Patent Prosecution Puns

I'm not very good (yet) at being able to identify the real issues in an OAR and then forming a sound legal argument around them. Obviously time and practice, but I am looking for some self-education materials that will teach me how to do this or get me in the ballpark.

I have an offer to join a BigLaw firm in their patent litigation practice as a SA or a mid-size firm doing as a SA in their patent prosecution.

From a career standpoint, what is better - patent prosecution or patent litigation? Which one will be easier to find a job in?

FYI, I have an undergrad in EE. The BigLaw firm is a general firm (aka not an IP giant like Fish or Quinn).

P.S. Neither firm let me split. So I have to pick between one or the other.

Hi, guys! Any and all advice is welcome.

Some background info: I am a rising 2L at T25 school with an undergrad major in biomedical engineering. I unfortunately didn't do anything patent-related this summer (I worked for my state's AG's office in the civil litigation division), so I have absolutely no clue of what to expect. I don't know if this matters, but all six firms are considered are big law--three of the firms have HQs in Minneapolis and the other ones are located within the East Coast. Each interview is 20 minutes.

I should also mention that I am aware that patent litigation doesn't require patent bar eligibility, but I honestly don't know whether I want to practice prosecution or litigation yet. Thanks!

I’m a law student having to choose between being a SA at two different law firms doing patent litigation or patent prosecution. I’m a rising 2L, so I haven’t even taken any IP classes. Which one would be better for me career wise (for example what is easier to find a job in if I have to lateral)? I have no idea what I’m doing so any guidance would be appreciated.

Patent prosecution fixed fees have mostly been stagnant for the past decade, meanwhile attorney billing rates have been skyrocketing to keep up with the big law firm market rates. Efficiency can only be improved by so much before you are forced to just eat time since the fees are typically fixed for applications and OA responses.

So, for those who mainly practice patent prosecution and are at a big law firm, what is it like trying to meet the typical 2000 billable hours? How much time do you generally spend on applications and OA responses? Do you have to eat lost time? What are your general thoughts about the direction of patent prosecution for the future as it relates to BigLaw?

The reason I am asking is, though I find patent prosecution to seem interesting, I do not want to major in engineering for undergrad and usually bio/chem related patent lawyer jobs require phds. Are non-technical ip focused law positions common?

What countries are your favorites and least favorites for prosecuting in these days? I’ll start...

The Good

USA - am licensed here, the law is pretty flexible, Examiners tend to be mostly reasonable

Japan - extremely competent and fair examiners; generally quite favorable to good data

South Korea - similar to Japan

Australia and New Zealand - usually pretty easy to get allowed claims

Canada - ditto

South Africa - no prosecution...need I say more?

Europe - my hatred of basis aside, generally pretty fair...

The Bad

All of South America - get your shit together, guys.....especially Brazil and Argentina

Middle East - the paperwork alone is enough to make me never want to prosecute here again.

India - really, no method of treatment or use patents?!!

The Ugly

China - UGH. Extremely important market with extremely unreasonable Examiners

I passed the patent bar exam last month and am having a difficult time with the job search. I’m only seeing job postings for electrical engineers and I feel like my degree in biomedical engineering is disqualifying me from consideration. Is there anything I can do to show firms that I am qualified for the entry level patent agent positions? Is the Patent Agent Club a good network to join? How’s the state of the job market right now? I hope that it’s abnormal.

Hi guys, what do you think of petitions, do you look forward to filing them or refrain from them? I am curious about your experiences with petitions and challenges if any.

Thanks!

Do patent attorneys partake in the development of the business? If so, to what extent is the usual?

What are some common roles that patent attorneys take beyond prosecution?

The class is taught by John White and Gene Quinn who are best known as the Patent Bar guys.

https://www.ipwatchdog.com/patent-practitioner-training/

The class is directed towards patent prosecutors with less than two year of experience.

I’m a first year patent prosecutor at a BigLaw firm and trying to get as much experience as I can. Unfortunately, my firm isn’t the best at training new prosecutors so this seems like a good way to bolster my skill development. I’m just not sure if it’s work the 2k price tag.

Since it’s a new course, I’m having trouble finding reviews online. I’d love to hear from anyone who has taken the course.

Thanks!

I'll be graduating next year with an advanced degree in Mechanical Engineering. I'm based in Chicago and I am interested in working as a patent agent/specialist for an IP law firm. However, many IP law firms require xxx years of experience in IP in order to hire someone as a patent agent. Besides, the economy doesn't look very well in the coming year.

If I am unable to find a patent prosecution job, is it possible to become a paralegal at an IP law firm for some time to gain some experience?? Am I overqualified (or under-qualified) for a paralegal role?

For those of you who work in IP, would you say it's a reasonable path?

https://www.supremecourt.gov/DocketPDF/19/19-324/114984/20190906142125051_TechnologyProperties%20Petition%20E%20FILE%20Sep%206%202019.pdf

Please see the bolded text to skip all the fluff. Thank you!

1. This question is the one causing me the most stress right now. My firm does flat rate billing for most prosecution matters, meaning I have to worry about my hours being cut for that type of work. When I first started (a few months ago), I would just bill as many hours as required as I knew there was no way I could meet those hours starting out. Now, I'm starting to look at our billing charts for certain clients and I'm realizing that, despite what I felt was an improvement in efficiency from when I started, I'm still billing way above what we're charging in certain matters. And that's not even taking into account the supervising attorney's time in reviewing my work! My question is: when did you actually become good/efficient enough that you could meet the flat rate fees to the client(s) without self-cutting? How long did it take you in months/years? To put it another way, how long did it take you to not feel like you're constantly underperforming as a patent/intellectual property attorney?

2. I haven't gotten much litigation work under my belt. My firm mostly does prosecution and they hired me from my Summer Associate position with that in my mind. It's my understanding that the larger firms mostly take in people with litigation experience rather than prosecution due to the seemingly cost-cutting pressures of prosecution from clients. For the purposes of marketability and long-term career prospects, how important is it to start focusing on litigation as early as I can--especially if I want to move to a Big Law firm?

3. I also want to try some trademark/copyright matters (in both prosecution and litigation) if for nothing else than to just get some more diverse experience. Similar to question two, for the purposes of marketability, how important is experience in the soft IPs?

Thank you again for any answers! I'm obviously new to all of this and could definitely use any advice you guys give me.

This job pays $90,000.

Feel free to PM us here on Reddit if you apply:

https://www2.jobdiva.com/portal/?a=l3jdnwevvwx8cha7bemwz8bzb004ay0445ibn3bffcf820bx0e6saeifyv8cb763&compid=0#/jobs/13285793

Job Description

Professional Qualities:

Great attitude
Works well in a team environment
Dependable and reliable
Very punctual, always arrive on time
Pleasant and diligent
Excellent customer service

Responsibilities and Duties:

Preparing formal documents, USPTO electronic filings, and client communications
Monitoring large dockets electronically; formatting specifications for electronic filings; preparing and formatting amendments for electronic filings.
Typing letters, briefs, memos and various other documents; coordinating client billing; coordinating travel arrangements.
Scheduling and organizing meetings and appointments; screening and answering telephones.
Establishing and maintaining files for the attorneys.
Proficient working with MS Word, Excel and PowerPoint.

Qualifications:

A minimum of three years of patent prosecution secretarial experience.
Prior experience acting as a liaison between attorneys and clients.
Comprehensive knowledge of U.S. patent prosecution filings.
Detail-oriented, self-motivated, and excellent oral and written communication skills with an emphasis on accuracy and proofreading.  
Ability to handle a variety of tasks simultaneously.
Flexibility to work additional hours, as necessary.
College degree or equivalent experience.

Hi /r/LawSchool, as the title says, I'm a patent attorney. I went to a T25 law school, and was on law review while in school.

My verification album is here: http://imgur.com/a/HxuhF

I work at a boutique patent prosecution firm in Minnesota, where I practice in the area of patent prosecution, mostly software. I started there in law school as a summer associate and have been there ever since.

Feel free to AMA! I'll be checking in and answering questions throughout the day, and possibly after today depending on interest.

So my current situation is that I work at an IP boutique firm in Silicon Valley that recruited me out of law school over a year ago. I love prosecution, but I hate my firm, I hate billable hours, and I hate Silicon Valley. CS major with a JD from a T30 school (it was free) that sat for Feb bar in Cali but didnt pass (transferable MBE score). Am I limited to doing prep and pros for large tech companies in basically 3 cities for the next couple of years just to get experience or are there patent groups or something of the sort that have more of a start-up vibe. If so, would anybody recommend how to go about making that move?

I started a new job as a paralegal for a large corporation. Coming from a solo practitioner who mainly did fmaily law and some civil. New company is offering to send me to classes for IP training but I'm not sure what's reputable. Does anyone have recomendations? I sent my boss a link to the classes in WIPO and she said it might be beneficial but that she's more interested in my learning about patent and trademark prosecution.

Can anyone brief me on patent law litigation vs prosecution?

Which one would you advise and why?