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[alittlebitofpatents]

I have been having a little disagreement with my boss at work over the best way to approach compensation for my patent drafting. Do you have any suggestions or thoughts? It's a delicate situation and I don't want to screw up my relationship with my employer. Here's the situation:

I am a recently licensed attorney. I work at a personal injury law firm in a somewhat rural area two hours outside of a major city. The firm heavily advertises to its target markets. Once I moved here, I reached out to an older patent attorney in town. He has taken me under his wing and is helping to teach me the ropes. Additionally, he has already referred me a handful of clients. My firm is about to launch a new website. My boss wants to start a new IP section at the firm and make me the head of it. To that end, he wants to give me a section on the website to talk about IP and what services I can offer. Here's the rub. He does not think I should receive any extra compensation for my patent efforts. However, he seems to be of the opinion that I should take on patent work in addition to my regular duties as associate attorney. He provides no supervision, direction, guidance, etc. over anything I do that involves IP. Obviously, I think I should be rewarded for my efforts, ability to generate business (although small for the foreseeable future), and willingness to take on this new project and responsibility. At this point, he has essentially given me two options: (1) suck it up, or (2) become a partner now and follow the partner compensation system. The partner option sounds nice, but it would be a bad decision. Each of his partners receives 1/3 of whatever money they get from their cases. I would be on the same system. Of course, I don't have anywhere near the needed business to even break even under this scenario. If I did, I'd have my own firm. Do you have any ideas as to how I should approach this situation? Should I ask for 1/3 of whatever patent work I handle? Honestly, even 1/3 seems low to me, especially considering I am the one bringing in the work and putting in the overtime to do it. In your honest opinion, do I sound like a self-entitled brat?

[alittlebitofpatents]

Also, I was not hired with patents in mind.  I sought out this position because I wanted to learn litigation from respected and established attorneys.  My boss did not seem at all interested in my patent credentials or experience (limited) at all until the first calls started coming in shortly after I began working at the firm.

[OMG IP]

see what other options are out there.  Once you shop around and realize there aren't any, it puts things in perspective.  Seriously.

[khazzah]

Obviously, I think I should be rewarded for my efforts, ability to generate business (although small for the foreseeable future), and willingness to take on this new project and responsibility.

Problem is that associates aren't generally rewarded for that stuff. Not in a salary, anyway. Maybe in a discretionary bonus. And maybe "rewarded" long term in the sense that this is the kind of stuff that leads to an offer to join the partnership.

However, he seems to be of the opinion that I should take on patent work in addition to my regular duties as associate attorney.

Are you on a billable hours system? Billed hours system? If so, are you saying he's planning on increasing your minimum hours requirement?

He provides no supervision, direction, guidance, etc. over anything I do that involves IP.

Now, this is where the arrangement seems the most unfair to you. Because this is exactly the stuff an associate expects to receive when working at a firm.

[alittlebitofpatents]

Are you on a billable hours system? Billed hours system? If so, are you saying he's planning on increasing your minimum hours requirement?

I'm on a flat salary at a six attorney firm where I am the only associate.  We exclusively represent plaintiffs.  As a result, I primarily do research and writing in varying capacities for each of my five bosses.  I don't measure time; all of our work is done on a contingent fee basis.  I just make sure I meet all deadlines for all of my assigned projects.  I actually enjoy this role quite a bit at this point.  As part of my job, I have to submit a weekly assignment list for all of the partners to see.  They are supposed to gauge how much work they assign me off of that list.  This is where another problem arises.  I am not allowed to include any of my patent work on this list.  As you might expect, this means that I get to work nights and weekends that I wouldn't have had to if I never took and passed the patent bar.

He provides no supervision, direction, guidance, etc. over anything I do that involves IP.

Now, this is where the arrangement seems the most unfair to you. Because this is exactly the stuff an associate expects to receive when working at a firm.

My bosses are great mentors in all litigation matters.  Unfortunately, they don't know anything about IP.  I have received a tremendous amount of guidance and support (in addition to referrals) from a retiring patent attorney in town who is not in any way affiliated with my firm.


The discretionary bonus may still be a possibility.  Although there are five partners, there is one who really controls my destiny.  It would not surprise me if he did give me some sort of discretionary bonus at some point, but I'm more than a little uneasy about that.  Unfortunately, that may be the best I can hope for.  If nothing else, I'm getting some vary good experience in both civil litigation and patent law.  Perhaps I will be able to legitimately become a partner sooner because of my current situation.  Or maybe I'll be able to start my own firm sooner and with more confidence because of my current situation.  With that said, OMG IP is right, I don't really have any better options.  Beyond that, I don't want to leave my current firm.  I genuinely like my bosses and all of the staff.  I think the firm is a great place for someone to be who is interested in the types of law that it practices.  I just can't help but feel a little taken advantage of in this particular situation.

I'm still very interested in hearing the collective thoughts and experiences of this message board.  Please keep them coming!

[Kaitlin]

I am not allowed to include any of my patent work on this list.  As you might expect, this means that I get to work nights and weekends that I wouldn't have had to if I never took and passed the patent bar. 

Pardon my paranoia, but this business of sharing info on all your workload except IP just doesn't sound right to me.  Why wouldn't the IP work be listed along with other assignments?  Managing work flow is important to a firm and failure to properly ensure an associate has adequate time to appropriately handle all matters entrusted to him could impact the firm's liability for malpractice.  Why wouldn't your boss want the partners to know what and how much IP you're working on?  (Am assuming that if you're the "only associate", then the other attorneys are all partners.  Or does the firm have some other alternative structure?)

It almost sounds like your boss is trying to hide the fact of your IP work from his partners, except that this wouldn't make any sense if he's wanting to advertise your work on a website where presumably they'd see this and find out.  Could it be, however, that he wants to hide the extent of it? 

Continuing my paranoia, here's another query for you:  Is this your first year actually working in IP?  I ask because I recently learned that some malpractice providers are outright refusing to cover attorneys for IP if they're new to IP practice.  Could your boss could be laying the firm (and you?) open to problems down the road?  While malpractice rates have traditionally been set on the basis of kinds of work done during the immediately previous year, I have the impression there may be a current trend of requiring firms to notify the carrier if they're contemplating moving into certain new areas--particularly anything high risk like IP.  (Are you sure they've got a policy covering you?)

Hopefully others will set me straight if my concerns are way out in left field.  Clerked in a personal injury firm as a student and was very disillusioned by the experience.

[Isaac]

I'm on a flat salary at a six attorney firm where I am the only associate.  We exclusively represent plaintiffs.  As a result, I primarily do research and writing in varying capacities for each of my five bosses.

It's possible that you are being treated unfairly, but because you are on salary, we can't tell whether your being worked unfairly without knowing your salary.  Lots of associates put in evening and weekend hours and it isn't reflected in their base salary. 

I think the real problem is the lack of mentoring and supervision.   If the only feedback you are getting regarding your prep/pros work is from the patent office, then you might end up learning some rather expensive lessons.

[alittlebitofpatents]

I think I may have steered this in the wrong direction a little.  I'm not trying to stir up a debate over whether I am being treated unfairly.  I'm particularly interested in any suggestions for a fair compensation model.  Should I ask for x% of whatever patent work I generate on top of my regular salary?  If so, what is a fair number?  We are not talking about big dollars here (at least not for the firm.  Every dollar is a big dollar for me.).  I'd be surprised if I generated and actually collected $30,000 for the firm this year for my IP services.  The best compensation model may be what OMG IP suggested.  If that's the case, I'll just accept it and move on.

When this conversation has come up in the past, my boss has said he's open to ideas, but that he didn't really know the best way to handle it.  That's when he gave me the two options I previously laid out.  To date, I have not given him any suggestions about how to approach this issue.

One approach might be to just wait and see how things go.  It may be better to give my boss a recommendation after I've already brought in some more business.  I don't know the right answer.

Pardon my paranoia, but this business of sharing info on all your workload except IP just doesn't sound right to me.  Why wouldn't the IP work be listed along with other assignments?  Managing work flow is important to a firm and failure to properly ensure an associate has adequate time to appropriately handle all matters entrusted to him could impact the firm's liability for malpractice.  Why wouldn't your boss want the partners to know what and how much IP you're working on?  (Am assuming that if you're the "only associate", then the other attorneys are all partners.  Or does the firm have some other alternative structure?)

It almost sounds like your boss is trying to hide the fact of your IP work from his partners, except that this wouldn't make any sense if he's wanting to advertise your work on a website where presumably they'd see this and find out.  Could it be, however, that he wants to hide the extent of it? 

I don't think there's any intent on my boss's part to hide the fact that I'm doing some IP work.  Everyone is well aware that that is going on.  I'd be lying to myself if I pretended like there was enough of it that he was trying to hide it from his partners for his own monetary gain.  He's trying to make sure that his partners are not afraid to give me litigation projects.  His concern is that if they see that I have a bunch of patent stuff listed in my assignments, they won't use me for what I was hired for.  This part is fine with me.  I like litigation and I'm trying to learn as much about it as I can.  Mostly, my point about the assignment list is that my patent work is going beyond my job description.

Also, you asked about the firm's structure.  There are five partners.  Each of them handles their own cases.  I'm their "research this issue and write this motion" guy.  To a lesser extent, I will be taking depositions and arguing some motions, but those types of activities are the exceptions.

It's possible that you are being treated unfairly, but because you are on salary, we can't tell whether your being worked unfairly without knowing your salary.  Lots of associates put in evening and weekend hours and it isn't reflected in their base salary. 

I think the real problem is the lack of mentoring and supervision.   If the only feedback you are getting regarding your prep/pros work is from the patent office, then you might end up learning some rather expensive lessons.

I understand most associates put in a lot of hours.  However, most associates are not bringing in their own business, being trained by someone outside the firm, and handling work completely outside the scope of the firm's traditional practice areas.  Most associates are not practicing law in an area where the partners could not legally do so.  On average, I work about 60 hours per week doing the work the partners assign me.  IP hours are in addition to that.  My annual salary is $75,000.  Some of my peers from law school work more hours for less money.  Some of my peers from law school work less hours for more money.  I have not done any detailed research on this point, but I would guess that more of my law school peers fall into the first group than the second.  Sadly, some of my law school peers are probably still searching for a job period.  Believe me, I am thankful for where I am.

On your second point, I am receiving mentoring and supervision.  It just isn't coming from inside the firm.  It's coming from an extremely nice and generous patent attorney in town who is trying to retire.  That brings up another good point.  That gentleman has told me he doesn't want anything in return for his help and referrals.  I'd like to pay him for his time, but I'm not the one who gets to decide that.  Should I ask my boss to send him something in return for his work?  If anyone should get this money, it probably should be that guy.  Are referral fees customary in patents?  At least in my geographic area, they definitely are customary in personal injury cases.

[Physgeek]

Should I ask for 1/3 of whatever patent work I handle? Honestly, even 1/3 seems low to me, especially considering I am the one bringing in the work and putting in the overtime to do it. In your honest opinion, do I sound like a self-entitled brat?

I don't know the answer to your question, but here are some things to think about.

I don't think you sound self-entitled. You want to be fairly compensated, which is normal. However, you have to remember that you are not a partner. You are an employee. If you want 1/3 of the $$, become a partner. If you are not a partner, you should receive less.

Your bosses are running a business. If you are not (significantly) adding to their bottom line, it does not make good business sense for them to pay you more. It sounds like the extra work you are doing is of much more benefit to you than to the business, and if you left you would most likely take those clients with you.

I think a discretionary bonus sounds fair. If they agree, take whatever they offer; based on the choices they originally gave, it is a compromise on their part, not yours.

Again, I may be wrong, but it's just something to think about.

Physgeek

[smgsmc]

This is my take.  Your salary covers your normal work, which you are fulfilling.  Your patent work is all extra, and should be compensated separately.  If you were to be compensated on percentage billed, then certainly 1/3 billed would be typical.  But since you are bringing in the clients, you should get more.  I would say 40% billed would be reasonable.  At my firm, associates who bring in a client get a % of amount billed (whether they or someone else does the work) on top of their usual billable hour charges.  Think of it this way:  The incremental overhead expense is minimal, and the partners are not bringing in the clients.  They are not mentoring you, they are not involved in the work at all.  So they get 60% for doing absolutely nothing.  I would then use part of that 40% to say thank you to the patent attorney who's so decent to help me out (assuming there's no ethics violation in so doing).

[AnotherCog]

It sounds like you need to figure out what you want to do in the legal field.  Do you want to practice patent law or do PI work? I don't know of anyone that does both.  It'd be a little like having a podiatrist that does heart surgery as a side-gig. 

The rule of thumb in patent law is that you're not even "trained up" until you've been doing prosecution full time for ~3yrs.  Part-time training from a non-boss, nigh-retiree sounds like you'll know just enough about prosecution to be a ticking malpractice time bomb.

If you're committed to doing prosecution, start looking for jobs.  Even better, see if the patent lawyer that you know is willing to take you on as an associate and train you while he's on phase-down.  If you're lucky, you might even be able to take over his book of business when he finally retires.  If you're not that serious about it, then I'd tell your firm to forget about getting into the patent game and go back to concentrating on your normal duties at work.     

[klaviernista]

I have two questions/comments:

1.  How are your patent clients being billed?  On a per hour basis, or one a flat fee basis?

2.  Your existing employer has gone out of its way to have you keep your patent work seperate from your other work.  From your posts, the partners in your firm are not providing any guidance or supervision over your IP work, and they are not bringing those clients in.  They are also not capable of performing at least one other function, i.e., they cannot cover for your patent matters in the event that you need to be absent due to illness, business travel, etc.  That said, it seems like you are balancing the two practices quite well (even if means that you are doing your patetn work at  night).  if that is the case, why not keep your patent practice entirely seperate from the firm?  I.e., run your own small patent prosecution practice on the side?  If you do that, you will see 100% of what is collected on your patent work, and you won't have 10 pairs of grubby hands in your till.

[Isaac]

if that is the case, why not keep your patent practice entirely seperate from the firm?  I.e., run your own small patent prosecution practice on the side?  If you do that, you will see 100% of what is collected on your patent work, and you won't have 10 pairs of grubby hands in your till.

If you take that advice, be aware that you must somehow avoid working for clients that will cause conflicts for the firms other work.   It won't be possible to do that without discussing your work with the partners.  The firm is not going to give permission for you to handle a 20k case if it conflicts the firm out of taking on work for a million dollar client that one partner or the other is wooing.

Generally speaking, moon lighting is impractical for attorneys.

[smgsmc]

 That said, it seems like you are balancing the two practices quite well (even if means that you are doing your patetn work at  night).  if that is the case, why not keep your patent practice entirely seperate from the firm?  I.e., run your own small patent prosecution practice on the side?  If you do that, you will see 100% of what is collected on your patent work, and you won't have 10 pairs of grubby hands in your till.

Also, under this option, wouldn't the OP need to get his own malpractice insurance to cover the patent work?  From another thread, it would appear that someone without IP experience would have a hard time getting malpractice insurance at an affordable rate (or at all).

[petethebody]

The firm is not going to give permission for you to handle a 20k case if it conflicts the firm out of taking on work for a million dollar client that one partner or the other is wooing.

Great advice.  Not applicable to a personal injury shop, but the number one reason to not moonlight.