I feel like I'm going crazy. I switched from a very good patent pros firm to a good litigation firm that only does pros as a loss leader. When I got here I noticed things on the pros side were a bit out of date but figured not my circus. I ultimately got thrown some pros work and the claims were terrible, so I really cleaned them up thinking it was from another firm or maybe a bad translation. Turns out partner already "rewrote them" and doesn't want to do too much more.

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Not at all surprising. It's common to see Biglaw firms listed as attorney of record on patents with completely garbage claims. The work is often done by inexperienced agents with little to no oversight (as you've described)

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Yeah Big Law is not the place for patent prosecution. They are terrible at it. And even if you do well there and clients see you do good work your supervisor will stuff the living daylight out of you in a review. You are going to get the sack. Never do great work at a big law firm. I wrote a patent the client called the best work product they have ever seen. My supervisor made an excuse and filed that under her name. Then gave me a terrible review as well. Never do good work at big law prosecution. Do standard template work.

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Yeah I mean to be fair, just because the client or inventor thinks the patent is great doesn't mean it actually is but usually partners want what the client wants so idk why they wouldnt be happy. And the craziest thing is I definitely thought I was doing standard template work by reorganizing the claims in a more precise/more standard format 😅 the only thing that kept me sane is that another pros lateral at my firm also thought the claims were bad

They are ripe for a slew of 112s and confuse different aspects of the invention, and the examiner also clearly hates the claims as well from the pros history. But the thing that bothers me the most is I think this guy thinks I'm the one that doesn't understand claim drafting or sophisticated pros strategy and that my revisions overly complicate things or clarify too much.

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Is your new firm a general practice biglaw firm or an ip only firm? Curious bc I have been considering moving to a general practice firm for a while and have the exact same concerns.

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No wonder. My former coworker at a prosecution only boutique once moved to a biglaw firm that has been expanding its patent litigation practice aggressively recently. She was not impressed with the quality of their prosecution quality either. I would avoid these firms since I know I’m going to stick with prosecution. Working at a firm that cares to deliver high quality work is important for client development and partnership prospects.

You are not alone.

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When a firm only does prosecution as a loss leader, you can usually tell. You are not crazy. It’s a common issue.

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The only resolution is to leave.

I'm an idiot and can't tell if you're joking lol but no I am just going to distance myself from pros work

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Additional Posts in Patent Prosecution

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

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

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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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