Patent Litigation Attorney
As a patent litigator you will represent your client in patent disputes. You may defend your client's patent against an accusation of infringement, or you may assert your client's patent against a person or company that the client believes is infringing the patent.
ADAPT Professional Guide
“My experience as a patent litigator in-house gives me the opportunity to learn to litigate before many different judges and courts, and advise my client based not only on legal considerations but also business and reputational considerations.”
- Patent Litigation Attorney, Fortune 100 Company
Undergraduate degree in engineering/science is helpful but is not required
USPTO Patent Bar membership may be helpful but is not required
Law degree and be a member of a state bar
Job Description and Responsibilites
If you are hired as a plaintiff’s attorney, your task is to demonstrate that the defendant(s) are infringing your client’s patent. Part of protecting your client's interests will include identifying potential issues related to the claims of your client’s patent and discussing them with your client.
If you are hired as a defendant’s attorney, your task is to determine whether your client’s product infringes the claim(s) of a patent and counsel your client accordingly. This can look like poking holes in the plaintiff’s infringement theory. Another part of your task is to invalidate claim(s) of the patent asserted against your client (if possible). Additionally, your client may own patents that can be counter-asserted against the defendant. To counter assert, you must build your own infringement theory against the plaintiff(s).
Once a case is filed with a court, the attorney’s job is to help the client navigate through the litigation process. This can include (1) serving discovery requests to the other side to request information or responding to discovery requests from the other side; (2) conducting depositions of key witnesses; (3) drafting briefs to submit to the court to address substantive or procedural issues. An example of a substantive issue is whether your client’s product infringes a patent claim. An example of a procedural issue is a discovery dispute related to some document or information that is being requested and not provided by one of the sides.
Attorneys should regularly communicate with the client’s in-house counsel to discuss the status of the case, any discovery issues raised by the other side, and/or litigation strategy for the case.
Your client is your company, and you are managing patent lawsuits where your company is either a defendant or plaintiff. You hire outside counsel to represent the company, and you manage the counsel and drive strategy decisions. This involves regularly checking in with outside counsel, facilitating their discussions with subject matter experts within the company, attending important hearings and trial, and reporting up to leadership to inform risk. You may also work your company's public relations department to make statements about certain matters to the press.
You will have a large role in mediations and settlement negotiations with the other side, where you advocate for your legal positions but also discuss practical and sometimes creative solutions to arrive at a potential resolution.
Apart from litigations, you may also be involved in investigating infringement of your company’s IP by other entities, advising on the risk of litigation or liability related to a merger or acquisition between your company and another, and providing trainings to other groups in your company around IP hygiene and protection.
As a patent litigator for the government, you are responsible for litigating patents on behalf of the United States of America. There are various federal agencies that you may represent, including NASA, the Department of Energy, the Air Force, the Department of Justice, the International Trade Commission, etc.
As a patent litigator for the government, you are a trial attorney and will likely have much (if not total) independence in managing your caseload, including critical tasks such as developing legal strategy to more administrative tasks like filing motions.
Patent Litigator, Partner
As a litigator, I’m a story-teller and historian, learning about how technology developed and teaching it to a judge or jury. In learning, this may be through interviewing engineers, researching patents and articles, working with experts, or deposing a witness. In teaching, this may be through brief writing, arguing at a hearing, negotiating at a mediation, or examining witnesses at trial. I also serve as an advisor to my clients, protecting their innovations by either enforcing their IP against competitors or providing strategies on how to avoid the IP of others. It’s a thrilling practice that allows me to think creatively and to dig into details of how technology works.
And, this is the path I took to get here.
Criminal andJuvenile Justice Clinic
Legal Studies, Computer Science
Participated in first trial as part of the clinic
Joined silicon valley-based firm
JoinAllen & Overy
Join a global law firm
Promoted to partner
These pros and cons were provided by professionals in the field and are purely subjective.
No billable hour requirement.
Work on higher level strategy decisions rather than go into the weeds of discovery and other litigation tasks.
Consider business issues relevant to the client rather than purely legal matters.
Good work life balance.
Exposure to cutting-edge technology and ability to work with leading scientists and engineers through expert witness work.
Fast paced environment.
Ability to be creative in drafting persuasive legal memos/briefs.
Prestige and purpose in representation the USA.
Much experience to be gained as a result of operating much like a “solo shop” with minimal delegation.
Building a strong network due to collaborative nature.
Work can include very long hours and frequent travel (e.g., for depositions which tend to be often during a court case or for court hearings which may be somewhat infrequent).
Work hours can be unpredictable as you may be working long hours to take a case to trial only to have a client settle the case. After the case is settled, you may not have enough work.
Dealing with opposing counsel can be very frustrating as they raise discovery disputes to slow down the progress of your client’s case.
Not directly taking depositions or arguing in court.
Not being able to dive as deep as outside counsel into cases because you often manage many cases.
Only practicing in the technology area of one client.
Not as many in-house litigation roles available compared to transactional law.
Workload can be intense due to relatively little support (paralegal support is shared amongst many attorneys), minimal delegation.
“My role as a patent litigator allows me to use the scientific foundation and critical thinking skills I acquired while pursuing my marine science degree to understand and interpret patents to effectively advocate for my clients in patent litigation suits.”
-Senior Associate Patent Litigator
Pro-tips on how to land the job
During the first year in law school, apply for an optional 1L summer associate job for patent prosecution at a law firm. This will give you a head start and shows your interest in practicing patent law
During the second year in law school, apply to get a 2L summer associate job. Getting a 2L summer associate job is important because law firms usually hire law students from their 2L summer associate programs so that these law students will work for them after they graduate law school.
Some companies also have summer intern jobs so if you would like to work in-house, consider applying to those. Some companies also have a path to hire directly after law school graduation.
Experience in extracurriculars like debate team and mock trial are helpful to have but not necessary.
With respect to the in-house patent litigator role, most people lateral into this type of position based on previous experience. Experience at a law firm is often considered a prerequisite to an in-house litigator role. A select few are able to join right out of law school if they participated in a special program, such as the Department of Justice Honors Program.