Understanding how practices differ and what might suit you can often help to focus your job searching efforts, lead to greater job satisfaction and help determine your career path. Adam Tindall from Appleyard Lees explains what the difference in work and environment can be within corporate and private practices for patent attorneys.
Patent and trade mark attorneys practice in a niche but complex area to do with innovation and creativity. For that reason alone, they are both fantastically interesting jobs which will bring you into contact with extraordinary people.
Not so long ago it was common for IP professionals to be qualified in both patent and trade mark law. These animals still exist, but it is becoming the norm for patent specialists and trade mark specialists to work side by side in a firm while doing entirely different jobs. Some IP lawyers work directly for industrial firms (corporate or ‘in-house’) while others work in specialist law firms (private practice).
I trained and worked in-house for a huge engineering firm and then moved to private practice, which wins me the right to be flattering and critical about both.
While the core skills are the same, they are very different jobs. Resorting to analogy, it’s like comparing the skills needed to drive a racing car and a taxi. For both, you need to know about steering and changing gear, and be oblivious to the existence of an indicator. But a racing car driver would be ignorant of the backstreet shortcuts an experienced cabbie would know, and a taxi driver would not know how to take a car around a bend at incredible speeds without spinning off the track (although he/she might try).
Both roles can ensure you a lifetime of enjoyable challenges. Those that have worked all their life exclusively in industry or private practice can have interesting comments about what it is like to work over the wall, although they do have valuable comments to make about their own habitat (should you ask, and you should).
Drop an attorney trained and experienced in industry into private practice and they may be astonished at the demands placed upon them by a constant need for timeliness, speed and customer care. Introduce an attorney who has had a lifetime in private practice into an industrial office and they may be dazzled by the administration, bureaucracy, organisational structures and requirement to integrate and communicate with their immediate team and dozens of people in an ‘extended’ team throughout the organisation.
Depending on which company you end up working for, corporate IP departments generally require their attorneys to consider the issues of their firm as a whole, and to make judgments based on their understanding of what might be best for the company. This responsibility can be a little overwhelming, but usually there are plenty of people in senior positions in relevant technical areas who are willing to advise if you can find them.
Also, attorneys in industrial departments tend to have a focus on harvesting and evaluating IP in its many forms as much as registering and securing it. This is tremendous fun as it gives you the chance to talk to incredibly clever and creative people who have interesting things to say and show you. Your job is to keep asking questions until you understand. As with any job, you occasionally have to deal with difficult people and questionable ideas, but as that can be a useful source of dinner party-worthy anecdotes, it is not entirely wasted time.
Some departments do all of the work themselves, some farm it out to private practice and some do a bit of both. For those that outsource, this puts an extra burden on the shoulders of the attorney to consider the business relevance of what they are doing to justify the fees to their private practice colleagues.
Starting at the bottom, career progression through an industrial department will be from trainee to qualified attorney and then to Head of Department, provided such an elevated opportunity arises. Industrial attorneys may spend much of their career cyclically performing the same tasks of invention harvesting, drafting, and prosecuting month after month with variation coming from different inventions from (mostly) the same core people in the business. Infringement and enforcement issues will also become part of the mix, further developing the attorney’s advocacy skills. Hence a trainee and a highly experienced attorney will have a very similar diet of work, the only difference being how much they are paid. As an attorney becomes more senior, they may take on more managerial and training roles and ultimately significant strategic responsibility.
In an industrial department one tends to feel a little bit remote from the leading edge of the firm. Seldom will any one thing you do clearly have an impact on the firm, although depending on the product line, you will get some enjoyment from seeing the products you have analysed on shop shelves, on the street, in peoples’ hands etc.
An attorney in private practice is expected to advise and educate their clients and then, regardless of whether it’s the right thing to do, in the view of the attorney (within limits), the attorney must then carry out the instructions of the client.
Attorneys in private practice see a much wider range of technology than their colleagues in industry, and control of workflow is less easy to achieve as the private practice attorney inevitably receives instructions last minute from the client. They may also become embroiled in infringement and enforcement issues more often than their industry colleagues.
Career progression in private practice firms starts at trainee level, a status that will last until you pass the requisite number of exams. The level of trust and autonomy given to you will depend on competence and perhaps the policy of the firm. Some do not let you talk to a client until you are qualified. Some expose you to the outside world, provided you are able to present the right image and harvest the right information.
Post-qualification, responsibilities grow in terms of the extent of the challenges attorneys are expected to deal with, the volume of work they are meant to get through and also their responsibilities regarding business development (e.g. bringing new work for the firm). Being good at these is a normal requirement for achieving partnership level, but this term can mean very different things depending on which firm you ultimately end up working in. It is not everyone’s choice to achieve such status in the same way not everyone wants to be head of an industrial department. In some firms, but not all, there are levels within partnership one must work through before reaching the very top of the tree.
In private practice, one’s relevance to the success of the firm is much more obvious than in industry. The amount of money you bring in and the clients you introduce to the firm provide and show obvious benefits, and this can be very satisfying. Of course, it also carries the risk that your failures will likewise have an impact on the firm.
Private practice firms obviously need qualified people, and few industrial companies that have IP departments could get rid of them entirely. As there are not many IP professionals in the UK, it is relatively rare that you will ever find yourself without a job, but you may have to move around a bit in order to find one that you like and gives you what you want. In-house jobs are rarer, with the majority of attorneys working in private practice.
The challenge, then, is to find a job in one or other and give it a go to see if it is right for you.
Examinations, qualifications and training
It is quite difficult to qualify as an IP professional.
For a patent attorney you will need a science or engineering degree (some have two or more) before you even start to train as a legal professional. It is common for firms to require prospective trade mark attorneys to have a humanities degree prior to starting study, with law being a favourite.
For patent attorneys, it is common that you have to qualify both in the UK and in Europe, which can take anything between 4-7 years from the day that you first start in the job. The preparation for the exams is probably more a young person’s game than for someone that has many years under their belt.
Personally, I enjoyed the training. It was highly relevant to the work I was doing, which (frankly) was not a characteristic of training I had ever experienced before. Mostly the training is in your own time, and you meet a lot of intelligent, well-educated and equally eager people united in a common goal of getting through the hellish exams as soon as possible. If you are lucky enough to work for a firm that will support you going on training programmes, then apart from all the work, you are in for a good time. The days on the training courses are hard, but the nights are sociable.
The pass rate for the exams is quite low, as exams go, and for many it will be the first time that they will ever actually have failed an exam. Do not worry about it – most of your qualified colleagues will have failed a few as well.
Some people say training in private practice has the potential to be better than industry, as one is fed a series of problems one has to deal with that one has never dealt with before. In my view, the quality of the training depends on the people that you happen to end up being supervised by and your own ability to seek out and deal with new scenarios. Hence, the next section…
Questions to consider
Whether you go for a job in industry or private practice, remember that people like you are in short supply. Make sure you ask about provisions for internal and external training, because for the next three years at least, training is going to be a big part of your life. Ask to go for a coffee with current trainees and quiz them. They most likely will not tell you any negatives about the firm you are interested in, but they almost certainly will not lie to you that training is brilliant if it is not.
Salary and benefits vary from firm to firm. It is worth knowing about reward packages, of course, but really your concern should be getting that first job in a supportive firm and getting qualified. After that, many opportunities will be open to you.
One sector is not any more valid than the other, and whether you enjoy the job is probably more to do with the people that you find there than whether you are in industry or private practice.
In either sector, this niche area of law has much to offer. If you are curious about the world and enjoy learning new things, I recommend it.
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