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

[Anonymous User]

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?

I've never seen that before, but it could be a viable strategy. However, it would be better if the firm tackled the issue at an institutional level rather than have attorneys find ad hoc solutions. For example, the firm could use alternative fee arrangements for some clients (e.g., flat rate), provide discounts, or could vary the billing rate based on the budget constraints of the client. I say this because limiting your own billing rate may hurt you depending on the firm's compensation or performance practices. For example, at my IP boutique salary was tied to billing rate. So if you held your billing rate steady, you wouldn't get a raise. Also, they may compare you unfavorably to your peers who have not held down their rates and are generating more profit. This may be especially true in GP firms, where you are compared to peers in other practice groups.

In sum, get to know the culture of the firm and what's possible when making these decisions.

[Anonymous User]

What was a typical day like for you in all 3 jobs? I.e. your schedule on an average day.

[Anonymous User]

What was a typical day like for you in all 3 jobs? I.e. your schedule on an average day.

Biglaw
I don't think I had many typical days because I was doing a mix of pros, lit, and transactions, in addition to random non-IP matters the firm assigned to me. Like I mentioned previously, prosecution is very predictable and I'll describe a typical day below when talking about the IP boutique.

Typical day on a transaction: receive agreements from general corp team at random times, spend up to few hours reviewing IP provisions and marking them up with guidance from partner, and send markup back to general corp team. Sometimes participate in a portion of a deal call with opposing counsel (they dial us in for like 5 min to discuss the IP provisions and then we drop off). If there is due diligence involved, I spend my days (and nights depending on the deadline) reviewing all the docs in the data room. Very little visibility as the corp folks don't tell us specialists much about the overall deal itself and the timing, so very unpredictable schedule. Deals start and stop on a dime, so it was difficult to schedule my other work when I was on one.

Typical day on a litigation: spend most of my time either reviewing litigation documents (patents, claim charts, opposing briefs/motions) or researching/drafting such documents. If reviewing discovery, just sit around clicking through docs all day. Regular calls/meetings to discuss strategy. Sometimes business trips to meet client or review evidence (either on our side or held by opposing party). I never had the opportunity to go to court. Schedule is quite predictable - the partners gave me clear deadlines, so unless some emergency came up I could work 9-7ish.

IP Boutique
My typical day was 9:30-6. Most of the time I was either reviewing/analyzing documents (OA, prior art), or drafting patent apps or OA responses. A few times a week I could be on conference calls with inventors or patent examiners. Really not that much variation from day to day, unless there's a rush assignment. Even the other work, such as opinions and FTOs, could be done during regular work hours.

In-house
I work during regular business hours (9-5ish). At the beginning of a typical day, I plan to either draft something (app or OA response) or review a draft provided by outside counsel. During the course of the day, I get interrupted by various things - meetings, agreement negotiations, questions from outside counsel, IP (and sometimes non-IP) questions from inventors and other internal people, fixing issues that crop up on other patent matters, some bureaucratic BS. Hope by the end of the day I accomplished what I set out to do in the morning.

[Anonymous User]

How do you think about in house attorney's job security? Some people say in house positions are destined to short lived.

[Anonymous User]

Any input on salary/salary negotiation for in-house positions? I'm a 4th-6th year associate expecting an offer for an in-house patent counsel position soon. Thoughts on reasonable range to request?

[Anonymous User]

You mentioned avoiding foreign clients at all costs. Could you elaborate on that a bit more?

[Anonymous User]

How do you think about in house attorney's job security? Some people say in house positions are destined to short lived.

Whether in-house positions are short lived is highly company specific. Here are some factors to consider:
1. The performance review system. For example, does the company utilize a ranking system that forces some people to be classified as under-performing? Is there an up-and-out system (like for partnerships at some firms)?
2. Attrition history. How long do people stay at the position, and what are their reasons for leaving? Does the company burn through people ala Amazon?
3. How lean the legal department is. Generally, the smaller the legal department, the harder it is to replace you. If you are part of a small army of in-house lawyers, you are easier to replace.
4. Is the company a likely acquisition target (e.g., a late stage pharma startup)? If so, then your position may become "redundant." Consider whether there has been attempted acquisitions in the past, or whether acquisition is a stated goal of the company.
5. How the company values the legal department. Is it an integral and trusted part of the company? Or do they view legal as a rubber stamp or fun police, and scapegoat legal when things go wrong. Similarly, do they give legal a generous budget, or try to cut costs to the bone?

Any input on salary/salary negotiation for in-house positions? I'm a 4th-6th year associate expecting an offer for an in-house patent counsel position soon. Thoughts on reasonable range to request?

Salary is dependent on region, and to a lesser extent industry type (e.g., IT, pharma, hardware, financial). Do plenty of research beforehand on salary ranges in your area, for example using Glassdoor, Salary.com, or other resources. I've heard that my company has passed on several biglaw applicants before because their salary expectations were too high, so it's important to do your homework. If they ask you for a salary expectation, don't give an exact number but rather a range (should include the average but weighted towards the upper end).

A couple other tips for negotiation:
- Don't disclose your current salary. If they are insistent on this (or in my case, asked to fill out an electronic form where it's a required field), give a range instead of an actual number.
- Think of justifications for asking for salary that is higher than their initial offer. Use the market research, but you can also include personal factors. For example, if you jump shortly before a salary increase or bonus payout at your firm, tell them what you are foregoing.
- If they are not willing to increase salary by much, try asking for non-salary benefits that are important to you, such as increased vacation days, flexible schedule, moving fees if applicable, technology/bar association/conference allowance, etc.
- If you aren't getting anywhere with the HR rep you are dealing with, ask to speak with an HR supervisor. They may be able to offer more.

[Anonymous User]

You mentioned avoiding foreign clients at all costs. Could you elaborate on that a bit more?

When domestic US clients file for patents in other countries, the US firm / US client hire foreign counsel to manage the actual filings and paperwork. Depending on the client's preference, we may give foreign counsel wide latitude in formulating patent prosecution strategies and office action responses. However, more usually we come up with the strategies and responses, and simply ask foreign counsel to follow our instructions (and add/adjust per their professional judgment and local laws).

A similar thing happens when foreign clients file for US patents. They hire a US-based law firm to handle the prosecution on the US side. In many cases, the foreign client simply instructs US counsel on how to respond to each office action. Thus the US-based attorney becomes a paper pusher rather than engaging in real, substantive legal work. The US attorney also does not have an opportunity to draft applications because the first filed applications are usually in the client's home country or a PCT and the US attorney just files a translation. There are a number of firms, mostly IP boutiques in the DC area (e.g., Oblon), that have predominantly foreign clients. The associates there churn through mindless work with minimal to no client contact, and burn out fairly quickly. Also, from an in-house standpoint that's not the kind of experience we want.

[Anonymous User]

You mentioned avoiding foreign clients at all costs. Could you elaborate on that a bit more?

Not OP, so I don't know what their rationale is. Based on my personal experience it tends to be a lot of executing other people's instructions to you, or just sending instructions to someone else who does the real work for you (depending on whether you are the foreign associate for a foreign client or the U.S. counsel sending instructions to the foreign associate). It's really banal work and not high-billing. It's good to have a little bit just to learn about foreign prosecution, but you won't feel any sense of fulfillment doing it.

[Anonymous User]

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.

I'm OP. Bumping this to see if anyone has more questions I can field.

[Anonymous User]

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.

I'm OP. Bumping this to see if anyone has more questions I can field.

Hi OP, thanks for keeping the thread alive - I'm a 3rd year patent pros (EE/CS) associate at BL firm in a secondary market - we have a small patent group and a large transactional group doing work for a lot of sophisticated tech companies. Wondering how you positioned yourself to take on transactional work. I'm doing 90% pros right now and want to do do some more licensing work, but it seems challenging because our patent group is understaffed and none of the other patent attys in the group have mixed practices. My impression is that the firm would frown upon it, but I was thinking it would be highly valuable to have the licensing experience under my belt. My goal is to go in-house in the next 1-2 years. TIA for your thoughts.

[jhett]

Hi OP, thanks for keeping the thread alive - I'm a 3rd year patent pros (EE/CS) associate at BL firm in a secondary market - we have a small patent group and a large transactional group doing work for a lot of sophisticated tech companies. Wondering how you positioned yourself to take on transactional work. I'm doing 90% pros right now and want to do do some more licensing work, but it seems challenging because our patent group is understaffed and none of the other patent attys in the group have mixed practices. My impression is that the firm would frown upon it, but I was thinking it would be highly valuable to have the licensing experience under my belt. My goal is to go in-house in the next 1-2 years. TIA for your thoughts.

I started at a firm that allowed you to be unassigned in your first two years, so you could try out different practice groups. That's how I was able to get in some tech trans and litigation experience. Even after I moved into the prosecution practice proper, because I built up partner relationships in the other groups I was still staffed on some matters.

Having licensing/transactional experience does help for moving in-house. Even if the role is primarily prosecution centered, they usually ask for some transactional experience as well.

It sounds like your firm does not like/allow associates crossing between practices, which is unfortunate. Also, since you are already a third year, it will be difficult for partners to justify putting you on transactional matters because you will have the experience of a first year but the billing rate of a third year. However, here are my suggestions:
- Do any of your prosecution clients also use the firm for transactional matters? If so, you could approach the transactional partners that work with the client and try to sell yourself as someone that knows the technology and therefore have special expertise to handle licensing or other agreements.
- If there is a prosecution partner you can trust (like a mentor), you can ask them for introductions to transactional partners that could put you on cases.
- Barring either of the above, you may have to just start introducing yourself to the transactional partners and see if there is anyone you click with and are willing to bring you on.
- If you are willing to shift away from prosecution, you can see if you can switch practice groups. This probably means you will go down to either a first or second year in pay though.
- You could try moving to another firm that gives you the flexibility to do both prosecution and transactional work. This only makes sense if you are already unhappy with your firm - I wouldn't leave if it is a place you otherwise like.

[Anonymous User]

could you tell us a little bit about your tech transaction work? I am also working as junior in house for a tech company, but my work is mostly venture capital work, and tech transaction such as joint development and joint venture, etc.

I actually started off as inhouse, no exp from law firm, so im just wondering what other tech company is like as I am learning alot of stuff on my own.

Thanks

[Anonymous User]

could you tell us a little bit about your tech transaction work? I am also working as junior in house for a tech company, but my work is mostly venture capital work, and tech transaction such as joint development and joint venture, etc.

I actually started off as inhouse, no exp from law firm, so im just wondering what other tech company is like as I am learning alot of stuff on my own.

Thanks

Some of my in-house transactional work is JDAs and joint ventures. I also work on sponsored research agreements a lot, in which we fund a University professor on research that we have an interest in (essentially a JDA with universities as the other party). I work on pilot agreements as well, in which we work with other companies to try out new tech/business models before releasing them publicly. There are also NDAs, license agreements, and other random agreements that pop up. Lastly, I do IP work related to M&A (like IP due diligence).

[Anonymous User]

could you tell us a little bit about your tech transaction work? I am also working as junior in house for a tech company, but my work is mostly venture capital work, and tech transaction such as joint development and joint venture, etc.

I actually started off as inhouse, no exp from law firm, so im just wondering what other tech company is like as I am learning alot of stuff on my own.

Thanks

Some of my in-house transactional work is JDAs and joint ventures. I also work on sponsored research agreements a lot, in which we fund a University professor on research that we have an interest in (essentially a JDA with universities as the other party). I work on pilot agreements as well, in which we work with other companies to try out new tech/business models before releasing them publicly. There are also NDAs, license agreements, and other random agreements that pop up. Lastly, I do IP work related to M&A (like IP due diligence).

Thanks. That sounds exactly like what i am doing, especially ip dd, i dont remember how many ip dd i have done, just too many.
Do you find in house work, in terms of the quality of drafting or contract is less formal than law firm. For example, we had a JDA, which originally was 30 pages, and because management wanted something simple, we took alot of terms out and ended up with just 20 pages including annexes.

Idk,sometime i feel like i am not getting proper training.

[Anonymous User]

Thanks. That sounds exactly like what i am doing, especially ip dd, i dont remember how many ip dd i have done, just too many.
Do you find in house work, in terms of the quality of drafting or contract is less formal than law firm. For example, we had a JDA, which originally was 30 pages, and because management wanted something simple, we took alot of terms out and ended up with just 20 pages including annexes.

Idk,sometime i feel like i am not getting proper training.

It's definitely less formal than at a law firm. In the firm setting you are trained to make agreements as thorough and tight as possible, and fight to weigh the agreement towards your client. In the in-house setting, there is a lot of pressure from management and the business folks to get things done quickly because they are trying to hit sales goals, earnings projections, etc. This leads to loose drafting and negotiation of agreements. I know in our company we've had some prior agreements fall apart because the business side rushed things.

You'll have to learn which agreement terms are important and which are not (which is something you pick up quickly in a law firm setting) so that you know when to push back internally. Ask your colleagues for advice, and take advantage of law firm trainings/webinars to learn more about the agreements you are handling.