IP Lawyer / BU Grad - taking Qs Forum

[jhett]

Graduated last decade, currently in-house IP lawyer.

Can answer questions about:
- BU law (my knowledge of BU is outdated since I graduated so long ago, but I can take a shot at it)
- Biglaw experience
- IP boutique experience
- In-house experience
- IP law practice

[filament]

Interested in your thoughts on:

IP boutique vs. biglaw IP practice for patent litigation?

Impression of Desmarais? Impression of other NYC patent litigation groups (e.g. Weil; Debevoise; Paul, Weiss)?

Exit options for patent litigation?

[jhett]

Interested in your thoughts on:

IP boutique vs. biglaw IP practice for patent litigation?

Impression of Desmarais? Impression of other NYC patent litigation groups (e.g. Weil; Debevoise; Paul, Weiss)?

Exit options for patent litigation?

I'm mainly pros with a little litigation experience, so my thoughts are somewhat limited.

For boutique versus GP firms, it depends on the boutique. Litigation at Irell/Fish/Finnegan and other elite IP boutiques will give you superior experience than most GP firms. The elite boutiques also tend to get the most interesting cases (e.g., stuff that goes to the Fed Circuit). Less elite boutiques mostly do lower stakes litigation, so GP biglaw firms are preferable to them.

I am not very familiar with NY litigation groups.

Non-firm exit options are usually to big tech companies that sue or get sued a lot (e.g , Apple, Google). If you have pros/IPR experience you might also be able to exit to generalist IP roles. You could also exit to the USPTO as a APJ (a coworker I know did that). Exits are usually at the senior associate level and later. I don't see too many junior to midlevel exit options.

[kingpin101]

Interested in your thoughts on:

IP boutique vs. biglaw IP practice for patent litigation?

Impression of Desmarais? Impression of other NYC patent litigation groups (e.g. Weil; Debevoise; Paul, Weiss)?

Exit options for patent litigation?

I'm mainly pros with a little litigation experience, so my thoughts are somewhat limited.

For boutique versus GP firms, it depends on the boutique. Litigation at Irell/Fish/Finnegan and other elite IP boutiques will give you superior experience than most GP firms. The elite boutiques also tend to get the most interesting cases (e.g., stuff that goes to the Fed Circuit). Less elite boutiques mostly do lower stakes litigation, so GP biglaw firms are preferable to them.

I am not very familiar with NY litigation groups.

Non-firm exit options are usually to big tech companies that sue or get sued a lot (e.g , Apple, Google). If you have pros/IPR experience you might also be able to exit to generalist IP roles. You could also exit to the USPTO as a APJ (a coworker I know did that). Exits are usually at the senior associate level and later. I don't see too many junior to midlevel exit options.

1) How do you tell if a ip boutique is "elite" or not?

2) Best markets for starting out as an IP lawyer, particularly for EE/CS?

3) What was your pay like at your law firm?

[Incrementalist]

Interested on your thoughts about Non Stem majors breaking into the field: Particularly Copyrights, Trademarks, and Contracts. Like I have two UG degrees one in Criminal Justice and the other in African American Studies. Then I have 2 Post degrees one in Urban Planning and the other in American Studies. Is it hard for law students to obtain jobs within the field without being traditional stem majors.

[Jchance]

1) How do you tell if a ip boutique is "elite" or not?

2) Best markets for starting out as an IP lawyer, particularly for EE/CS?

3) What was your pay like at your law firm?

1) if it's Vault-ranked, Chambers-ranked, or gets a lot of mentions (like Desmarais, durie tangri, Keker)

2) SV/SF

[jhett]

1) How do you tell if a ip boutique is "elite" or not?

2) Best markets for starting out as an IP lawyer, particularly for EE/CS?

3) What was your pay like at your law firm?

1. Like the poster above said, check the Vault IP and IP boutique rankings, and Chambers.

2. The obvious answer is Silicon Valley. Other strong markets include DC (once the USPTO is there), Seattle (Amazon, Microsoft), Dallas/Austin, and New York. Denver is up and coming. Boston and San Diego also have a lot of IP positions but they are slanted more towards pharma/biotech.

3. My biglaw firm was on the 160k pay scale when that was still the norm. My IP boutique paid 3/4 the salary of biglaw but with 3/4 the billables.

[jhett]

Interested on your thoughts about Non Stem majors breaking into the field: Particularly Copyrights, Trademarks, and Contracts. Like I have two UG degrees one in Criminal Justice and the other in African American Studies. Then I have 2 Post degrees one in Urban Planning and the other in American Studies. Is it hard for law students to obtain jobs within the field without being traditional stem majors.

Copyrights and trademarks don't require STEM majors, so your background will not be an issue. What will be an issue is that those jobs are hyper competitive because there aren't too many available positions (for example, my big law firm with ~1000 attorneys had 3 trademark attorneys). You'll need to be very proactive to break into the practice - write notes or law school articles on the subject, take the appropriate clinics/courses, find positions with firms that have strong copyright/trademark practices, network with attorneys in the field. Also consider related fields, such as media and advertising, entertainment, or sports.

The upside is what can be a very interesting practice. I know someone who does media and copyright law for Disney, and the job sounds pretty sweet.

[Incrementalist]

Copyrights and trademarks don't require STEM majors, so your background will not be an issue. What will be an issue is that those jobs are hyper competitive because there aren't too many available positions (for example, my big law firm with ~1000 attorneys had 3 trademark attorneys). You'll need to be very proactive to break into the practice - write notes or law school articles on the subject, take the appropriate clinics/courses, find positions with firms that have strong copyright/trademark practices, network with attorneys in the field. Also consider related fields, such as media and advertising, entertainment, or sports.

The upside is what can be a very interesting practice. I know someone who does media and copyright law for Disney, and the job sounds pretty sweet.

Thank you so much. I greatly appreciate your feedback and help in answering my question.

[Law2020!]

.

[jhett]

Answering Law2020!'s questions:

1.
Pros of being patent prosecutor: more stable schedule, fewer billable hours on average, easier to find employment, more in-house exit opportunities, early and frequent client contact
Cons of being patent prosecutor: work can be mind-numbing, tight client budgets cause you to write off time, less lucrative (e.g., lower bonus because not as much billables, and tight client budgets lead to less profit), almost no chance of partnership in biglaw
Pros of being litigator: more lucrative, slightly better chance of partnership in biglaw, easier to make billable requirements, can pick up skills relevant to other practice areas (e.g., general lit)
Cons of being litigator: more billable hours, less stable schedule, fewer exit options, usual litigation cons (e.g., getting stuck in doc review), more frequent travel (unless you like hanging out in airports and hotel rooms a lot)

2. No. Having a technical background is a definite plus if you want to get into patent lit. If a firm employs both, you may have to make your preference known or they might push you into prosecution.

3. Yes. becoming a patent attorney (i.e., passing the patent bar) does not force you into prosecution. You can still do litigation and IPRs. You just need to find an employer that lets you do that. As an aside, I would recommend getting experience on both sides even if you go into lit or pros. It'll make you a better lawyer because you understand how to put a patent together and how to take it apart. Get the pros experience in when you're a junior because your billing rate is lower.

[pricon]

I assume you got to know most STEMs who were in your graduating class. What is your assessment of their ability to outperform non-STEMs in terms of getting BIGLAW from your top 25 school?

[twiix]

Answering Law2020!'s questions:

1.
Pros of being patent prosecutor: more stable schedule, fewer billable hours on average, easier to find employment, more in-house exit opportunities, early and frequent client contact
Cons of being patent prosecutor: work can be mind-numbing, tight client budgets cause you to write off time, less lucrative (e.g., lower bonus because not as much billables, and tight client budgets lead to less profit), almost no chance of partnership in biglaw
Pros of being litigator: more lucrative, slightly better chance of partnership in biglaw, easier to make billable requirements, can pick up skills relevant to other practice areas (e.g., general lit)
Cons of being litigator: more billable hours, less stable schedule, fewer exit options, usual litigation cons (e.g., getting stuck in doc review), more frequent travel (unless you like hanging out in airports and hotel rooms a lot)

Following up on this, if you knew what you know now, which path would you have taken? I'm not going to follow your advice so don't shy away from being genuine and being blunt, but given your current career outcomes, missed opportunities, etc.. do you think lit or pros would have panned out the best for you?

Do you notice any differences in typical workday between big law and an IP boutique? Pros/cons of each?

Is the work that you do in house exciting/interesting? What is your typical day since going in house in comparison to big law or the boutique?

[makingthemove]

I'm currently a practicing patent agent (EE) with 2 years prosecution, and applying for law schools in this cycle. I plan to keep working with Patent Law, with the goal of either going biglaw in Patent Litigation, or moving in-house positions.

Any thoughts on how I should approach career choices through law school and after? Should I be aggressive about 1L summer positions with IP law? Would working as an agent part-time during law school help or hurt any potential employment?

[elendinel]

Would working as an agent part-time during law school help or hurt any potential employment?

At my oldish NYC firm agents often went to school PT; the firm also tended to want T14 people in its lit groups. People who went to Fordham PT weren't kicked out of the firm, but they were expected to stay in the pros group. I think I only saw one associate who successfully jumped from pros->lit and it took a lot of work (stellar grades, in-demand tech background, lots of internal networking and patience, etc.). 2Ls from Harvard were given better consideration than pretty much all the PT agents who'd worked at the firm for several years (like 4+).

I dunno if my firm was extreme in this or not, but I'd wager the following: (1) your employment itself won't hurt you (and in theory could even help you); but (2) the lack of PT programs from prestigious schools will likely make it hard to do biglaw lit, especially since (3) (if I take a guess) you'd be trying to move into biglaw to do lit, rather than just biglaw hopping to a different firm (meaning you need that school prestige to deal with the fact that you don't have firm prestige).

[makingthemove]

meaning you need that school prestige to deal with the fact that you don't have firm prestige

Thanks for the response! I was thinking of working while going to school full time, and hopefully to one of the higher ranked schools (targeting T20). Is that suicidal? I wasn't planning to work during the first year, but in the second and third years.

[elendinel]

meaning you need that school prestige to deal with the fact that you don't have firm prestige

Thanks for the response! I was thinking of working while going to school full time, and hopefully to one of the higher ranked schools (targeting T20). Is that suicidal? I wasn't planning to work during the first year, but in the second and third years.

I don't know of many places that will legit let you work part-time (i.e., only 20 hours or less, which is a requirement for FT) as a patent agent and pay you enough for the work to be worth the lost time. And even if on paper you're only responsible for 20 billable hours a week (which in and of itself will be hard to get unless you stay where you are and they like you enough to reduce your schedule this much), it's still a billable job, so you may still be working essentially like you're FT, but without the corresponding salary to match. But FWIW my experience is in biglaw. If you can find a job that actually does let you switch off after 20 hours of work (billable or non-billable) and they pay you well enough for the income to be worth the time taken away from studying, all power to you.

You should target T13.

[jhett]

I assume you got to know most STEMs who were in your graduating class. What is your assessment of their ability to outperform non-STEMs in terms of getting BIGLAW from your top 25 school?

I graduated around the time of the Great Recession, and from my observation STEM law students (assuming they went into IP) did very well compared to the overall class.

[jhett]

I'm currently a practicing patent agent (EE) with 2 years prosecution, and applying for law schools in this cycle. I plan to keep working with Patent Law, with the goal of either going biglaw in Patent Litigation, or moving in-house positions.

Any thoughts on how I should approach career choices through law school and after? Should I be aggressive about 1L summer positions with IP law? Would working as an agent part-time during law school help or hurt any potential employment?

Because you already have patent work experience, working part-time during law school isn't going to impact you that much with respect to employment options. What it will impact is your free time and your law school performance. You want to make sure you don't screw up your law school grades or your work, which means you will have very little free time to do other things (this is what I observed from people I know who have done it).

As for moving into patent lit, you should focus your 1L and 2L summers on getting IP lit summer positions. Firms will naturally assume you want to continue doing pros, so you'll need to convince them otherwise. If it's possible, see if you can do some PTAB/lit stuff at your current firm so that you have something in your resume you can use to establish your interest in lit.

I generally agree with elendinel's advice, although a highly ranked law school is slightly less important in the patent world. I would balance ranking with money. Aim high of course, but if a slightly lower ranking school offers you a significant scholarship, I would probably take it over a higher ranking school with no scholarship. Your employment options either way would be similar.

[jhett]

Following up on this, if you knew what you know now, which path would you have taken? I'm not going to follow your advice so don't shy away from being genuine and being blunt, but given your current career outcomes, missed opportunities, etc.. do you think lit or pros would have panned out the best for you?

Do you notice any differences in typical workday between big law and an IP boutique? Pros/cons of each?

Is the work that you do in house exciting/interesting? What is your typical day since going in house in comparison to big law or the boutique?

My goal going into law school was to go in-house, so I don't regret my choice between lit and pros because it was easier for me to go in-house from the prosecution side. If I had gone lit, I would probably still be in a firm right now. I also have a professional preference for pros over lit. That said, my biggest regret is not realizing sooner that pros is untenable in many biglaw firms, including the one I started in. I probably would have selected another firm coming out of law school given what I know now.

Given the same type of practice (namely pros), the typical workday between biglaw and a boutique is pretty much the same. I will say that biglaw gave me a greater variety of things I could do (e.g., help out with deals, assist in tech-heavy litigations, interact with people in other practice groups). This actually helps me now in-house because it exposed me to other types of law.

I think the work I do in-house is really interesting because of all the issues that crop up. Our legal department is small enough that all of us have to deal with a multitude of legal issues. So it's not like private practice where I am just churning through office actions and patent applications all day. In addition to handling IP, I have to negotiate agreements, assess third party IP threats, advise the business side on random legal issues, manage outside counsel, support acquisitions and litigations, etc. (this is where the broad biglaw experience came in handy). Almost every issue that pops up usually involves an area of law I am unfamiliar with, so there is a lot of learning. Also, I like that I get to understand the business side better and make better IP decisions. In private practice, you don't know a lot about what's important to the client so you don't always make the best decision (e.g., how should I amend this claim?).

The typical day is fairly chaotic, as you can imagine from my description above. I have a to-do list for my various IP matters, but that is frequently shoved aside whenever someone from the business side runs to me with some random issue.

[makingthemove]

Thanks for your input!

[cc1012]

Thanks for answering these!

Thoughts on the following:

1. If a firm is Chambers-ranked in a lower band in a certain region than another firm, but has a higher Vault ranking in both IP and as an overall firm, is there a strong reason for either choice?

2. Differences between the Dallas and DC markets, specifically (EE/CS)? With TC Heartland, would I lose out on significant experience as a junior associate if I started in Dallas as opposed to DC if my long-term goal is to be in the south?

[jhett]

Thanks for answering these!

Thoughts on the following:

1. If a firm is Chambers-ranked in a lower band in a certain region than another firm, but has a higher Vault ranking in both IP and as an overall firm, is there a strong reason for either choice?

2. Differences between the Dallas and DC markets, specifically (EE/CS)? With TC Heartland, would I lose out on significant experience as a junior associate if I started in Dallas as opposed to DC if my long-term goal is to be in the south?

1. It's hard to answer your question without knowing the actual firm you are referring to. However, here are some factors to consider:
- The lower regional band ranking may mean that other, stronger firms in the region have the best clients/matters that originate in that region. That may impact the quality of work you will get, and may affect your exit options (you won't have a client relationship with certain companies in order to make a jump in-house).
- You may end up doing more working for clients that originate from other offices (the stronger offices of the firm) rather than from the office you are located in.
- The particular office may be limited in the technology fields or practice areas they can handle, leading to a lower band rating.
- Has the office been growing or shrinking? Does the office have any star attorneys, or are they located in other firms?

I suggest you find out more information about the particular clients and practice areas serviced by that office to evaluate whether or not you would choose it over other firms. If you plan on staying in the region (I assume it's Dallas based on question 2), then the regional rankings matter more than if you are flexible on location.

2. By referencing TC Heartland, I assume you want to do patent lit. TC Heartland is not a death knell for litigation in ED Tex, and it appears from the newest opinions that the judges there are trying to claw back venue. I think there will still be a fair amount of litigation activity in Dallas. Usually, you should start your practice in the city you want to end up in. DC is a prosecution hotspot, but there isn't actually that much district court IP litigation in DC. The only reason I think you should pick DC is if you get an offer from a firm that has a strong Fed Circuit appellate practice like WilmerHale, Fish, or Finnegan. Getting Fed Circuit experience would make you golden anywhere.

[makingthemove]

The only reason I think you should pick DC is if you get an offer from a firm that has a strong Fed Circuit appellate practice like WilmerHale, Fish, or Finnegan. Getting Fed Circuit experience would make you golden anywhere.

The idea of working in patent lit appellate practice sounds exciting for me. Is there anything I should do to increase my odds of working with CAFC practice? Do I need to go to a top-N school? Any classes or I should be taking? Join law reviews or work with faculty on papers? Pray?

[pricon]

Do you think that the biglaw patent lit options for someone with a non-ee/cs engineering degree and from a t20-30 law school would be comparable to the biglaw patent lit options for the same person from a t13 law school, in terms of just getting the job?

What about the same question in terms of accessing national markets? (SF/LA/Chi from Boston University, as opposed to Penn, for example)

I wonder if the options would seriously be so close that it would be totally ridiculous to attend a t13 with an engineering degree vs a t25 with scholarship for someone set on biglaw.

Would the risks of going to the t25 solely to do patent lit outweigh the benefits of going to the t13 anyway and having more non-patent-lit biglaw options for someone not sure what they want to do after graduation?

PS: I'm not only not necessarily competitive for patent pros, but also totally uninterested in it.