Last month, I caught up with a patent attorney that Adamson & Partners recently helped to move in-house. After three months in her new role, she called to convey her delight at how different her job is. She may still be a patent attorney, but her daily work is transformed.
It is a common idea that in-house work is fundamentally different to work in private practice. It is a common idea because it is often true. Among many other duties, in-house patent attorneys typically harvest inventions and decide which patents to pursue. They do so by aligning the fruits of research and development projects with commercial aims. Such strategic decision making can be a full time job in itself. That’s why in-house attorneys will then turn to private practice attorneys to do the heavy lifting and execution. Private practice attorneys are responsible for fleshing out the application and successfully prosecuting the patent. But generally they will have less insight into why the patent is needed.
This difference in focus and skills is why one of our private practice clients recently rejected an in-house candidate. In interview, the candidate said that he is always curious to investigate and establish why a patent is commercially important. Our client’s feedback was that drafting and prosecuting a patent is hard enough. They didn’t want their attorneys distracted by further details and considerations. This may seem short-sighted, but there is undoubtedly a logic to it. In-house counsels often admit to us that they limit the commercial context they provide to private practice attorneys precisely to avoid overwhelming them with irrelevant information.
Several of our in-house clients also insist that they can only hire attorneys with prior in-house experience. Others are open to helping private practice attorneys transition and instead prioritise hiring candidates who provide the strongest technical fit. These different approaches are explained to some degree by department size. Smaller teams need people to hit the ground running, whilst larger teams can provide an environment in which attorneys can successfully adapt. But that doesn’t always explain the difference. The belief that in-house and private practice attorneys are too different often runs much deeper.
Recently, I have been considering and reflecting on these differences and how significant they truly are. My conclusion is that whilst the differences are real, they are often exaggerated. In some cases, in-house attorneys operate like an outsourced function. They sit geographically separate from research and development, are not always closely connected to the business and continue to focus on hands-on work. In contrast, some private practice attorneys advise small and local clients lacking in-house attorneys. They are intimately involved in devising IP strategy at an executive level. Even private practice attorneys with large multinational clients may manage portfolios with significant strategic discretion.
It is also often too simplistic to assess attorneys based on their prior experience. Careers are not set in stone. Often, what matters is style, attitude and approaches, and patent attorneys can effectively adapt and develop. The fact that someone’s previous experience is in one setting does not mean that it is the best fit for them. You can only make such a call by digging deeper before judging.
Another common assumption is that if you are an extrovert, you belong in private practice. The logic here is that such skills are well-suited for business development. Whilst this is true, such skills are often crucial in-house as well. Clients often remark to us that in-house attorneys must always advocate the value of intellectual property, so attorneys who have pitched for clients in the past could excel at this when they move in-house. Conversely, of course, an in-house attorney could capitalise on the communication skills they have honed in-house and bring extensive credibility to business development activities at a private practice.
If the differences are not so significant after all, how should patent attorneys pick a career path? Whatever your career goals and work preferences happen to be, hopefully it is clear now why it is not obvious where you belong. Depending on the details, the right role could be in private practice or in-house. But setting aside that caveat, it is still useful to draw some broad lessons.
Generally, private practices can of course offer exposure to more diverse technologies. If that matters most to you, find firms with a balanced client base, or consider joining a company that invests widely in various research and development projects for multiple products.
For other attorneys, the technology might matter less. Perhaps you are more interested in the pure mechanics of the law’s application. If so, identify firms and opportunities where you can focus on your files, and develop your skills engaging in the complexities of prosecution when navigating various international patent offices.
But if you find yourself often wondering why a patent is important, the chances are you belong in-house. There you can make more of the strategic decisions that lead to private practice attorneys receiving instructions in the first place.
Either way, if you are in private practice and early on in your career, try to work with smaller clients or secure a secondment. This will help you to decide if in-house could suit you. It will also give you the foundations to make that move if you want to later on. Over time, the transition grows harder and that door can close. There is no downside to keeping your options open and building career capital, even if you ultimately decide to remain in private practice and pursue the promising path of partnership.