Amazing how many PPs get away w/ shoddy work and charge $$$$. A couple times a year a startup comes to me to take over their portfolio because [senior partner at big firm] is charging a lot and they don't have a patent after 5 years. I take a look at their case and see it's seen like 10 Office Actions and 4+ RCEs with virtually no progress responding to 101/103 arguments and the other attorney has conducted exactly zero examiner interviews...I could go ON but I'm out of room, but just 🙄😑

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I’m at a medium sized firm and love getting these transferred to my firm. One or two office actions and they are almost always allowed. It’s crazy.

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Can’t agree more. There is usually a decent path to allowance that reveals itself pretty quickly once you are familiar with the file.

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Chances are senior partner at big firm has never even looked at the file. Unless you’re paying 20-30k for an app and 5-8k for an OA response (which some companies are), it just doesn’t work with biglaw partner billing rates.

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Also a good reason for clients to add an extra billable item for examiner interviews in addition to base OA budget. Sometimes, they don’t help, but more often than not they’re worth the 1.5 hours of prep and call time.

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I love fixing others problems too

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#Opentowork

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Need 11 likes for enable DM.

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Additional Posts in Patent Prosecution

I’m looking for a tool that allows me to search for text in Office Actions and responses. For example, is there a way to search for ‘written description’ or ‘improper Markush’ issued by Examiner John Smith? Does something like this exist?

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Does anyone find an attack on the Examiner’s prima facia showing of obviousness a lot more effective than distinguishing each and every prior art reference.

I recently underwrote a reply to final. Didn’t even bother with the references since I just got the case. Overcame the rejections.

Can anyone comment on how effective this is?

likehelpful

I do prosecution and am looking to lateral. Does anyone have recommendations on firms to consider, or ones to avoid? I’m flexible on location.

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What do hiring partners (or HR in in-house) generally think about a lateral that are in the middle of a part-time MS degree program (STEM MS program)?

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A frustrated colleague asked for help with a difficult prosecution. I agreed to help. I just reviewed up the case and the examiner is combining NINE references. I think that’s a record for me. What’s your record for most number of references combined?

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I’m a patent pros. paralegal working in bio/chem at my firm, 26 yo with an MS in Chem at 100k and a 115 hr billable req.
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