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[Richard Lemer]

Is it possible to be a good patent ligitator and be good at patent prosecution?   Is it better to work for a firm that exclusively does prosecution or does it matter?  I think to be good at something you have to practice it exclusively.   There are some patent attorneys that represent that they do both.   This does not make me comfortable as an inventor.

[JimIvey]

Yes, it's entirely possible, but not easy.  When I was first practicing, I learned under someone who was reputed to be the best combination patent litigator and patent prosecutor at the time.  The challenge to being good at both is that litigation seems to consume a lot of time, not leaving much time for prosecution -- and prosecution has a momentum to it; it's hard to leave for months and then come back since most clients will have been assigned to a different attorney.  

I'd say that one of the biggest shortcomings I see in inexperienced prosecutors is that they seem to believe their job is done and their goal is accomplished if and when a patent issues.  The real test of a patent is enforcement after issuance.  Generally, all (or at least most) of the concessions the PTO wants you to make during prosecution are directly adverse to broad enforceability (and therefore value) of your patent.

I'd strongly recommend picking a patent attorney with an eye toward enforceability after issuance and with some experience understanding how people try to break patents in litigation.

On a related issue (and at the risk of appearing less than humble), a prospective client was recently referred to me by a litigator who deposed me in an attempt to break some of my patents.  What higher praise is there than that?

Regards.