Paul Commander is a Senior Associate patent attorney at Abel + Imray with more than 18 years’ experience across the pharmaceutical and life sciences sectors. Over the course of his career he has held a variety of in-house and private practice roles including stints working for Eli Lilly in the UK and Sanofi in France.
This article (first published in the CIPA Journal May 2022) draws on that experience to compare and contrast the roles of in-house and private practice patent attorneys. It is aimed at those wanting to know more about the “other side”, either with the goal of a career move, or simply as a way of understanding better how to work with clients or outside counsel.
Diet of work
What are the variations in the types of work that can come across the desks of in-house and private practice attorneys? Obviously, in both cases, work can and will vary greatly from day to day and from role to role, but some generalities can be identified. As will be familiar to many readers of this article, the work of a private practice patent attorney is often focused on patent drafting, prosecution and, in some cases, post-grant contentious matters. Whilst increasing seniority in a private practice firm may lead into other areas such as management and business development, the core of the role remains about the nuts and bolts of obtaining, defending and attacking patents.
In contrast, in the case of an in-house attorney, the IP-related work may include strategic elements such as defining and executing an IP strategy that fits with the goals of their employer, in addition to patent drafting, prosecution and litigation (hands on and/or carefully managed outsourcing). The role of the in-house attorney thus often includes liaising with colleagues in other departments such as R&D, sales and marketing, manufacturing and legal in order to identify, protect and enforce the company’s IP, as well as to detect (and hopefully avoid) potential issues related to third party IP. This can often involve a lot of explaining of IP issues to non-experts or, where the relevant people don’t have the time or willingness to engage, recommending and costing solutions to current or potential IP issues. Working in-house often means taking on a much more business-focused mind-set – it’s not just about getting this or that patent granted with the broadest claims possible, but more about determining what the value of a particular piece of IP or portfolio is to the company. This means asking questions such as: how does the IP benefit the business? Is it keeping 3rd parties off the market? Does it actually cover a relevant product or process when potential validity issues are taken into account? Would we ever actually enforce it? Is it useful for licensing or attracting investment? Does it provide leverage over key suppliers? Do its costs outweigh its potential benefits?
Turning to the range of technical subject matter and patent practice issues encountered in each role, the variety may well be more limited in an in-house position when compared to private practice. This is because an in-house attorney effectively works for a single client, which means not only a narrower technical focus, but also a set way of doing things, e.g. always filing priority applications in the UK, or never filing demands for international preliminary examination. This can mean that an attorney who has only ever worked for one in-house employer may have some big gaps in their experience. Accordingly, working in private practice can bring benefits to an attorney, especially when training, as they will likely have wider experience of the different technical and patent practice issues that can arise. Nevertheless, the corollary of the technical area focus of an in-house attorney is often greater depth. To be fully effective, an in-house attorney will need to know the technology area of their employer absolutely inside out. Furthermore, whilst the range of technical subject matter and pure patent practice issues might be more limited for an in-house attorney, the range of different types of IP-related work that come across their desk might be greater. For instance, in-house attorneys may spend significant amounts of their time reviewing legal documents such as confidentiality, material transfer, R&D collaboration, supply chain and licensing agreements, often liaising closely with in-house commercial lawyers, work which is probably rarer in the private practice field. Similarly, freedom to operate (FTO) and due diligence analyses may well form a greater part of the diet of work for an in-house attorney when compared to private practice and, especially in more senior roles, an in-house attorney may get involved in managing international patent litigation, together with departmental budgets, systems and processes.
The day to day role
Of course, a key difference between in-house and private practice roles is the requirement for private practice attorneys to bring in work, invoice their time and meet charging targets. The downside of this requirement is that it can result in high levels of pressure for the private practice attorney, because large volumes of work (resulting from successful business development) can mean long, stressful working hours, whereas low volumes of work lead to the worry that charging targets will be missed and bonus and performance goals will be impacted. However, the upside is that working in a patent attorney firm provides incentives and opportunities to build your own practice and to develop new and existing clients. For those that are successful, the financial rewards within private practice at the senior levels can be very lucrative.
Although in-house attorneys are not usually subject to the need to seek out their own work or account for their time in tenths of hours, the role can bring its own particular pressures. Indeed, whilst a private practice attorney’s job is often to advise and provide all the pros and cons of following one or other option, the final decision on what path to take may well rest with the in-house attorney. If that decision impacts the key piece of IP that supports their employer’s entire business model, then the stakes will be very high. Outside of such make or break decisions, workloads for an in-house attorney can of course also be very high. However, they may well have access to the twin pressure release valves of being able to farm certain types of work out to a private practice attorney, or push back on their in-house “clients” if their demands become too unreasonable or unrealistic. Neither of those escape routes are necessarily options for the over-worked private practice attorney, where keeping clients happy and providing excellent customer service are integral to the job.
Beyond the question of charging, an in-house attorney may find that in their day to day role, team-working and collaboration skills are perhaps more important that they are in private practice. The work of a private practice attorney may often be relatively solitary, and collaboration between more than two or three attorneys on a particular piece of work is rare. In contrast, an in-house attorney may need to directly interact and collaborate with many of their colleagues on a regular basis, often across a range of functional areas outside of IP (R&D, manufacturing, legal etc.). However, this can, and often does, lead to a greater proportion of an in-house attorney’s time spent in (sometimes interminable) meetings.
Turning to the question of benefits, salaries across in-house and private practice roles appear to be broadly comparable at least to the level of experience which equates to the junior partnership level. Beyond that, financial rewards for senior roles in big private practice firms may be greater than those for comparably-experienced in-house attorneys, but outside that relatively small number of senior roles, the difference between private practice and in-house may not be as great as perhaps might be expected, especially when total benefits are considered.
Outside of base salary, where an in-house employer is a large, multi-national company, non-salary benefits (pension, private healthcare, share purchase schemes, company car, parental leave, family-friendly flexible working etc.) may be better than those found in private practice. However, as with many areas of life, the pandemic has upended what were previously considered as certainties and with the need to attract and keep the best talent, improved conditions such as flexible working, for instance, are now much more common in private practice than they once were.
It can be seen from the above that the roles of in-house and private practice attorneys differ in some quite important respects. Which is better for a particular person is of course a matter of personal choice and may differ along the course of a career. However, for those at the start of their careers, a private practice role can be an excellent introduction to a wide range of the key competencies required to be a successful patent attorney. Nevertheless, gaining first-hand experience of what it is like to be an in-house attorney (either in the context of a secondment or as an employee) is to be strongly encouraged for those wishing to widen their skill-set and gain a valuable extra string to their bow.
This article was first published in the CIPA Journal May 2022 edition.