The jump from IP Industry to Private Practice

Traditionally in the world of intellectual property there has been a bigger want for industry and in-house work. In my time in the IP field I have noticed that industry certainly seems to have a bigger pull factor for most IP professionals than private practice does. This is for a variety of reasons; the opportunity of being close to R&D, working in a varied team of professionals, specialising in one technology or field, the commercial aspect etc.

However, in recent years at Caselton Clark we have seen a slight reverse of this trend. A movement of IP professionals (majority attorneys) from industry to private practice, particularly at the levels of Counsel and Director. This has worked both ways, law firms recruiting from within industry to capitalise specific industry skills, and more in-house attorneys keen to leverage their experience within private practice.

While it can be seen as an unorthodox move, candidates and clients stand to gain from this shift. But what are the positives to this outcome, and what should an IP professional focus on if they want to make this jump?

From industry to private practice

What could you offer to a law firm if throughout your IP career you have been predominantly working within industry? Arguably your insights would be invaluable. Working from a commercial viewpoint of IP gives you unique experiences of licensing, strategies, budgeting and commercial acumen. Unless involved closely with business development and decisions that affect the company, an attorney at a law firm isn’t likely to have much exposure to these elements. A seasoned attorney from an in-house position will have a mixture of traditional drafting, prosecution and opposition skills needed for a law firm, combined with the commerciality found in industry. Diversity of skills can prove a progressive approach, particularly when many firms are looking for a unique selling point or avoiding going stale.

For example, we recently engaged with a firm that felt they were lacking in being able to give clients, and prospective clients, further IP services including commercial strategy in their IP. In this competitive marketplace, this is what they were looking for and as a consequence a lateral industry to private practice hire plugged that gap. Equally, we have had industry roles whereby the private practice individual equals the unique perspective the client was after.

As IP recruiters, myself and Arthur have also seen what could be labelled as ‘industry fatigue’. Those that have worked exclusively within industry can find themselves being pigeon-holed into their positions or careers and are in need of a change of pace. (I must note that this isn’t exclusive to industry, and many can feel the same way in their desire to move from private practice to industry). In-house roles can become too unique and specialised, therefore finding a promotion or even a lateral move into a similar position can prove very difficult.

One can also find that their position veers too far away from what they were originally trained to do or hired as. This is similar to being lost in a large company. When you are employed by a multinational corporation that operates as multiple entities across the globe, it can feel like getting lost in the machine. Particularly as the world leaders in manufacturing, pharmaceuticals, electronics, and any technical field, have thousands of employees to their names. We have had several individuals confide in us that they feel left out of the wider picture in a large company and that their decisions and ideas are ultimately ineffective or unheard. This can be as an individual or as a whole team/department. Some find that the move back into a law firm gives them back the voice and input they felt was being wasted.

However, it must be stressed that these are usually the outliers and the majority find themselves very comfortable within industry. We are simply shedding light on the ways that those who feel disenfranchised in an in-house position may aim to make the transition and express their concerns.

But for those looking to make the move, what can you do to ensure a law firm sees it from your perspective? Some points to consider;

• With individuals who have built up their commercial awareness in-house, you might be well connected within your network, or enjoy good links in the wider community that can be leveraged. Don’t be afraid to make this clear to a potential employer and the advantages this would bring.
• Business development may be a big pull for the client. You have had exposure to the commercial side of IP and may come from an experienced platform of negotiations, deals and balancing compromises.
• You may however be rusty on the billing aspect and this can be a concern for firms. Make it clear you want to work with them on this and that you aren’t afraid to put this to a discussion. “How will you work with me to achieve the number of billing hours expected?”
• Perhaps they have historically hired those from industry – “How have others made the transition when joining from industry?”

Should you need further advice or would like to discuss these points further, please feel free to get in touch.