Patent litigation career trajectory? Forum

[Anonymous User]

Curious what TLS’s take on the “normal” career trajectory for a patent litigator is.

Assume biglaw in a major market, recruited directly into the patent group out of LS, what are the long term options? Is a long-term stint at the firm a realistic option - maybe leading to partnership, but maybe not - without being pushed out (ignoring the very real possibility of burning out)? I’m curious because, excluding small shops, most “boutiques” in the IP world (Finnegan/Fish/Fitzpatrick/knobbe) seem to be on par with big law in terms of hours, pay, and partnership prospects, so at Least on paper, there wouldn’t seem to be a big difference. In the major market I’m in now, there is a presence from the big name boutiques mentioned before, but we don’t seem to have many true mid-size IP firms (50-100).


I’m also guessing that in-house is a difficult route from litigation?

Thanks

[PotatoSalad]

Curious what TLS’s take on the “normal” career trajectory for a patent litigator is.

Assume biglaw in a major market, recruited directly into the patent group out of LS, what are the long term options? Is a long-term stint at the firm a realistic option - maybe leading to partnership, but maybe not - without being pushed out (ignoring the very real possibility of burning out)? I’m curious because, excluding small shops, most “boutiques” in the IP world (Finnegan/Fish/Fitzpatrick/knobbe) seem to be on par with big law in terms of hours, pay, and partnership prospects, so at Least on paper, there wouldn’t seem to be a big difference. In the major market I’m in now, there is a presence from the big name boutiques mentioned before, but we don’t seem to have many true mid-size IP firms (50-100).


I’m also guessing that in-house is a difficult route from litigation?

Thanks

With respect to this, there are handful of firms in this range that pay market (or close enough).

DC: banner witcoff, rothwell figg, sterne kessler, maybe oblon? Axinn?
Boston: wolf greenfield
Nyc: desmarais
Cali: irell, durie tangri, keker van nest

I'm sure there are some I haven't named. That isnt to say its any easier to get gigs at any of those places than biglaw.

But generally patent lit is feeling a severe burn from AIA post grant validity proceedings and the scorched earth approach to bad patents that is Alice.

Things are starting to swing again with things like: Berkheimer 101 12(b)(6) deference; Director Iancu is far more pro patent than michelle lee; SAS increases petitioner burdens for IPRs; PTAB changing how they construe claims down from broadest reading.

It remains to be seen how things will shake out. But the supply of patent litigators is pretty high right now. Patent prosecution is a safer path for in house opportunities. But it depends on what you like to do with your day.

[QContinuum]

It remains to be seen how things will shake out. But the supply of patent litigators is pretty high right now. Patent prosecution is a safer path for in house opportunities. But it depends on what you like to do with your day.

While I agree that patent lit isn't as hot/secure as it used to be, I would caution against taking an overly rosy view of patent prosecution as the "safe" option. There's an increasing view that patent prosecution is simply not compatible with the BigLaw model. The vast majority of patents prove to be worthless, so cost-conscious clients are more and more reluctant to pay BigLaw rates for the work of getting those patents. Compounding the issue, prosecution has always been a low/zero-leverage practice area (generally just one partner and one associate on any given matter), so there isn't really any "fat" for BigLaw firms to trim. It's not like lit or transaction teams where you might be able to shave an associate or two off the project, or outsource doc review/due diligence to cheaper providers.

But to answer OP's question more directly, I think it's true that there aren't many midlaw patent lit shops to lateral "down" to, and that going in-house as a litigator - even a patent litigator - remains challenging. One thing I've seen is senior patent lit associates decamping to general lit positions at small/midlaw practices. Skills acquired from litigating patent cases in EDTX/etc. are very transferable to litigating non-patent cases. I think that's the advantage of patent lit - it's much easier to go from patent lit to general lit than vice versa. (Of course, going to a small/midlaw practice almost certainly involves a large paycut from BigLaw patent lit... but the folks lateraling "down" from general lit are in the same boat.)

[Anonymous User]

OP here.

Thanks for the replies. I’m familiar with the wolf greenfields/desmarais/sterner Kesslers of the world - my impression of them is that, despite not being V100 firms, they are pretty much on par with biglaw and the big name boutiques, so moving there would be generally lateral.

I didn’t realize that mid-size general lit is an option - that’s really interesting and a path I would certainly consider if and when the time comes.

Is there a sense that patent litigators can generally last longer in biglaw then generalists (ignoring the possibility of burnout)? I think I saw someone allude to that in another thread yesterday.

[UVA2B]

OP here.

Thanks for the replies. I’m familiar with the wolf greenfields/desmarais/sterner Kesslers of the world - my impression of them is that, despite not being V100 firms, they are pretty much on par with biglaw and the big name boutiques, so moving there would be generally lateral.

I didn’t realize that mid-size general lit is an option - that’s really interesting and a path I would certainly consider if and when the time comes.

Is there a sense that patent litigators can generally last longer in biglaw then generalists (ignoring the possibility of burnout)? I think I saw someone allude to that in another thread yesterday.

It somewhat depends on the nature of the patent lit group, but possibly yes. If the group has an active PTAB practice along with patent lit and you can argue before the PTAB, you’ll be able to survive on a mixture of lit and IPR/PGR matters relatively longer. That doesn’t make partner/of counsel magically more likely, but when the ability to argue before the PTAB matters, you become marginally more valuable to your patent lit group.

[QContinuum]

OP here.

Thanks for the replies. I’m familiar with the wolf greenfields/desmarais/sterner Kesslers of the world - my impression of them is that, despite not being V100 firms, they are pretty much on par with biglaw and the big name boutiques, so moving there would be generally lateral.

I didn’t realize that mid-size general lit is an option - that’s really interesting and a path I would certainly consider if and when the time comes.

Is there a sense that patent litigators can generally last longer in biglaw then generalists (ignoring the possibility of burnout)? I think I saw someone allude to that in another thread yesterday.

It somewhat depends on the nature of the patent lit group, but possibly yes. If the group has an active PTAB practice along with patent lit and you can argue before the PTAB, you’ll be able to survive on a mixture of lit and IPR/PGR matters relatively longer. That doesn’t make partner/of counsel magically more likely, but when the ability to argue before the PTAB matters, you become marginally more valuable to your patent lit group.

Agreed. If OP ends up doing patent lit, s/he should certainly take the patent bar if they're eligible to do so. Even if they don't start out doing any PTAB work, it helps to have that option, as many patent litigators aren't patent bar-eligible and thus the supply of PTAB practitioners is more limited.

Taking the patent bar also lets you call yourself a "patent attorney," a phrase non-patent-barred attorneys can't use. I know some district court patent litigators with no intention of ever practicing before the USPTO who took the patent bar pretty much solely so they could advertise themselves as a "patent attorney."

[r6_philly]

I was patent lit and general lit split, and I transitioned to general/IP lit in my own practice. I find that the skills are readily transferable, if not preferable -- I find the patent lit work I did at the firm was more valuable training that the general lit work I did.

I also disagree that patent lit makes in house difficult -- at least at smaller/mid size companies. I found that my lit experience makes me more valuable to small/mid size companies. I serve in the GC function for 2 companies, and my lit experience is by far what's providing value. L&E comes in second. I am so glad I didn't turn down the L&E work at the firm when I was asked.

[LikelyThrowaway]

I was patent lit and general lit split, and I transitioned to general/IP lit in my own practice. I find that the skills are readily transferable, if not preferable -- I find the patent lit work I did at the firm was more valuable training that the general lit work I did.

I also disagree that patent lit makes in house difficult -- at least at smaller/mid size companies. I found that my lit experience makes me more valuable to small/mid size companies. I serve in the GC function for 2 companies, and my lit experience is by far what's providing value. L&E comes in second. I am so glad I didn't turn down the L&E work at the firm when I was asked.

Sorry, what's L&E?

[r6_philly]

Sorry, what's L&E?

Labor and Employment.