Which Bay Area firm has a robust patent prosecution practice? Forum

[Anonymous User]

I am looking into lateraling to the bay area for family reasons. I am a junior associate with 2-3 years of patent prosecution experience in the EE/computer space. I am hoping to get some feels of the market/firms before I start applying.

I plan to earn big law salaries for the next 3-5 years. Thus, I am looking for firms which have a busy patent prosecution practice (because of the amount of work and not because extra hours put in due to budget issues) so I can hang on for a decent amount of time. Are there any firms that fit this profile?

[Anonymous User]

I am looking into lateraling to the bay area for family reasons. I am a junior associate with 2-3 years of patent prosecution experience in the EE/computer space. I am hoping to get some feels of the market/firms before I start applying.

I plan to earn big law salaries for the next 3-5 years. Thus, I am looking for firms which have a busy patent prosecution practice (because of the amount of work and not because extra hours put in due to budget issues) so I can hang on for a decent amount of time. Are there any firms that fit this profile?

Lol that is going to be your reality at any biglaw firm in any major market.

[Anonymous User]

OP here. Let me rephrase it a bit. I know some firms won't allow you to continue recording/ billing your time if it's over the budget or will cut you loose if the efficiency is low. Are there firms that will credit the hours that associates put in even though the budget is low?

[Anonymous User]

Doubt any firms would be happy with low efficiency. And efficiency is particularly in demand in patent pros due to client pressure.

That said, Fish won't make you write off your own time. But if a lot of your hours end up being "eaten" by the firm, you'll certainly have bad reviews and no bonus.

[Anonymous User]

I don't know of any biglaw firms in the Bay Area that factor realization into your end-of-year billable number, if that's what you mean.

If you mean you want a firm that won't ask you to cut your own hours, most if not all firms will tell you to bill all your time because it would unethical for them to tell you otherwise. But as the other anon said, most will also give you poor reviews and no bonus if they don't like the amount of time they have to write off to meet the budget, and will tell you to "become more efficient" (even when it'd be impossible to be more efficient because of your billing rate and when the only way to be more efficient will be for you to cut your hours before a partner sees the bill, thus making their life easier and allowing them plausible deniability if you complain at the end of the year because you couldn't meet your requirement). Biglaw gets that pros isn't as profitable as other fields but that doesn't mean any biglaw firm is going to be happy if you're contributing to losses in your group (even when it's because of completely unrealistic client expectations, rather than because of you actually being significantly inefficient).

[jhett]

Off the top of my head, Knobbe (although I've heard bad things about their culture), Cooley, Morgan Lewis, MoFo, Fish, and Finnegan.

However, I suggest you check out some smaller boutiques. They probably won't compensate you as much (although you'll get close), but I doubt you'll last long as a prosecutor in biglaw. If you're coming in as a 3rd or 4th year associate, you are already on the cusp of being too expensive to do prosecution. Unless you are willing to branch out into IP lit or transactions, you likely won't last another 3-5 years. At least in smaller boutiques you'll have a longer runway and you won't have as much billing pressure.

[h2go]

Off the top of my head, Knobbe (although I've heard bad things about their culture), Cooley, Morgan Lewis, MoFo, Fish, and Finnegan.

However, I suggest you check out some smaller boutiques. They probably won't compensate you as much (although you'll get close), but I doubt you'll last long as a prosecutor in biglaw. If you're coming in as a 3rd or 4th year associate, you are already on the cusp of being too expensive to do prosecution. Unless you are willing to branch out into IP lit or transactions, you likely won't last another 3-5 years. At least in smaller boutiques you'll have a longer runway and you won't have as much billing pressure.

A bunch of MoFo's patent prosecution group just left for Denton's.

[Person1111]

Most if not all firms will tell you to bill all your time because it would unethical for them to tell you otherwise. .

"Please keep in mind that the client is cost-sensitive."

"The client is encouraging us to make an extra effort to bill efficiently on this case."

[Anonymous User]

Off the top of my head, Knobbe (although I've heard bad things about their culture), Cooley, Morgan Lewis, MoFo, Fish, and Finnegan.

However, I suggest you check out some smaller boutiques. They probably won't compensate you as much (although you'll get close), but I doubt you'll last long as a prosecutor in biglaw. If you're coming in as a 3rd or 4th year associate, you are already on the cusp of being too expensive to do prosecution. Unless you are willing to branch out into IP lit or transactions, you likely won't last another 3-5 years. At least in smaller boutiques you'll have a longer runway and you won't have as much billing pressure.

If OP is just looking for a list of bay area biglaw firms that do pros, here's my addition to the list above:

Fenwick, WSGR, Dentons (as mentioned above), Kilpatrick, Baker Botts

[Anonymous User]

Most if not all firms will tell you to bill all your time because it would unethical for them to tell you otherwise. .

"Please keep in mind that the client is cost-sensitive."

"The client is encouraging us to make an extra effort to bill efficiently on this case."

"Part of becoming more senior is learning to be more efficient."

"I can't write off time for this matter, you're going to have to figure out a way to keep this in budget."

Some of the above listed firm's have definitely said variations of all of the above to agents and associates. I agree with the anon who says boutiques are your best bet.

[Anonymous User]

Thanks all for the response. A couple follow-up questions.

What's a standard budget and efficiency in the computer/ electronics space? How much time do you typically spend on a office action and drafting the application? I know how much time I spend but I just want to see if it is feasible for me to survive given my efficiency level.

Do mid/senior level prosecution associates in biglaw review junior's work or do they typically do majority of the writing?

Which firms will let you do a combination of prosecution/litigation/IP transaction?

[Anonymous User]

You generally won't be able to do all three - pros, lit, and transactional - at any firm. There are firms that will let you TRY all three (especially as a SA or as a first-year associate), but you won't be able to indefinitely DO all three. It's just not how the market works these days. You'll see partners who have historically done both lit and pros, but it's increasingly unfeasible even for them to continue that way.

If you really want, it's still possible to do both pros and transactional. At JD, for example. But lit tends to be separate - if you're doing lit, you'll be doing only lit (even at JD, to use the same example).

[Anonymous User]

You generally won't be able to do all three - pros, lit, and transactional - at any firm. There are firms that will let you TRY all three (especially as a SA or as a first-year associate), but you won't be able to indefinitely DO all three. It's just not how the market works these days. You'll see partners who have historically done both lit and pros, but it's increasingly unfeasible even for them to continue that way.

If you really want, it's still possible to do both pros and transactional. At JD, for example. But lit tends to be separate - if you're doing lit, you'll be doing only lit (even at JD, to use the same example).

I see your point. Do you consider IPR as lit or pros?

[Anonymous User]

I see your point. Do you consider IPR as lit or pros?

Lit, although it's a bit of a specialty. Some firms have people who do just PTAB work. But I understand it's possible to do both IPRs and district court litigation.

[jhett]

Thanks all for the response. A couple follow-up questions.

What's a standard budget and efficiency in the computer/ electronics space? How much time do you typically spend on a office action and drafting the application? I know how much time I spend but I just want to see if it is feasible for me to survive given my efficiency level.

Do mid/senior level prosecution associates in biglaw review junior's work or do they typically do majority of the writing?

Which firms will let you do a combination of prosecution/litigation/IP transaction?

The average budget for OA responses is about $2500-3000. For applications, it varies wildly by client. I've seen between $6-12k. Divide that by your billing rate to find the time range.

Senior level prosecutors tend to review other people's work, but they still do some drafting/prosecution as well because reviewing work won't fill up all of your billable time.

IP boutiques are better at letting you be flexible with your practice. GP firms usually make you specialize in one of the three.

[Anonymous User]

I've heard good things about Kilpatrick from an associate there. They have lower billing rates and similar budgets (higher efficiency) than my current firm. Fish is very silo'd. Budgets will vary by the clients of the partners in your office (no firmwide clients).

[Anonymous User]

I've heard good things about Kilpatrick from an associate there. They have lower billing rates and similar budgets (higher efficiency) than my current firm. Fish is very silo'd. Budgets will vary by the clients of the partners in your office (no firmwide clients).

This has not been my experience. Sure, a lot of work comes from partners in the same office, but there are clients supported by many offices and work comes from all over if you have the right background to handle it.

[Anonymous User]

Thanks all for the response. A couple follow-up questions.

What's a standard budget and efficiency in the computer/ electronics space? How much time do you typically spend on a office action and drafting the application? I know how much time I spend but I just want to see if it is feasible for me to survive given my efficiency level.

Do mid/senior level prosecution associates in biglaw review junior's work or do they typically do majority of the writing?

Which firms will let you do a combination of prosecution/litigation/IP transaction?

The average budget for OA responses is about $2500-3000. For applications, it varies wildly by client. I've seen between $6-12k. Divide that by your billing rate to find the time range.

Senior level prosecutors tend to review other people's work, but they still do some drafting/prosecution as well because reviewing work won't fill up all of your billable time.

IP boutiques are better at letting you be flexible with your practice. GP firms usually make you specialize in one of the three.

What would be an acceptable range of efficiency? Is 70-80% considered too low?

[Anonymous User]

Fish is very silo'd. Budgets will vary by the clients of the partners in your office (no firmwide clients).

I can second this. If you work for a good client, you'll have reasonable budgets to work with and reasonable deadlines. Work for a bad client, and you'll have tight (unrealistic) budgets and horrendous (unrealistic) deadlines. And you'll get yelled at by the client when the work you turn in - on the unrealistic budget and by the unrealistic deadline - is somehow not Michelangelo-quality.

The anon above disputes this. But I don't think anon's post actually contradicts any of the above points. Anon points out that there are large clients supported by multiple offices. This is true - there are clients that "belong" to multiple partners. And there aren't really staffing barriers between different offices. As anon says, work comes from all over if you have the right background (and, I'd add, if you can hunt that work down). But it remains true that all clients (even longtime institutional ones) are treated as "belonging" to particular partners and budgets will vary by client.

[Anonymous User]

Fish is very silo'd. Budgets will vary by the clients of the partners in your office (no firmwide clients).

I can second this. If you work for a good client, you'll have reasonable budgets to work with and reasonable deadlines. Work for a bad client, and you'll have tight (unrealistic) budgets and horrendous (unrealistic) deadlines. And you'll get yelled at by the client when the work you turn in - on the unrealistic budget and by the unrealistic deadline - is somehow not Michelangelo-quality.

The anon above disputes this. But I don't think anon's post actually contradicts any of the above points. Anon points out that there are large clients supported by multiple offices. This is true - there are clients that "belong" to multiple partners. And there aren't really staffing barriers between different offices. As anon says, work comes from all over if you have the right background (and, I'd add, if you can hunt that work down). But it remains true that all clients (even longtime institutional ones) are treated as "belonging" to particular partners and budgets will vary by client.

I'm the anon you're referring to. What firm does not have different budgets for different clients and has clients that do not "belong" to one or more partners? At every firm that I know of, partners are in charge of managing clients and staffing people on them. I think the negatives you pointed out are for patent pros. in general, at least at the firms where I have worked. I'm simply saying that I have not seen at Fish where people are stuck working only for the clients of the principals in their office. Instead, junior handlers in my office have often been hunted down by senior associates and principals in other offices.

[jhett]

What would be an acceptable range of efficiency? Is 70-80% considered too low?

That's a bit tricky to answer. It depends on the client's budget, the complexity of the matter you are working on, and your familiarity with the client's technology.

As rough estimates and with respect to a specific client, after one year you should be above 75% efficiency and after two years you should be above 90% efficiency.

[84651846190]

I don't know of any biglaw firms in the Bay Area that factor realization into your end-of-year billable number, if that's what you mean.

Knobbe does

[Anonymous User]

Knobbe uses a 1750 hour billed out system. In other words, you eat your own inefficiency, but the hours are set lower to account for that. Knobbe is also much less silo'd than Fish. Clients are shared across offices more at Knobbe. At Fish, one of their annual metrics is profitability by office.