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. Dr Adam Tindall from Appleyard Lees explains what the difference in work and environment can be within corporate and private practices for patent attorneys.
Some IP lawyers work directly for industrial firms (corporate or ‘in-house’) while others work in specialist law firms (private practice). In-house jobs are rarer, with most attorneys working in private practice. I trained and worked in-house for a huge engineering firm, then moved to private practice, giving me a relatively balanced view of both camps.
While the core skills are the same, they can be very different jobs. 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, customer care and business development. Introduce an attorney who has had a lifetime in private practice into an industrial office and they may be dazzled by the demands of portfolio management, internal networking and decision making.
Industry is more IP savvy now than ever before. Depending on where you end up, 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. Hence you may find yourself to be an important part of the commercial stability and development of your employer. This responsibility can be exciting but also overwhelming, but usually there are plenty of people in senior positions in relevant technical areas happy to advise.
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 you will be working with incredibly clever, creative and passionate people who have interesting things to say and show you. You occasionally have to deal with difficult people and questionable ideas, but probably less often than in most other jobs.
Being an in-house patent attorney can be a very social occupation, and an ability to communicate, establish and maintain relationships is key. However, if you prefer, it is possible to find roles where you seldom have to leave your desk and can churn through work while others do the “people” stuff.
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.
Some departments do all of the work themselves, some farm it out to private practice and some do both. For those that outsource, this puts a burden on the shoulders of the attorney to consider the business relevance of what they are doing to justify 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, should such an elevated opportunity arise. Industrial attorneys may spend much of their career 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 be part of the mix, further developing the attorney’s advocacy skills. Hence a trainee and a highly experienced attorney may have a very similar diet of work. As an attorney becomes more senior, they may take on more managerial and training roles and ultimately significant strategic responsibility, or specialise in specific areas, subject to business need.
Ben Charig, a European Patent Attorney at Ocado explains the difference between working in-house vs in a private practice, having worked in both areas. “As an in-house attorney I interact more closely with my colleagues than I did in private practice. This is true of my dealings with my attorney colleagues, with whom I work collaboratively on lots of matters, and of my dealings with my inventor colleagues. I tend to get involved at an earlier stage in the inventing process than I did in private practice. This can be more rewarding and ultimately fruitful than being given an invention disclosure and left to draft a patent application in isolation – I get a deeper understanding of the motivations behind and advantages of the invention, which can help create a more robust and persuasive patent application. It can, however, extend the drafting process.
Not every in-house patent department or role is the same, of course, just as not every private practice firm or role is the same. In some in-house departments, the in-house attorneys manage rather than create IP portfolios: they decide which inventions to pursue patent protection for and in which territories. They then negotiate licences for the technologies protected by their families of patents, and make other commercial decisions, while the drafting and prosecution work is outsourced to private practice attorneys who make proposals for the managing in-house attorneys to accept or reject.”
An attorney in private practice is expected to advise and educate 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.
Private practice attorneys see a wider range of technology and brands than those in industry, and control of work flow is less easy to achieve as any client may contact you at any time with a need for immediate action. 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, which lasts until you pass the requisite number of exams. The level of trust and autonomy given to you will depend on competence and the policy of the firm. Some companies do not let you talk to a client until you are qualified, whereas some expose you to the outside world provided you can 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 should complete and also their responsibilities regarding business development (e.g. bringing in new work for the firm and/or managing existing clients). Being good at these is standard for achieving partnership level, if this is your goal, but this can mean very different things depending on which firm you ultimately end up working in. In some firms, 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 far 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 any failures will likewise have an impact on the firm and your career development.
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 find yourself without a job, but you may have to move around in order to find one that offers you complete job satisfaction.
Questions to Consider
Whether you go for industry or private practice, remember that IP professionals are in short supply. Be sure to ask about internal and external training opportunities, as training is going to be a big part of your life for at least the next three years. Ask to go for coffee with current trainees and quiz them. Most likely they will not tell you any negatives about the firm you are interested in, but they almost certainly will be honest about what life is like with their employer.
In private practice, one’s relevance to the success of the firm is far more obvious than in industry.
Salary and benefits vary widely. It is worth knowing about reward packages, but your real focus should be finding a 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 you find there rather than the type of 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.
Dr Adam Tindall worked as a mechanical engineer and then trained to become a UK and European patent attorney with Rolls Royce. He is now a Partner at Appleyard Lees, a leading firm of European patent and trade mark attorneys.
If you found this article interesting head to our Employer Directory to see who is currently recruiting; you may even find your future employer.