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Great advice from The Lawyer Whisperer

December 14, 2016

I’m a 3rd year patent prosecution associate. How do I successfully transition to a patent litigation practice?

Julie Q. Brush

Patent prosecutors often yearn to diversify their experience after a couple or more years of writing and filing. And while making this type of transition isn’t always easy, this constituency has a little bit of an easier go of it than their non-patent counterparts. Your particular transition to patent litigation will be facilitated by the following factors:

  • Your Seniority: The more junior you are in your legal practice, the easier it will be to “retool” it – as employers believe you will be more trainable at this stage, you will be willing to start at the bottom (again) and will be more amenable to a pay cut. In addition, there are far more job opportunities at the junior ranks than there are for seasoned attorneys. So your seniority level as a 3rd year will allow you to compete more effectively for these roles.
  • Patent Litigators with Technical Degrees Are in High Demand: While it is true that a technical degree is not required to practice as an IP litigator, the overwhelming majority of employers prefer candidates who possess one. And the candidates who do will have more employment opportunities – and get cut more breaks when seeking to retool. Just how many will depend on the type of technical degree you have. Electrical Engineering and Computer Science degrees are in the highest demand. Other connected degrees like Physics and Material Sciences will be appealing as well. If you are a life sciences lawyer, a strong life sciences degree (i.e. organic chemistry) will be marketable for a firm/company focused on life sciences. A less popular technical degree will not hold as much weight in your quest to retool.
  • Your Patent Expertise is More Transferrable: Your skills as a prosecutor and knowledge of patents are applicable and will add value to a patent litigation practice. In fact, your current background could be marketable as firms pitch their services to clients. So you won’t be starting from ground zero when you switch practices.
  • Patent Litigation is Still an Active Practice: Patent litigation is one legal practice that has remained robust over the past 15+ years despite the periodic twists and turns in the economy. So junior associate opportunities remain constant in the law firm sector. You’ll see a greater number in geographic regions with a strong technology industry influence. This is good news if you’re seeking to make a move now.

Now that you know what you have going for you as you contemplate your transition, below are 10 key things I recommend you do to maximize your chances for a successful shift:

1. Know “Who You Are” Before You Start Your Search.

Why do you want to be a patent litigator? What about it appeals to you? Did you not like prosecution? Why is your current experience relevant? How would you add value to a patent lit practice? You’ve got to know the answers to these questions before you set sail for new lands. Not only will employers ask, but also this information will be part of an on-going narrative when you are networking and conversing with others. Once you know these answers, create the concise messaging and practice it so it presents naturally.

2. Explore Opportunities With Your Current Employer.

This is the easiest path to take if the opportunity is available. If you are at a law firm that has a patent litigation practice, inquire as to whether the firm would be willing to transition you to the litigation group (or at the very least, start with a hybrid practice). In addition, if there are pro bono opportunities to develop the experience, raise your hand and volunteer. This is a great way to learn the ropes and feel good about what you’re doing. If the firm does not have a litigation practice, you’ll need to join another firm to get what you need. The same holds true if you are an in house lawyer. There are far fewer opportunities for patent litigators in house and when they do arise, companies tend to hire more senior litigators for those roles. So your best path is either back to a law firm or with a patent litigation juggernaut like Apple or Google where they may be more open to a junior patent retool.

3. Check Job Boards and Apply Online For Patent Litigation Positions.

This is an obvious job search task and more or less a box checking exercise. But it’s a box that must be checked. Employers that have active needs, typically post them on online job boards (general and legal specific). Peruse the best ones for opportunities that appeal to you and then apply directly. If you have contacts at the employer, leverage your relationships and ask them for assistance.

4. Reach Our Directly To Targeted Employers

Conduct research on the employers whom you admire and have great patent litigation practices – and proactively reach out to establish relationships and apply for positions. Be clear on why this employer…and what you have to offer.

5. Think Small.

Don’t limit yourself to the mega firms. Small shops and boutiques can provide amazing experience and client interaction – and at times can fly under the radar. So cast a wider net and include this profile on your want list.

6. Get Involved in the Patent/IP Litigation Community

Get involved in relevant practice organizations like Bar Association activities (IP litigation subgroups) or other IP litigation organizations. Perhaps you can volunteer to be an editor on a journal or organize events. Whatever you choose to do will provide you with visibility and access to those who could hire you.

7. Network Network Network.

Is anyone else tired of reading about the importance of networking? Ok, I’ll keep it brief: Connect with friends, family members, colleagues, law school classmates and alums who are working as patent litigators or in firms with IP lit practices and let them know about your desire to enter the field. Ask for advice and recommendations on how to land your next patent lit job. Ask for introductions and whether there are any opportunities with their current employers. If so, inquire as to whether they would feel comfortable passing your resume on to the appropriate hiring manager. And don’t forget the thank you notes!

8. Reach Out To Recruiters.

Don’t go to every Tom, Dick and Harry legal recruiter out there. Choose a select one or two and establish a solid relationship. The good ones are worth their weight in gold and can provide market data, search tips, resume advice, comp info, scoop on employers…and the list goes on. If your creds and experience are impressive and your technical degree is in demand, these professionals will also represent you to a variety of employers seeking to hire…taking a lot of the work off your plate.

9. Be Patient.

Finding a job takes time. Retooling a practice and finding a job takes more time. So manage your expectations about the process and how long you will need to pound the pavement before you cross the finish line. In today’s legal market with an abundance of high quality talent, a lawyer must be persistent…and patient in order find the right role.

10. Be Flexible.

It is almost certain that any employer who will want to hire you will ask you take a cut in seniority and pay. This is a reasonable request given your lack of patent litigation experience and need for basic training. So if the situation presents itself, demonstrate flexibility in these areas and you’ll increase your chances of receiving an offer.

Retooling a practice can present challenges for lawyers. Just how difficult those challenges will be, depends on the lawyer’s professional profile as well as the current legal market. For you, positive signs exist that will make such a transition easier and put you on your preferred career course. So with the right attitude, focus and proactive approach to your impending search, you’ll be in a strong position to channel your inner Perry Mason in no time.

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