Print

Please login or register.
1 Hour 1 Day 1 Week 1 Month Forever
Login with username, password and session length

[got_ip]

I am graduating law school and deciding between two offers, one in IP Law and one in Business Law.  My background is in IP (4 years as an in-house patent agent) and I enjoy the field, but I have also enjoyed my business law courses in law school and the business law position is in a region that I would much rather live.  Also, there is the opportunity to build whatever IP practice I can at the business law firm (they currently only have copyright/trademark and would like to add patent prosecution).  If in 1-2 years I found that a career in business law did not meet my expectations or I was unsuccessful in establishing a patent practice, how difficult would it be to return to the SF Bay Area and try to break into an IP prosecution at that point?  Would I be a less attractive option as compared to a graduating law student that hasn't "developed bad habits" outside of the standard first-year associate training regimen?

[klaviernista]

As you are probably aware, it is difficult to generalize how attractive a candidate will on a firm by firm basis.  Firms generally hire based on need.  If you meet that need and have additional relevant experience, you will probably be more attractive than another candidate that has only the bare minimum of experience.  In some firms, having any experience at all is a detractor, because the firm might want to bring in a completely green associate at a lower salary and train them to do things "their way."  Other firms view any IP experience as a boone, because it generally signifies that the candidate will require less training than a completely green associate.

In my opinion, a combination of business law and IP experience can be very powerful, especially on the in-house side of the game.  I left a very large IP boutique roughly 1 year ago to become the sole in house IP counsel of an engineering firm, and I quickly realized that my job was ~80% business, 20% IP.  given that distribution of work, andf if I am honest with myself, I have to say that my company might have been better off hiring a corporate attorney who has some IP transactional experience, as opposed to hiring me (a "pure" IP attorney with substantial patent experience, but little to no business experience). 

Personally, I think it will all come down to how you spin yourself to an IP firm in the future, and what that firm's needs are.  If you are a business centric attorney and haven't done much recent prosecution, you will be less attractive to firms looking for a "pure" prosecution specialist.  On the other hand, you would be a very strong candidate if the firm you apply with is looking for someone who has substantial corporate transaction experience.

[got_ip]

Thanks for your comment.  Your insight meshes well with discussions I've had in the interim.  For others in this situation, I've talked with several partners at business law and IP law firms in the Bay Area and they have consistently said that making the transition back into IP would not be a slam-dunk, but it is also completely possible, especially if done during a "boom" unlike today.  As klaviernista pointed out, it would have a lot to do with how one sells himself.  Thanks again for your thoughtful input.