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[thebourbaki]

Hi all,

I have posted recently about becoming a patent lawyer (from an STS academic background).  Patent prosecution is very appealing to me, but so is what I think of as IP-VC (intellectual property for Venture Capital (or startups)).

What is this area really called?  Is there a market for technically oriented IP people in the early stages of startup funding.  What is the best path to get there?  Anyone know of a good forum like this one that covers these kinds of issues?

Ideally, I would love to work in / found a small law firm mixing corporate structure / VC / and IP.  I know I am not the first to think of this, so where can I find more information?

Cheers, and many thanks in advance.

N B

[plex]

You will need to get some initial experience before you jump into an in-house position, you simply won't be able to get much mentoring on your own, and more importantly, no company will want to hire you until you do have some experience.  I have never heard of someone doing going in house with 0 years of experience (outside of nepotism).

[thebourbaki]

thanks plex,

I am not sure I understand what you mean by in-house.  I think what I meant was small law firm (boutique?) that specialized in providing IP law and advice as well as basic corporate structures, etc to mostly start ups and VC firms.  Are there such law firms?  Or would one necessarily need to be "in house" at either the startup or the VC firms?  And yes, your point about experience is well taken, I don't mean to say I will do this right away, but more like the goal towards which I imagine working.

Cheers,

btw, I adjusted my original post to reflect small law firm.

[klaviernista]

I am not sure I understand what you mean by in-house.  I think what I meant was small law firm (boutique?) that specialized in providing IP law and advice as well as basic corporate structures, etc to mostly start ups and VC firms.  Are there such law firms?  Or would one necessarily need to be "in house" at either the startup or the VC firms?  And yes, you point about experience is well taken, I don't mean to say I will do this right away, but more like goal towards which I imagine working.

The particular area of practice you are inquiring about is usually referred to as IP due diligence. It involves evaluating the IP assets of a target companies for strengths and (more importantly) weaknesses.  Lots of VC companies are interested in having IP due diligence work performed.  But because of the very nature of IP work, they tend to hire outside counsel instead of hiring an in-house IP attorney (i.e., an attorney that works directly for the VC firm).  Why?  Because by hiring outside counsel, they can hire someone that has a technical background that is well matched to the target company.  Quite useful, particularly if the VC firm is investing in a wide swath of technical areas.

At one point in time, I spent quite a bit of time counseling VC firms on the value of a target company's IP.  It was fun work.  But again, mostly performed by outside counsel.

Consistent with Plex's comments, you will need some experience before you are qualified to run an IP due diligence yourself.  There are a ton of legal and business issues to consider, and to recognize many of those issues it is necessary to spend some time in the trenches.  Not to say that you can't assist on an IP due diligence as a first year.  But having a first year associate run a serious due diligence is a bit like asking a 10 year old to drive a race car.  They might be able to do it, but it is likely that serious errors will occur.