do higher value work - become a reviewing attorney for juniors, do litigation or transactions, etc. My IP boutique based raises on performance and efficiency rather than seniority, so you have to show you are either getting better at pros or doing higher value work in addition to pros to progress. In biglaw, you are eventually priced out of day-to-day pros and must move into higher value work or else get the boot. I could write a lot more about this issue, but I'll stop for now.


I'd actually like to follow up on this issue. I'm a first year pros attorney at a boutique. I've seen at least one lawyer, a partner, at my firm halt his billing rate from rising once he was senior. I've also seen it keep rising for partners, or rising every few years whether or not the budgets change. The one who didn't keep it moving was so he could hit his requirements without making his budget unmanageable. Would you recommend that strategy if the firm allowed it?

Anonymous User
Posts: 326555
Joined: Tue Aug 11, 2009 9:32 am

Re: Biglaw -> IP boutique -> In-house - taking Qs

Postby Anonymous User » Tue Jan 17, 2017 7:31 pm

Anonymous User wrote:Regardless of my ID background, IP work is my genuine interest and I have received awards for my work in IP law as a law student. I got into ID work because I needed a job and that was the offer I had. I have been looking for a way out since I graduated. Well, more like I have been looking for a way in to IP, but after many cold emails and apps to IP partners and job postings, I just didnt get a response.


I see, thanks for clarifying and sorry for some of the assumptions I made earlier. I think your best bet in finding a job is through networking. If all prospective employers know of you is through your resume/application, they will continue to pass on you because your experience is in ID. So you need to go out and make personal connections. Are there local patent bar associations you can join, or AIPLA events? How about law school alumni you can contact, or maybe connections through professors at law school, or someone connected to the awards you have received? Once people know you and know where your interests lie, opportunities may open up. That's the best advice I can give you at the moment.



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