How much of a prosecution role just pushing emails? Lately, I have been sending out a lot of emails re: deadline reminders, formalities, assignments etc. it feels like 50% of the job is sending out emails. Anyone with other similar experiences?

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chasing clients is part of many practice areas but paralegals should really be doing most of it

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Prosecution becomes a nut house unless staff can handle these emails. Ive been there. If I were you I'd bill at least 0.1 for every single one of them.

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I do bill for all the emails! We are a lean group where support staff is also swamped. I like to bill for these easy hours.

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Additional Posts in Patent Prosecution

Would patent folks out there use software that digitizes an office action? That is, the UI will link to all the cited art in the office action and will highlight cited paragraphs of the art.

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What would you say the going rates are for (i) non provisional application drafting and (ii) office action responses?

Has anyone on here ever requested redaction of a filed application? I'm looking to redact a few paragraphs of a provisional application.

In what order do you draft a patent application? I know the official answer is “it depends.” But what do you find yourself do most often? For me, it’s claims —> drawings —> spec.

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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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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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Where the best way to process POA for a large number of patent applications?

Is it to get a form 82 signed and attach it to different transmittals for each application and file separately in each case? Is there an easier way?

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?

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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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Just curious: how much time would you bill for on prepping instructions to a FA for a response? Feel free to break down by how long you’ve been practicing, complexity, or any other factor you think is relevant.

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Taking the patent bar in a week and it’s been so tough studying while working. I’m so behind in my hours this month, and my firm (midlaw, IP only) was pretty clear that they expect my hours to stay on track this month regardless of the exam. I don’t know how I’m going to get through this week and then make it through 6 hours of testing. Please tell me the afternoon session is easier than the morning session, like some others have said 🙏🏽

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What do folks find most frustrating about patent prosecution? Drafting, OAs, client relations, other?

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Bit of a niche topic: I’ve been in TS/SCI processing for a Science/Tech/Weapons analyst position with the CIA for 3 yrs since I finished grad school in chemistry, but CIA positions are sort of set it and forget it since they can take so long. I’ve since been focused on a Patent Attorney track and am with a firm that will support me taking the patent bar/law school. If I get through processing and go to the CIA for some time, do you think would I be accepted back into patent law later on?

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Prosecution associates - what are your hours looking like this year?

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How do firms handle export control rules compliance for inbound disclosures for new filings?
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How many billable hours do people in prosecution tend to average each month? I’ve gone through waves of feeling like my billable hours requirement is reasonable to feeling like I’m drowning and can’t possibly do it for that long.

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Any tips on starting a solo patent law firm from working in Biglaw? Worth it?

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