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Author Topic: Patent Prosecution Burn Out  (Read 1251 times)

PatentNugget

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Patent Prosecution Burn Out
« on: 03-05-18 at 05:44 pm »

I've been working in a small patent pros firm (5 attorneys) for about 7 years now and i'm feeling burned out from doing nothing but responding to Office Actions all day and writing new app after new app...

I'm looking for a new role in patent law.  My "escape" plan is to try to find a job that concentrates more on post-grant work (e.g., IPRs) or even litigation.  I know it's common for lawyers to move from bigger firms to smaller firms and common for lawyers to back off of litigation and IPRs and concentrate more on prosecution and opinion work. 

Is it unheard of for associates to move to bigger firms from small firms and/or transition to post-grant and litigation from a prosecution background? It seems like I'd have an uphill battle for getting hired. Can anyone shed some light on this?  I would greatly appreciate it. 

 

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UVAgal4

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Re: Patent Prosecution Burn Out
« Reply #1 on: 03-06-18 at 04:06 am »

No advice, just good luck. That is where I am at. Looking to go in-house, I want to get back into the R&D side.
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ThomasPaine

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Re: Patent Prosecution Burn Out
« Reply #2 on: 03-06-18 at 11:20 am »

Post-grant work is, at least from my experience, always outsourced to OC.  It's not something in-house folks can do.  And nobody in-house would want to do it.  (Who you gonna blame when you lose?)

Your best approach would be to find a firm that does have a post-grant practice and needs/wants your prep & pros skills and try to persuade them that you can help them with their post-grant work.  Be prepared to learn that practice on your own dime.  No firm, large or small, is gonna hire you and give you a year or more to get profitable on that work.  Why would they?
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PatentNugget

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Re: Patent Prosecution Burn Out
« Reply #3 on: 03-06-18 at 11:29 am »

Post-grant work is, at least from my experience, always outsourced to OC.  It's not something in-house folks can do.  And nobody in-house would want to do it.  (Who you gonna blame when you lose?)

Your best approach would be to find a firm that does have a post-grant practice and needs/wants your prep & pros skills and try to persuade them that you can help them with their post-grant work.  Be prepared to learn that practice on your own dime.  No firm, large or small, is gonna hire you and give you a year or more to get profitable on that work.  Why would they?

Thanks for your reply! 

I'm prepared to learn it on my own time and start at the bottom. If the firm doesn't hire people and train them then how do they get new people to do the work?

I'm trying to figure out if I'm pigeonholed by only working in prosecution or not.  I'm also trying to figure out if the grass really is greener.  I think post grant work is more interesting because the stakes are higher and it's a less repetitive. 
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ThomasPaine

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Re: Patent Prosecution Burn Out
« Reply #4 on: 03-06-18 at 11:36 am »

They pick from the associate pool, most likely from the 1st and 2nd years, who they want to train.  There are aspects of post-grant work that are more like litigation and aspects that are more like prosecution.  They look at what needs doing at the associate level and assign based on whose work they like.  Prosecution and litigation associates alike may get the tap on the shoulder.  I can't think of a single firm that would set out to hire a "post-grant associate" for a 1st year position.  They hire associates.  And do the usual winnowing process.
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PatentNugget

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Re: Patent Prosecution Burn Out
« Reply #5 on: 03-06-18 at 12:11 pm »

They pick from the associate pool, most likely from the 1st and 2nd years, who they want to train.  There are aspects of post-grant work that are more like litigation and aspects that are more like prosecution.  They look at what needs doing at the associate level and assign based on whose work they like.  Prosecution and litigation associates alike may get the tap on the shoulder.  I can't think of a single firm that would set out to hire a "post-grant associate" for a 1st year position.  They hire associates.  And do the usual winnowing process.
So you're saying that they would exclusively move associates from within to their post grant group?  So there's little to no chance of joining a post grant group at another law firm without having post grant work experience? 

I'm stuck in patent prosecution!?  I hope not. I can't write another specification from an invention disclosure and then have it changed 40 times by the inventors. 
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ThomasPaine

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Re: Patent Prosecution Burn Out
« Reply #6 on: 03-06-18 at 12:28 pm »

"So you're saying that they would exclusively move associates from within to their post grant group?"

No.  I'm sure there are 2nd, 3rd, 4th, maybe 5th, year associates with post-grant experience that do lateral moves.  You're a 7th year.  It gets harder as you move up.

Think about it from a firm's perspective.  You want to do post-grant work.  You tell them, "I'll learn it on my own time/dime."  That sounds reasonable.  But is it?  Is your other work going to suffer?  That other work is what makes you profitable to them.

I'm not saying it's impossible.  But it's a tough sell. 
« Last Edit: 03-06-18 at 03:05 pm by ThomasPaine »
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fewyearsin

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Re: Patent Prosecution Burn Out
« Reply #7 on: 03-06-18 at 01:31 pm »

Burnout is not unique to any profession.

Make a list. 
What do you like about your current job.  Money?  Is the work interesting?  Good people?  Hours?
What don't you like?
What do you want from your job?
What do you want from LIFE?

You're going to need to balance all of these.

Look 5, 10 years into the future. What do you want?  Sometimes you need to take a step or two back to get forward where you want.  But sometimes what you have is actually pretty good.  A 7th year, I'd imagine you could be making 200k+, and that's nothing to sneeze at.  A lot of people hate their job for a lot less money.  Then again, the AIA is still relatively new, so there are still opportunities if you're willing to find/create them.  But they're not going to jump in your lap.

As for me, I gave up prosecution for examination for the LIFE side of the equation. After about 7 years, I also (again) hit that kind of brick wall.  So I'm reevaluating all those questions above.  I'll probably stay government for the life flexibility, but look for a different position that will pay a bit more or have more interesting work, like SPE or APJ or PCT, etc. 

Anyway, good luck, as always!  Find some things to be happy about in life while you make this transition.
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This comment: does not represent the opinion or position of the PTO or any law firm; is not legal advice; and represents only a few quick thoughts from the author, not a well-researched treatise.  Seek out the advice of a competent patent attorney for answers to specific questions you may have.

blakesq

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Re: Patent Prosecution Burn Out
« Reply #8 on: 03-06-18 at 02:01 pm »

patentnugget,  have you asked your bosses at your current firm if you can start doing post grant work?  I am sure they would love to have you do that work, if they aren't already doing it, so they can keep the fees. 
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PatentNugget

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Re: Patent Prosecution Burn Out
« Reply #9 on: 03-06-18 at 05:21 pm »

Burnout is not unique to any profession.

Make a list. 
What do you like about your current job.  Money?  Is the work interesting?  Good people?  Hours?
What don't you like?
What do you want from your job?
What do you want from LIFE?

You're going to need to balance all of these.

Look 5, 10 years into the future. What do you want?  Sometimes you need to take a step or two back to get forward where you want.  But sometimes what you have is actually pretty good.  A 7th year, I'd imagine you could be making 200k+, and that's nothing to sneeze at.  A lot of people hate their job for a lot less money.  Then again, the AIA is still relatively new, so there are still opportunities if you're willing to find/create them.  But they're not going to jump in your lap.

As for me, I gave up prosecution for examination for the LIFE side of the equation. After about 7 years, I also (again) hit that kind of brick wall.  So I'm reevaluating all those questions above.  I'll probably stay government for the life flexibility, but look for a different position that will pay a bit more or have more interesting work, like SPE or APJ or PCT, etc. 

Anyway, good luck, as always!  Find some things to be happy about in life while you make this transition.

I really appreciate your thoughts! 

My firm is small.  I am not making $200k+.  I wouldn't be be looking if I did.  I want to make more money, but I do have a good work-life balance at my current firm.  I just don't want to do the work anymore.  Like I said i'm burned out and the prosecution business has changed a lot.  Honestly, i dont think there's anyone in a firm small firm (i.e., fewer than 15 attorneys) making $200k+ as a base salary doing nothing but Office Actions and writing applications.  Those days are over. 

patentnugget,  have you asked your bosses at your current firm if you can start doing post grant work?  I am sure they would love to have you do that work, if they aren't already doing it, so they can keep the fees. 

We don't have any post grant work at our firm.  So that opportunity is not available.  Our clients use other firms for their litigation. Thank you also for your reply. 
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