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Author Topic: Path to in-house counsel  (Read 721 times)

patengineer

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Path to in-house counsel
« on: 08-11-10 at 08:19 am »

I currently work for an IP boutique firm as a Patent Attorney with a total experience in IP prosecution of 18 months. Almost every in-house counsel position that I’ve found requires about 2+ years of experience. However, I was able to find Intellectual Property Engineer type positions in a corporate setting that required more of an engineering type experience which I’ll have no problem qualifying for. I was an engineer for 10+ years.

My ultimate goal is to be in-house counsel or a corporate executive.

My question is, should I stick it out at the patent boutique accumulating time (1 more year?) or should I go for the IP Engineer position with the hope that I can climb the corporate ladder or crossover into the in-house counsel dept?

Thanks!
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klaviernista

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Re: Path to in-house counsel
« Reply #1 on: 08-11-10 at 10:27 am »

Depends on the nature of the company's legal department.  At your level of experience, you still have a lot to learn about patent prosecution, litigation, etc.  Thus, it will be important for you to have a mentor at the company who understands patents in depth, so that you have someone to learn from.  So, if you will be the only patent attorney in the company, my 2c is that you should stick it out at your firm for a few more years.  But if you will be but one patent attorney of many, by all means go for it.

Good luck,

Klav
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DogDayPM 9er9er9er

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Re: Path to in-house counsel
« Reply #2 on: 08-11-10 at 10:38 am »

I'll add that in my experience, while corporate generalists sometimes make the jump from legal dept. to business executive within a company, it'd be much less common for a patent attorney to do so.  Patent attorneys are usually no where near as involved with the day-to-day business issues as are generalists.

Echo Klav's comment about the size of the dept. and mentorship being an issue in smaller departments. 

I've known people who worked as IP Engineers or Patent Liaisons or etc. in several companies (4 companies, not a huge sample) and at least for them, upward mobility was not very likely.  They were usually on the RDE ladder (although their title may have been different) and tended to top out even slower than their fellows who with the "Scientist" or "Engineer" titles.  And I don't know any who jumped from that position over to the management ladder.

ETA:  Note there may be a certain amount of resistance to hiring a lawyer to do a patent engineer job.  You may be seen as over-qualified(AnotherCog beat me to it while I was typing...), likely to interfere with legal department matters, merely taking the job as a stepping-stone, etc.
« Last Edit: 08-11-10 at 11:02 am by DogDayPM a.k.a. "Nines" »
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AnotherCog

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Re: Path to in-house counsel
« Reply #3 on: 08-11-10 at 10:49 am »

Another thing to consider is that your experience as a patent attorney may make you "overqualified" for a patent engineer position.  I've seen it, at least, in the context of laid-off attorneys applying for patent agent positions.  Sure, they're qualified in every way to do the work, but firms still draw a sharp distinction between J.D.'s and non-J.D.'s. 
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