Are you a patent attorney or patent agent setting up your own firm? Are you presently at a firm but considering splitting off and going it on your own? There are a great many things that you need to consider and have in order, from a docketing system that will let you sleep easy to malpractice insurance to engaging clients and firing clients to how to handle un-earned client funds held in trust. Here are just a few thoughts.
1. Patent Docketing System
Every attorney who has been practicing for any length of time can tell you that it is essential for you to have a patent docketing system of one kind or another. In fact, having a high quality patent docketing system will allow you to sleep much easier and minimize those episodes where all of the sudden something pops into your mind and you break out into a cold sweat wondering whether something fell through the cracks. A patent docketing system is where you (or preferably your staff) will enter due dates and other deadlines so that that nothing falls through those aforementioned cracks.
I am currently in San Francisco, California, teaching the PLI patent bar review course. Our next live stop will be Boston from July 11-15, and then on to Chicago from August 2-6.
Wherever we go we always get large numbers of individuals who are currently in law school, have recently graduated law school or are engineers or scientists looking to change careers. During one of the breaks between sessions on day 1 here in San Francisco one of the students taking the course asked me a question that we receive quite a lot, which is: Once I pass the exam how do I learn to actually do this? Like so many things in life experience is the best teacher, but finding a job without some experience can be extremely difficult.
As I started discussing some ways to learn the craft I noticed a growing number of students eavesdropping . Soon there were a handful of students in the conversation and still more in their seats listening in. After hours on day 2 of the course I stuck around and gave some advice and answered questions from those who are new to the industry and looking to learn the craft. As a result of that discussion, and many other similar conversations over the years, I thought I would put together a top 10 list of things that new patent practitioners should know.
On Saturday, July 18, the NAPP held a CLE approved “Nuts and Bolts” prosecution seminar for attendees covering topics including Inventorship; Searching; Claiming; Drawings; Combating obviousness rejections; Examiner interviews; Allowance, Issue and Term extension; Knowledge tools; and Building your practice. Speakers included Stan Antolin of Smith & Moore, Kevin Prince of QuickPatents, Inc., David Grossman of George Mason University, Misha Oljaca of Enpaso, Ron Rohde of Carr & Ferrell, Louis Hoffman of the Hoffman Patent Firm, Barclay Tullis of Novelthink and Ron Reardon of Patents & More, Inc.
UPDATED: Tuesday, July 21, 2009 at 6:59pm Pacific Time
The last presentation at the NAPP Annual Conference is presently ongoing, with William Smith of Woodcock Washburn giving a presentation regarding hot topics before the Board of Patent Appeals and Interferences. Smith is a former member of the Board while at the USPTO. His presentation is a good one, and sobering all at the same time. He mentioned my interview with Acting Patent Commissioner Peggy Focarino, and noted that the encouragement of allowances that Commissioner Focarino talked about in my interview is being seen by his firm and evidenced by what he called more “lets make a deal” phone calls from patent examiners who are presumably being told to find ways to issue patents. This coincides with what my firm has seen, and what I have heard from others. Sobering about his presentation so far though is that Smith said he fears that the budget problems facing the Office could cause the PTO to limp through the remainder of fiscal year 2009, and perhaps even limp into fiscal year 2010. He suggested that PTO fiscal year 2010 budget is likely going to be difficult to estimate given current economic conditions, and it is even possible that hiring may not restart in October as had been hoped by many of us. He then suggested there is a chance that even if Congress passes and President Obama authorizes the borrowing from the Trademark Office, the Patent Office may still have to struggle to keep costs down through the end of fiscal year 2009, which will end on September 30, 2009. These budget concerns were raised in a high profile way in a Wall Street Journal article titled Backlog, Budget Woes Await Patent Chief, which appeared in the paper earlier today. I was quoted in the article as being cautiously optimistic of the Kappos nomination, but hoping that he does not take positions only friendly to the high-tech sector.
I am still in San Diego, California at the Annual Conference of the National Association of Patent Practitioners, which is being held at the Embassy Suites Hotel, which is roughly across the street from the U.S.S. Midway. The conference has been a good one with some excellent presentations. This morning there was a Bilski presentation, and since then we have been talking about KSR v. Teleflex. Right now Bruce Stoner, the former Chief Judge of the Board of Patent Appeals and Interferences, is talking about Reexamination generally, and discussing the impact KSR has had on Reexamination decisions. As it turns out, very few inter partes Reexaminations have reached the BPAI to date, with only 11 decisions having been reached by the Board relating to inter partes Reexaminations, with 10 cases still pending. With a limited data set it is hard to make broad generalizations, but it seems that in about half of the cases where the examiner has rejected claims during inter partes Reexaminations those rejections have been reversed by the Board. In a handful of other case the examiner has been affirmed, and in a few cases the examiner was reversed but the claims were rejected on other grounds. Perhaps this is a self selecting sample, or perhaps the sample is just too small. It is a little surprising to see the Board reversing examiner rejections in inter partes Reexamination at such a high rate.
Today I am in San Diego, California at the Annual Conference of the National Association of Patent Practitioners. I will be speaking later this afternoon regarding the status of Patent Office rulemaking and providing an update of Patent Rules that were implemented over the last year, so I have patent rulemaking and patent reform on the mind. Thus, when I saw a press release in my inbox published by the Manufacturing Alliance on Patent Policy, I read it with great interest. As we all know, assuming that patent reform is still alive, it is on life support and struggling badly. Based on the latest research and analysis of by Case Western Reserve University Economics Professor Scott Shane, I would have to say that patent reform is or will soon be completely dead, which is probably a very good thing. While it is unfortunate that Congress will once again not likely do anything useful to assist the beleaguered US patent system, at least they will not do any harm. The pending patent reform legislation, called patent deform by some, would certainly not have helped because it would not lead to any changes that would streamline the US Patent Office, it did not provide more resources to the Office and it would have substantially increased the workload of the PTO, further starving the Office of resources it desperately needs to bring to bear to reduce the epic backlog and pendency problems patent applicants face.
The National Association of Patent Practitioners (NAPP) will be holding the 2009 Annual Meeting and Nuts & Bolts Short Course at The Embassy Suites San Diego Bay, in beautiful downtown San Diego, California, from July 18, 2009 to July 21, 2009. I will be heading from the PLI Patent Bar Review Course in Orange County, California, which runs from July 15-19, 2009, to the NAPP conference. I will be presenting on Monday, July 20, 2009, regarding Rule Changes on Practicing before the Patent Office. Other presenters include Louis Foreman of Everyday Edisons and Eventys (presenting on Innovation from the Inventors Perspective), Bill Smith, a former judge on the Board of Patent Appeals and Interferences (presenting on Hot Topics at the BPAI), Ron Reardon, who is the President of NAPP and President of the United Inventors Association (presenting on Building a Successful Solo Practice), Paul Lerner, who is Senior Vice President and General Counsel for General Patent Corporation (presenting on the Federal Circuit), and many others.