Location and IP law

[cmo]

Hi,
I'm in the process of studying for the LSAT (currently scoring in the 165 - 170 range, reckon I can bump it up further) and intend on applying to law school next year. I'm a PhD scientist working at a biotech start-up company. I've got a solid academic history, equivalent of about a 3.7 GPA for my undergraduate degree in the UK, a MSc degree and my PhD. After working in academia as a research scientist I got a job at a start-up 2 years ago but I have decided to transition to IP law in the future, I am 36yrs old. I am aiming for top 5-10 schools, Stanford being my first choice. I know that in my industry, i.e. biotech/pharma, there are regional clusters in the US where most of the start-ups in this industry sector are concentrated i.e. the Bay Area, Boston, San Diego, Research Triangle, Washington etc. So I imagine that many law firms specializing in IP work tend to cluster near those markets too. I currently live in San Diego but would like to eventually move back to New York or perhaps move to LA once/if I can land a job with a big law firm. I know that there are many big law firms in NYC with IP practices, but I'm not as sure about the LA market. More generally, I'm not sure if you need to be in the area where the biotech companies are located/whether this is an important factor. Does anyone have any insight/opinion about this?

[cmo]

I understand that it's possible to be a patent agent, I said agent, with 'just' the USPTO exam. But I'm interested in having the ability to do more than just patent searches and filing, litigation for example and the other range of opportunities open once you complete law school and pass the bar.

Anyone have any actual answers to the original questions?

[john4040]

More generally, I'm not sure if you need to be in the area where the biotech companies are located/whether this is an important factor. Does anyone have any insight/opinion about this?

Yes, I have an opinion, and I am a patent litigator.

Just look for the firms that have well-regarded IP practices.  Generally, they're near their clients (an exception to this is the EDTX, where defendants are routinely being sued by non-practicing entities).  Then look at the attorneys' credentials to see whether you'd be a good fit.  Generally you can tell that a particular firm does a lot of practice in a particular technological area by looking at the attorneys' undergrad degrees and at some of the cases they've handled.  If you're going to a top 10 school, there's really no need to go to school in the area where biotech companies are located.  If you do well enough in school and you pass the patent bar, you should be able to land a decent job anywhere in the country.

[cmo]

Thank you, very helpful and confirms what I've been hearing from other sources.

[Morten Lund]

More generally, I'm not sure if you need to be in the area where the biotech companies are located/whether this is an important factor. Does anyone have any insight/opinion about this?

Yes, I have an opinion, and I am a patent litigator.

Just look for the firms that have well-regarded IP practices.  Generally, they're near their clients (an exception to this is the EDTX, where defendants are routinely being sued by non-practicing entities).  Then look at the attorneys' credentials to see whether you'd be a good fit.  Generally you can tell that a particular firm does a lot of practice in a particular technological area by looking at the attorneys' undergrad degrees and at some of the cases they've handled.  If you're going to a top 10 school, there's really no need to go to school in the area where biotech companies are located.  If you do well enough in school and you pass the patent bar, you should be able to land a decent job anywhere in the country.

I agree with this poster completely, but would like to emphasize the part about "if you're going to a top 10 school..."  If you attend a middle-ranked school geography becomes more important.  Frankly, though, you will probably be an attractive candidate regardless of geography (assuming that you do ok in law school) - the issue will be more about exposure.  If you are at a second-tier school in the wrong geography you will have to look for firms, instead of waiting for them to come find you.

Good luck.

[cmo]

Thanks for your comment.

Okay, now for some new information. Just today, I interviewed for a position with a technology transfer office in the medical school of a university. The position involves managing the technology coming out of the academic labs at the school i.e. writing contracts, material transfer agreements, licenses, business development etc.
I still intend on going to law school to actually become a lawyer and practice IP law with a firm, but I'm now curious (as I think I have a good shot at this job, and its in NY, a major location of most of the top law firms) about whether this position might be extra value to my CV with my PhD, academic research and industrial/biotech research experience? I'm going to contact some firms in the market to get the opinions of the IP lawyers working there. But I thought I'd see what you guys might have to add. Any thoughts?

[john4040]

Thanks for your comment.

Okay, now for some new information. Just today, I interviewed for a position with a technology transfer office in the medical school of a university. The position involves managing the technology coming out of the academic labs at the school i.e. writing contracts, material transfer agreements, licenses, business development etc.
I still intend on going to law school to actually become a lawyer and practice IP law with a firm, but I'm now curious (as I think I have a good shot at this job, and its in NY, a major location of most of the top law firms) about whether this position might be extra value to my CV with my PhD, academic research and industrial/biotech research experience? I'm going to contact some firms in the market to get the opinions of the IP lawyers working there. But I thought I'd see what you guys might have to add. Any thoughts?

Prior experience in your practicing field is highly valued in the legal market.  This is particularly so in the IP market, where attorneys are generally pigeonholed into a particular area of science.  Three things immediately come to my mind that you may not have considered:  (1) the experience might lead to an in-house position with the medical school or another institution that you're constantly in contact with; (2) the medical school might use outside counsel to perform specialized tasks.  Thus, this might be an opportunity to develop contacts with prospective clients (i.e., the medical school or other institutions), and, assuming the institutions aren't dead-set on using a particular firm for outside counsel, they may decide to throw you a bone one day; and (3) assuming a particular firm is used for outside counsel, you may be able to leverage your position at the medical school into a position at the firms the institutions use.

Just a few thoughts.   

[cmo]

Thanks for your opinion, again very helpful.

The school does use outside counsel for the patent searching, writing and ultimate application process. So my thoughts were along those you highlight i.e. that it could provide some useful in roads, contacts with a future employer.

One concern I have, and it's not a huge one, is that the school whilst good is not a 'top ranking' research institution and the tech transfer office is relatively small. Even though they have one or two success stories, they are small in number compared to other schools I'm familiar with. As law school is my goal, I'm not too worried by this fact. I guess I'm just trying to decide whether staying put in my current R&D position is the right move, if this tech transfer opportunity really will enhance my CV considerably.

[john4040]

Thanks for your opinion, again very helpful.

The school does use outside counsel for the patent searching, writing and ultimate application process. So my thoughts were along those you highlight i.e. that it could provide some useful in roads, contacts with a future employer.

One concern I have, and it's not a huge one, is that the school whilst good is not a 'top ranking' research institution and the tech transfer office is relatively small. Even though they have one or two success stories, they are small in number compared to other schools I'm familiar with. As law school is my goal, I'm not too worried by this fact. I guess I'm just trying to decide whether staying put in my current R&D position is the right move, if this tech transfer opportunity really will enhance my CV considerably.

Can you provide any more insight into what your current R&D position entails -- what are the typical job duties?

Edit:  I wouldn't be too worried that the school is not a top ranking research institution.  Assuming they're pushing out patents and licensing, it should make for a good experience regardless of the size and prestige of the place.

[Morten Lund]

Prior experience in your practicing field is highly valued in the legal market. 

I again agree with John, with the caveat that you should not necessarily expect full seniority credit for time spent outside of firms - this is particularly true for non-legal or quasi-legal jobs.  In other words, a firm might still bring you in as a first- or second-year associate after several years in-house.

I don't view this as a bad thing, however.  Many people are (IMO) far too concerned with their relative seniority.  So unless it offends you to be in the same seniority class with people younger than you, I would also encourage you to forge ahead.

(And a caveat to the caveat:  If you stay with non-legal or quasi-legal for a very long time (a decade or more), firms may start to view you as stale.  At that point firms may no longer be an option.  But at that point you may no longer care.)

Good luck.