The Top 10 Things New Patent Practitioners Should Know

By Gene Quinn
June 26, 2011

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.

Without further ado, here is the list.

[Patent-Search]

1. How to Write a Patent Application

Writing a patent application is not as easy as you might think it is.  There are a number of books on writing patent applications available, and probably the most popular is Patent It Yourself.  You should get a copy of that book and review it, but you should not treat it as the gospel regarding how to write a patent application.  There are things the book suggests that you would never see a patent attorney do in an application.  Nevertheless, it is a very good place to start your learning.

PLI has a treatise titled How to Write a Patent Application, which is excellent.  It written for attorneys and patent agents, where Patent It Yourself is written for independent inventors. How to Write a Patent Application walks you through working with the inventor, doing patent searches, writing the specification, drafting claims and filing a patent application. I recommend this book for all newbies and have taught law school courses using this book as the text.  If you can afford another PLI treatise I highly recommend Mechanics of Patent Claim Drafting by Faber.  The entire book is about drafting claims, with examples for a variety of different subject matter.  These two PLI treatises will give you access to the very best information on drafting patent applications.   I also recommend you read:

I also have a system that I call The Invent & Patent System, which I market to inventors for helping them create their own provisional patent applications.  It is also an excellent tool for learning how to write a patent application and I just used it for that purpose in the patent course I taught at John Marshall Law School several weeks ago.  I also use this with my clients to collect information from them about their invention prior to even doing a patent search.  This way I can get as much useful information from them as early in the process as possible.  If you are interested in using this tool or mentoring contact me.

2. The Patent Box

The Patent Box is a website that delivers patent-related software tools.  Currently, The Patent Box provides a web-based research tool for patent professionals. Additional tools are currently under development for use by both patent professionals and inventors.  IFW Insight is a web-based application for searching, sharing and collaborating on US Patent Image File Wrapper (IFW) documents, which are also commonly referred to as “File History” documents.  IFWs are created by the USPTO as image-based documents, and are thus not searchable.  Notwithstanding, by applying optical character recognition (OCR) algorithms The Patent Box is able to expose text data embedded within these image-based documents, thereby making them fully searchable.  The IFW Insight search interface includes powerful search features including support for both proximity and Boolean search operations. So if you are looking for an example of some type of filing you can search with IFW Insight and find examples you can model your own filing after.  This is an excellent tool and any patent practitioner would do well to check it out.

3. National Association of Patent Practitioners

The National Association of Patent Practitioners (NAPP®) is a 501(c)(6) nonprofit trade association. The organization was founded by patent practitioners, mostly patent agents, who had an interest in forming an organization that is focused on procedure before the USPTO. NAPP supports its members by disseminating information via newsletter and its two e-mail discussion forums: the General Discussion Forum and the Patent Practice Forum™. The General Discussion Forum provides a forum for members to discuss a variety of issues from member-to-member referrals to Patent Law Reform. The Patent Practice Forum™ is focused strictly on patent practice issues and allows for an on-going daily discussion between members on issues related to practice before the USPTO, PCT Practice and Foreign patent practice. These discussion forums are extremely active and members ask for and provide substantive advice on a daily basis. If you have a question someone in the organization will almost certainly be able to point you in the right direction.

I am a member of NAPP and I can’t recommend this organization highly enough. The cost to join is about $200, but what you get is far more valuable than that. For example, it is extremely difficult to find malpractice insurance for patent work, but NAPP has worked together with Dominion Insurance to create affordable (and I do mean affordable) malpractice insurance. A little over a year ago I was sued by an Invention Promotion Company and this NAPP policy picked up defense costs, so I can tell you first hand this insurance offers real coverage. The only way to get access to this insurance is to join NAPP. Every patent agent, patent attorney or patent firm should join NAPP just for the insurance.

4. Finding a Job

There is no magic to finding your first job in the industry, but there are some things you can do that will put you in a position to be hired, whether full-time or part-time.  First, you have to ask yourself what YOU bring to the table that is unique.  If you qualify to take the exam chances are that you have some meaningful scientific background.  Focus on those things that you know something about and do a patent search in order to find out which attorneys and which firms are operating in that space.  Your resume will jump out far more if you target attorneys and firms that work in a space where you have some technical expertise.  So target those firms, and consider tailoring your resume for the job for which you are applying.

5. Networking

The way you get a job and the way you attract clients is through networking.  There are numerous patent bar associations scattered across the country.  Find one that is nearby that have regular meetings (typically monthly meetings) and join.  I would suggest that you arrive resume in hand, but certainly have business cards printed up so you can pass those out.  Whenever you offer a business card the natural response is for the other person to offer you a card, so collect business cards and then follow up.  Don’t expect to get a job, but get to know people.  You can then try and turn contacts into a job by gathering information.  Perhaps ask some to review your resume and make suggestions, or ask whether they know any firm or attorney that might be hiring in your area or in need of part-time assistance.  The more you connect with those in the industry the more you learn.

6. Overflow Work

One way that many patent agents and solo patent attorneys pick up work is by being available to help other patent attorneys and larger firms with what is known in the industry as “overflow work.”  An established patent attorney might find himself or herself overwhelmed with work several times a year.  When your work pile gets too high you might need a little help getting through the work in a timely manner, but you might not have enough work to bring on an employee full-time.  It is at least somewhat common in these circumstances to seek out others who might have some additional bandwidth to help you on a project by project basis.  Perhaps create a first draft of a patent application, maybe go through a patent search and identify those references that are the most pertinent, perhaps create a first draft of a response to an Office Action, etc.  In fact, some patent agents have their own clients but then receive a substantial amount of their work from a variety of other attorneys.

7. Reading Patents and Files

One way you can learn about what goes on in a patent case is to read patents and then review file histories.  As we all know, there is very little you cannot learn if you are willing to read and put in the time.  Do a patent search to find some patents that you know something about from a technical standpoint and then read them.  If you read enough patents, particularly well drafted patents, you will start to see patterns.  When you find some patents that you think seem particularly well written go to Public PAIR and find the file history.  Read the rejections given by the patent examiner and read the Amendments filed by the applicant’s attorney or agent.  You might want to save some of the patents and responses that you find particularly interesting so that you can create your own file of examples and illustrations.

8. Patent Searching

If you are going to do your own patent searching you will want to become familiar with the United States Patent Office patent search page. There is also an excellent Help Section on the Patent Office website to educate inventors on how to use the online search features. There is also another excellent (and free) site that you should use when searching – Free Patents Online. Whenever I search I always use both the USPTO and Free Patents Online. Perhaps the best thing about Free Patents Online is that they provide copies of the actual PDF documents, which contain all the images. Using the images on the USPTO website is cumbersome to say the least.

Google also offers patent search functionality with Google Patent Search, which is lightening fast (unlike the USPTO online database), but does not have that many search fields.  There are also some holes in the database.  I have specifically looked for patents I know to exist and cannot always find them.  Additionally, the most recent patents are not available on Google.  What this means is you cannot only rely on Google, but you really must use Google.  The Google database covers patents that are issued all the way back to US Patent No. 1.  This scope is much broader than either Free Patents or the USPTO .  So while you might not find everything, you really need to check yourself using the Google database.

Most times when a patent agent or patent attorney needs a search they hire a professional search firm.  There are many available to choose from.  I use Walsh IP for searches.  I find their searches to be exceptionally comprehensive and their turn around time very reasonable.  Notwithstanding, if you do want to do your own patent searching you should really be sure to read Patent Searching 101 and Patent Searching 102.  Both articles give more advanced tips.

9. Client Trust Accounts — Accepting a Retainer

One thing that virtually every patent attorney and patent agent learns is that if you do not get the money from the client up front you are not likely to get paid without expending large amounts of time chasing clients for payment.  At the end of the day you will also simply not be able to collect everything you are owed because clients will sometimes simply refuse to pay, particularly if you opined that their invention is not patentable.  It is a sad reality, but the last person in line to be paid always seems to be the lawyer.

This is why most require payment in advance for the services to be rendered.  What is critically important to understand, however, is that you MUST have a separate account that you use ONLY for the purpose of holding client money that has not yet been earned.  This is called a Client Trust Account.  You ABSOLUTELY CANNOT co-mingle business funds with unearned funds and you MUST have a separate account.  I cannot stress this enough.  If you do not have a separate Client Trust Account you are breaking the Ethics Rules and you very well cold be disbarred.  At the very least if you get caught you will be suspended from practice for a very lengthy time (think years).

If you are also an attorney you should consult with the State where you are admitted to find out what particular requirements might exist for maintaining client funds.  Generally speaking it is as easy as opening a separate bank account and then placing all unearned money in that account.  Once the money has been earned you transfer the funds out of that account and into your general business account, leaving whatever portion of the fee that remains unearned.

10. Client Agreements

The minute a client contacts you to seek your advice or potentially hire you the attorney-client privilege (or agent-client privilege) attaches and everything you learn must be kept confidential.  But what if you do not accept the case?  You still must keep information confidential.

One particular problem arises, however, when the individual believes you have accepted the case.  If the prospective client thinks you represent them then you do, regardless of whether you actually entered into a representation agreement or not.  This is one of the many reasons why you want to make sure that everyone understands that representation will not be accepted or undertaken unless and until a written representation agreement has been entered into.  With an eye toward this, in every e-mail I send I have the following at the bottom:

DISCLAIMER: Please know that if you are interested in legal or consulting services no services will be provided or representation undertaken except after entering into a written representation agreement and the payment of the required retainer.

You will want a written agreement with everyone you represent that spells out the scope of representation.  For example, if you are going to do a patent search and provide a written opinion you want to define that clearly so that it is understood that no further representation (i.e., the filing of an application) will be undertaken absent a further agreement and further payment.

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and President & CEO ofIPWatchdog, Inc.. Gene founded IPWatchdog.com in 1999. Gene is also a principal lecturer in the PLI Patent Bar Review Course and Of Counsel to the law firm of Berenato & White, LLC. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 6 Comments comments.

  1. Just visiting June 26, 2011 10:14 pm

    A few thoughts.

    Don’t read file histories. Odds are that both the Examiner and the attorney are incompetent. Instead, read BPAI decisions. Also, look up the cases cited by the BPAI – sometimes what the case says and how the BPAI cites it are different. Regardless, if you want to learn the law, that is the best place to start.

    I would also never accept a “retainer.” As commonly used, a “retainer” is a amount that is used to guarantee that the attorney will be available to take whatever matter the client brings. Notably, it certain jurisdictions, it is refundable to the client upon request. Of course, it can be defined differently in an engagement letter, but I would always use the term “pre-paid legal services” instead of a retainer (i.e., if the client doesn’t pay the bill, you tap into that amount). Also, make sure your engagement letter gives you the right to fire the client at will. Bad clients can make your life miserable, so make sure you can get rid of them if needed. FYI – a client that has been through a couple of attorneys before they come knocking on your door is very likely one that will be a bad client.

    If you haven’t taken the USPTO bar exam, do so … at the earliest opportunity available – preferably while you are still in law school. I recommend taking it before your third year starts. With the exception of having experience, nothing says (to an employer) that you are ready to practice like a USPTO registration number. Also, I recommend reading the MPEP from cover to cover and taking notes. You made not need to do this to pass the USPTO bar exam, but you’ll be using the MPEP for the rest of your career – make sure you are familiar with all of it.

  2. Jeff June 27, 2011 9:07 am

    Interesting and informative article. Regarding crafting claims- I’ve found Invention Analysis and Claiming, A Patent Lawyer’s Guide by Ronald D. Slusky very helpful and insightful for practitioners working at every level.

  3. PS DIP June 27, 2011 9:32 am

    Re: 8. Patent Searching –

    Gene, please don’t recommend the USPTO web based search page to anybody trying to do anything resembling an efficient patent search. It is a horrific tool that very few professional patent searchers go near. I know the ‘quality bar’ for our unregulated industry is pretty low, but not even the true bottom feeders go to the USPTO website to do much of anything (besides checking fess and PAIR).

    If you want to search on a government provided patent search tool, give the EPO’s Espacenet page or WIPO’s PatentScope page a whirl. And if you actually want to recommend that practitioners provide search services for clients, please highly recommend they intimately learn the pluses and minuses of any tool or database they access (Intellogist provides good summaries). The catchphrase of our industry is: know what you don’t know.

    Also, make sure a newbie or part time searcher who is only doing ‘hunt and peck’ style searching is sticking to novelty work (with all the appropriate disclaimers). While anybody with a pulse can throw five or ten facially relevant references on a sheet of letterhead and call it a clearance search, there is a gargantuan difference between that and methodically identifying the 1,000 to 10,000 references which could potentially be infringed and manually reviewing every one of them to make a decision on a one by one basis which to forward to the bigger fish up the chain.

  4. tifoso June 27, 2011 3:48 pm

    You left out the simplest search, that of the internet itself. Not everything is patented. If you find a hit on the ‘net, then the invention may lack novelty. To do a proper search, use a “metasearch engine”, such as, the one at http://www.metacrawler.com, not Google, etc. It is not a search engine in the usual sense. The string you enter will be sent to Google, Yahoo, Bing, Ask, and other search engines. If, for example, Google does not have the hit but Ask does, you will not find it using Google but you will with Metacrawler.

  5. Inventor0875 June 27, 2011 8:53 pm

    You may want to also include advice on recognizing and avoiding “conflicts of interest”.

  6. step back June 28, 2011 3:23 pm

    @Just Visiting (comment #1)

    Excellent points, all of them.

    Reading BPAI decisions may be asking too much of a newbie patent practitioner.

    But definitely do not rely on what other attorneys do and do not copy them just because “they all do it that way”. That is a recipe for downstream disaster. The blind leading the blind toward the edge of the cliff.

    If you are truly a newbie patent practitioner, then there is no substitute for taking a good patent practice course. (I’ve taken PLI courses and courses from those “other” folk and have found both to be pretty darn good. No one knows everything and it is certainly useful to take a review course every once in a while even if you think you know it all.) Aside form taking a review course, there is no substitute for hooking up with a good mentor. You learn by doing and by having your work product reviewed (red lined) by a good mentor. Good luck to all who have newly joined the ranks.