Posts Tagged: "patent practitioners"

One of the most common questions I receive from these individuals is this: “Once I pass the patent bar exam, how do I learn to actually start practicing?” Like so many things in life, there is no substitute for experience. Over the years I’ve advised many in various settings, and invariably as I speak with one person there will be others who begin eavesdropping. As a result, I thought I would put together a top 10 list of things that new patent practitioners should know as they prepare to embark on a career as a patent practitioner.

Like so many things in life, experience is the best teacher, but finding a job without some experience can be extremely difficult. For that reason many times new patent practitioners, whether patent attorneys or patent agents, will decide to start a practice and begin representing clients. While there are many important aspects to starting a firm and representing clients, two critical pieces are signing up clients and holding unearned client money in appropriate client trust accounts prior to funds becoming earned.

You’ve passed the patent bar exam. Now what? We have heard that question too many times to count over the years as we have collectively spent over 50 years teaching patent bar review courses. With so many firms cutting back on, or eliminating training, and experience being necessary to get a job, we decided to create this Patent Practitioner Training 101, to bridge the gap for those new to the industry, and to offer a training solution to those firms in need of a ready-made program… At the end of this, course students should have a strong grasp on the day to day basics of patent practice, and a catalogue of examples and templates to draw upon for a variety of the most common and likely occurrences that real life will throw at a patent practitioner.

When a rule becomes a target, it ceases to be a good rule.  In the three years since the Supreme Court issued its opinion in Alice, there have been positive changes to patent applications, but there remains a long-term risk that patent practitioners will use tricks to beat the Alice test.  Here, we focus on the changes to patent applications by drafters, as well as changes to patent applications that have issued since Alice… Previous analyses have reported that patent specification length has been increasing since long before 2010. As shown in Figure 3, from 2010 to 2013, the average patent application length was approximately 12,417 words. However, from 2015 and 2017, the average patent application length increased to over 14,700 words… Alice appears to have resulted in positive developments, such as narrowing the scope of claims and increasing disclosure of technical benefits of inventions in the specification.

In sum, patent prosecutors who operate principally as IP counselors best position themselves to make a greater impact on their clients and build a more profitable, sustainable practice… To an IP counselor, success means getting cases with strategically valuable claim scope allowed. Rather than waiting for the client to initiate discussions, an IP counselor raises the value question periodically during prosecution of an application to confirm that the protection being sought is worth the client’s investment.

Core values are key to avoiding ethical violations. This is because most ethics violations are not intentional. They occur because decisions are being made based on the wrong values (i.e., increased revenues alone) or on emotion (i.e., fear that taking more time to evaluate will be disastrous). Establishing sound core values and strong decision making emotional intelligence skills will help ensure that you do not commit an unintended ethics violation.

There is a plausible case that the US law on obviousness is indeed compatible with the EPO problem-and-solution approach. It could even be said that the steps of the problem-and-solution approach appear to have been inspired by US law and practice! Under present working styles, USPTO examiners concentrate on the claims and spend little or no time reading the description. If they are to initiate obviousness rejections using the problem-and-solution format they would have to change habits and consult the description to locate any effects related to the distinguishing features.

Interactions between patent examiners and patent practitioners are often tense. At worst, these interactions can be an exercise in restraint with both parties thinly veiling their disdain for one another. This adversarial approach can stall prosecution and run adverse to the practitioner’s purpose – i.e., to obtain the best patent claim scope possible for his or her client. Patent practitioners thus could benefit in many instances by having a better understanding of an examiner’s expectations and approaching prosecution with a mind toward working with the examiner instead of against the examiner. A conversation with an Examiner in a mechanical art unit provided the following tips for how practitioners may expedite the examination process by working (to the extent possible) within the examiner’s expectations.

It is the personal relationships and dynamics between those junior and senior examiners where the final, hidden gate to patentability stands. Between them, the junior examiners perform the heavy lifting of searching the prior art and preparing the official actions, and the more senior examiners carry the burden of signing those official actions and allowing applications to grant… To be effective, patent practitioners can do more than narrowly obsess over a single novel and non-obvious element in the claims… Patent practitioners can provide junior examiners with an “elevator pitch” for allowability. They can arm junior examiners with technically clear and concise arguments that are fast to recount and express.