Throw a piece of meat to the lions, and moments later, the meat is gone.

Throw an invention to patent attorneys, and moments later, a patent application is filed.

OK, so perhaps the analogy is a little extreme, but it goes to the point that lions are hard-wired to eat meat, and patent attorneys are hard wired to draft, file and prosecute patent applications.

There’s no need to understand where the next piece of meat (or next invention) is coming from, just get the patent filed and hope for the next invention to be thrown over the fence. Period.

While we can’t expect lions to learn how to anticipate the future, we can expect intelligent patent attorneys to do so.

In the new First To File era in the US, attorneys should be the “last step to filing”, and here’s why.

Cooley LLP recently announced that two top Intellectual Property lawyers have joined the firm, coming over from Chadbourne & Parke. The two IP attorneys stolen away by Cooley are Walter Hanchuk and John Kheit, both who join Cooley as partners in the firm’s New York office.  Cooley’s IP group now includes more than 110 lawyers and 50 other professionals and represents many of the world’s leading technology and life sciences companies. Kheit is a long time personal friend of mine.

At Chadbourne & Parke, Hanchuk was chair of the firm’s IP practice and Kheit led the firm’s Mobile Technology practice group. Hanchuk joins Cooley’s national IP group as chair of the firm’s New York IP practice and will be driving the strategic growth of the firm’s IP practice in New York.

“Walter and John have developed one of the premier IP transactional, litigation, and patent asset creation practices in New York,” said Joe Conroy, Cooley’s New York-based CEO. “Their extensive experience in all phases of IP, including a particular expertise in financial services and software technologies, extends the reach of Cooley’s IP practice in New York and creates powerful synergies across our core IP and business technology practices across the firm.”

Stradling Yocca Carlson & Rauth, P.C. (“Stradling”) announced today that Stephen Kong has joined the firm as a Shareholder, where he will be based out of the firm’s Santa Monica office. Mr. Kong will continue to focus his practice on technology transactions and intellectual property licensing.

“Stephen has terrific experience in the digital, entertainment and consumer products spaces, where he was most recently Senior Corporate Counsel for Sony PlayStation,” says David Lafitte, Shareholder and Director at Stradling. “The firm continues to expand its presence in the digital entertainment and media space and Stephen makes a terrific addition to our growing team in Santa Monica.”

Mr. Kong’s specific practice emphasizes patent and trademark licensing and transactions, general technology transactions, content licensing and streaming, IP support for corporate M&A and financing deals, and open source counseling. Mr. Kong has represented clients in various industries including consumer electronics, e-commerce, semiconductor, aerospace, retail and food and beverage.

WASHINGTON — The U.S. Department of Commerce’s United States Patent and Trademark Office (USPTO) announced today its proposal to update the USPTO Code of Professional Responsibility to conform to the Model Rules of Professional Conduct of the American Bar Association (ABA), versions of which have been adopted by 49 states and the District of Columbia. The USPTO is seeking public comments on the proposal for a period of 60 days, ending December 17, 2012.

This proposed rule package adopts most ABA provisions wholesale or with minor revisions and codifies many professional responsibility obligations that already apply to the practice of law. Specifically, the proposed rules will streamline practitioners’ professional responsibility obligations, bringing USPTO obligations in line with most practitioners’ state bar requirements. The package also proposes to eliminate the annual practitioner maintenance fee.

Thompson Hine LLP, a business law firm with offices Atlanta, Cincinnati, Cleveland, Columbus, Dayton, New York and Washington, D.C., recently announced Clifton McCann, who practices in the area of intellectual property dispute resolution, has joined the firm.

McCann, who is now a partner in the firm’s Intellectual Property group, joins Thompson Hine in the firm’s Washington, D.C. office, coming over to the firm from Venable LLP. The addition of McCann comes several months after several other recent additions of what the firm refers to as “top tier laterals.”

McCann, a patent attorney with more than 30 years of experience, focuses his practice on the development and defense of patent rights in the chemical, biological, mechanical and software/business method arts. His technical background is in chemistry, biotech and physics, and he is admitted to practice before the United States Patent & Trademark Office, in the District of Columbia and in the Commonwealth of Virginia.

McCann’s practice involves a full range of intellectual property services with an emphasis on litigation, which makes up about two-thirds of his practice.

HAPPY INTERNATIONAL BE KIND TO LAWYERS DAY!  (Previously known as National Be Kind To Lawyer’s Day!!) Have you not heard of it?  Have you not read my article on this Special Celebration from years past?  If your answer to these questions is NO, then you, my friend, are missing out (especially if you are a lawyer)!

So, what is this International Be Kind To Lawyers Day?  I am so glad you asked!  Steve Hughes, a non-lawyer from St. Louis, has been working with attorneys for many years now through his consulting firm Hit Your Stride, LLC. Whenever Steve merely mentions that he works with lawyers, he is more often than not met with snide comments, jokes and scowls.  He hears things like, “Lawyers?  I bet that’s a treat.”  Or, “Lawyers?  You poor thing.”  So he asked himself, “Is it too much to ask to be nice to lawyers for just one day?”  And in answer to his question, not to mention as a result of his playing defense counsel for an entire profession, the idea for National Be Kind To Lawyers Day was born. 

Lately I have received a lot of requests from independent inventors who have drafted their own patent application and want me to review it prior to them filing it with the United States Patent and Trademark Office. The reason for having an attorney review a patent application drafted by an inventor are obvious — they want to make sure that they did everything properly.

The requests I have received lately go something like this: “I have drafted a patent application that is 30+ pages of text, plus claims and 10+ drawings.  I would like to have you review the application before I submit it to make sure I haven’t made any mistakes.  I also hope this review doesn’t take you more than 1 hour to complete.”One hour to complete? I don’t even believe it is possible to carefully and critically read and absorb an application of that length in 1 hour or less. This is an unrealistic request and one that is sure to turn off an experienced patent attorney who might otherwise be willing to help.

Lately I have been getting a lot of inquiries again from inventors who are interested in contingency fee representation.  There is no such thing as contingency representation for purpose of preparing, filing and ultimately obtaining a patent.  Patent attorneys and agents just don’t take contingency clients when the matter is patent procurement.

I write on this topic with some frequency, the last time being the spring of 2011.  Please don’t take offense, this is a “tough love” article that may come across as a lecture.  I have always believed that the overwhelming majority of inventors want to hear it straight and are looking for a road-map to get from point A to point B.  The thing I preach all the time, and the theme of this article, is understanding the industry.  The more you understand about what you should do, when you should do it and the economic realities facing the various players you will come in contact with the better off you will be to safely and successfully navigate the difficult waters of going from invention to money.

Every so often I hear something about how it is unfair or unjust that patent attorneys charge so much money for the services they provide. When I hear that I always chuckle. It seems that universally people believe that whatever a patent attorney charges goes straight into his or her pocket. If only that were true!  On Wednesday I published an article titled Patent Strategy: Discovering Crucial Patent Examiner Data.  As the comments to the article progressed on topic for the most part, things started to get a little off topic just a bit, which is what is prompting this article.

In Patent Strategy I explained that a reasonable quote for an office action response is $2,000.  Certainly it can be more depending upon the technology, but if you were going to poll patent practitioners from patent attorneys to patent agents I suspect you would come out with something close to a $2,000 average.  This prompted one patent examiner to comment: “You said in this article that practitioners make $2,000 per response on average. How much do examiners make per response? Probably a fourth or a third of that. I mean I try to do the best job I can but do you really expect all examiners who get paid a fourth or a third of what you make to perform at the level that you do?”

It is that time of the year when we frantically look for appropriate and interesting holiday gifts to give to friends, family and clients. Christmas comes each year predictably on December 25th, but Hanukkah moves around and this year will start at sundown on December 20th, so time is running short, particularly if you are like me and you are going to be purchasing many (if not most or even all) of your gifts online. Amazon.com has a great deal on shipping too — it’s called Amazon Prime and the annual fee is $79.  Amazon Prime gives you free two-day shipping or $3.99 per item on one-day shipping for all eligible purchases.  Not every purchase is “eligible,” but those things sold directly from Amazon seem always to be “eligible.”  So you won’t spend an arm and a leg in shipping fees even if you wait to the last minute!

With the economy still unsettled, extravagant gifts aren’t likely in many budgets.  That means creativity will reign supreme.  With a little extra thought you can give a really cool gift to that special someone, whether they are a patent attorney, inventor, law student or computer geek.  With that in mind, below are some suggestions in order to help you find some fun, thoughtful and appropriately cool gifts for the geek in your life.  The best part is the price means that one or more of these items should fit almost any budget.

The United States Patent Office is now offering the patent bar examination in electronic format, and that means that the way you study for the exam needs to change. In the past test takers were permitted to bring in with them any materials they wanted except for old exam questions. The ability to bring practically anything into the examination lead to people tabbing the Manual of Patent Examining Procedures, creating detailed and easy to use outlines, and bringing easy to follow flow charts and tables. Gone are these days, but when you do take the examination you will be provided with an electronic copy of the Manual of Patent Examining Procedures, so at least a part of your study needs to be centered around familiarizing yourself with search techniques and strategies that have a chance of success come exam day.

I have been teaching the PLI Patent Bar Review Course since March 2000, so I know a thing or two about how to help students pass the exam.  Recently I published 5 Tips for Passing the Patent Bar Exam.  What follows is a sequel to that article; more specifically an additional 5 tips for passing.  If you are inclined to implement these tips and strategies be sure to integrate them into your practice and not for the first time on exam day.

In order to become a patent attorney or patent agent and represent inventors or corporations before the United States Patent and Trademark Office you first need the proper scientific training and then you need to take and pass the Patent Bar Exam, sometimes referred to as the Patent Agents Exam or Patent Registration Exam.  The test, which is administered via computer, is an open book exam, but the Manual of Patent Examining Procedures (MPEP) is like no other book you have ever seen. It is sometimes random and haphazard, it is redundant, and it is exceptionally boring. Nevertheless, the MPEP can be your life line. The biggest mistake that anyone could make is that an open book exam is not terribly difficult. Open book exams are more difficult than closed book exams because the tester can ask more pointed and specific questions than could reasonably be asked in a closed book exam. Familiarity with the MPEP is essential to success.

Since March of 2000, I have been a principal lecturer in the PLI Patent Bar Review Course.  This means I have devoted a good portion of my professional life to working with students interested in passing the Patent Bar Exam. As a result, I have come up with a number of tips that should help you develop a personal strategy for tackling the Patent Exam.  Do remember though that any strategies you are going to employ should not be first unveiled on exam day.  Weave these and any other strategies you want to develop into your exam preparation for maximum success on exam day.

Louis Foreman, the producer of the Emmy Award winning PBS television show Everyday Edisons and the publisher of Inventors Digest, announced in April 2011 that he was launching of a $25 million Innovation Fund. Phase 1 of the search for inventions for the Fund to invest in was completed in mid-June 2011.  Phase 2 of the search for inventions and ideas has just begun and will run through Monday, September 12th, 2011.

“The Fund is off to a great start and we have received some very innovative technologies as part of the first wave,” Foreman said. “I am amazed at the creativity and ingenuity. It just reinforces our original premise that everyone has a great idea, but most people don’t follow through. The Fund has become a catalyst to submit these ideas and see if they have commercial viability.”  The proceeds of the Fund which will be invested by Edison Nation to bring innovations to market.  Inventors who have their inventions or ideas selected will share in any profits with Edison Nation.

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.

It is important for inventors to understand that there is reluctance among some patent attorneys to take on “independent inventors” as clients. Part of the problem is that some independent inventors take up an extraordinary amount of time and rarely convert into clients. Even if they do convert into clients many want to pay a low rate for certain agreed representation and are upset when more is not done by the attorney. I have even heard inventors openly complain that their patent attorney wants to charge them every time they call. It is important to remember, however, that the only thing an attorney has to sell is time; whether that be to perform legal services or give advice. Giving time away for free on a routine basis is a recipe for business disaster for an attorney.

With all this in mind, how does a serious inventor find the help they need and a reputable, experienced patent attorney? Inventors who want a reputable and experienced patent attorney will do themselves a great favor if they try and understand the business realities facing the patent attorney.  There are only so many hours in a day to work, and spending a lot of with those who are not likely to turn into clients, or good clients, is not typically a winning business strategy.  Therefore, you want to present from the outset as someone who is serious. Keeping this in mind will pay dividends as you seek out a patent attorney you are comfortable with, who you trust and is able to collaborate with you to form a good and prosperous working relationship.