Biglaw IP Litigator Taking Questions
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Date: October 15th, 2013 10:25 PM Author: Razzle-dazzle Umber People Who Are Hurt Fortuitous Meteor
You are still overstating the value of a STEM degree.
To begin with, you don't need a STEM degree to "interact with engineers." Literally anybody can "interact with engineers." They are normal people. As a patent litigator, I interact with engineers all the time. They are our clients and our inventors and our fact witnesses. There is nothing particularly challenging about talking with them. I do think that it is a special skill to sit down with an inventor and discover the true / most profitable nature and scope of their invention. But that's just tautological. Of course patent prosecutors are better patent prosecutors.
What you are also missing is that your average STEM degree patent prosecutor is not particularly well suited "to understand from a patent law perspective what is important for the business." Someone who deals with infringement suits is usually better situated than a patent prosecutor to say, at the level of inquiry relevant to a business person, what is important for the business from a patent law perspective. Life-long prosecutors don't know nearly as much as a litigator (if they know anything at all) about determining a patent's value, what it would cost to realize that value, or the risks involved, among other things. Those are the kinds of things business people want to know about their patents. As far as I know, these things are not taught in the average STEM curriculum either. That is why most large companies have separate in-house lawyers responsible for overseeing prosecution and litigation, and have experienced patent litigators (usually former partners at large law firms, and not always STEM people) overseeing their enforcement and defense efforts.
You are right that most in house job postings for patent prosecutors ask for someone with some litigation experience. In my experience, those lawyers don't have any meaningful involvement in active cases. They keep abreast of what's going on and get on calls, but they don't have enough experience or authority to override the judgment of the senior outside counsel / trial lawyer who is running the show. Nor do they have the responsibility to the business people or for the bottom line that the in house former litigator has. They would be better served just letting prosecutors do what they do.
(http://www.autoadmit.com/thread.php?thread_id=2387367&forum_id=2#24241713) |
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Date: October 15th, 2013 10:56 PM Author: Magenta Self-centered Goal In Life National Security Agency
For reference, I count 12 cs/ee listings on goinhouse currently.
All 12 require or strongly prefer PTO registration + prosecution experience. About half also want some pre-litigation experience, analyzing/negotiating basic license agreements, etc.
I don't see any listings for experience with 100-million dollar patent litigation, spending thousands of hours putting together discovery requests, giant infringement/invalidity contention documents, etc.
(http://www.autoadmit.com/thread.php?thread_id=2387367&forum_id=2#24242039) |
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Date: October 15th, 2013 11:34 PM Author: Magenta Self-centered Goal In Life National Security Agency
Your referencing of silly flame is nonresponsive. I believe the discussion was focused on in-house opportunities for patent attorneys, which go something like this:
CS/EE (with some pros experience) >>>>>>>>>>>>>>> CS/EE (all litgation) >>>>>>>>>>>>>>>>> no CS/EE (all litigation) = no in-house
There was also some question as to whether this hiring pattern is justified. The answer is yes, it is justified.
(http://www.autoadmit.com/thread.php?thread_id=2387367&forum_id=2#24242399) |
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