I feel clients nowadays prefer to hire their own in-house or at least a consultant to gatekeeping the patent prosecution. Is this the trend? Will this jeopardize patent prosecution in big law firms who ask for insanely high price?

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Patent pros in big law is already jeopardized. Clients prefer boutiques if anyone

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To me, patent prosecution in biglaw was official dead when Ropes and Gray spun off (spun out?) their patent prosecution into a completely separate firm. It must have been a decade ago. That was the death knell.

Many biglaw places will have a handful a people doing patent prosecution and some counseling to serve existing clients. But the days of getting hired into biglaw as a junior patent prosecution associate and working your way up are over.

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But there are still many biglaws that do have patent prosecution groups, like jones day, Morgan Lewis, Cooley, wsgr, Goodwin etc…

Just another nail in the coffin

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Yup, the c-suite sees their IP unit as cost centers, so there's always a demand from up high to reign in preps and pros costs, which then drives downward pricing pressure, or at least a reluctance to increase IP spend, to outside counsel.

With the ever-increasing billing rates in biglaw, companies are finding out that building their own in-house team to handle their preps and pros matters is more cost effective.

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Not only is pros in biglaw dead, with the rise of AI drafting solutions, boutiques will have to change their business model. Clients want to have AI draft in house and outside counsel just qc

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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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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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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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Does anyone’s practice also include patent lit? I’m thinking of switching from prosecution to litigation (my firm has separate lit and pros practice groups). If you practice patent lit, is there anything that you dislike about it/anything you wish you would have known earlier?

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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?

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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?

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

For me, I dislike drafting the spec to explicitly recite the basic things it does, eg, server talks to client to do <basic action>.

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

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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Any recommendations for free or reasonably priced CLE courses for patent prosecution?

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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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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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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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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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How long does it take you to draft a patent application on average?

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If a client asks law firm A to transfer a couple of patent prosecution cases to law firm B, does law firm A need to deliver all relevant documents to law firm B? Can law firm B just submit POA and access all the files via Private Pair? Thank you

Is it reasonably possible to jump from patent prosecution to trademark prosecution?

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