If you work 1900 hours on a pure prosecution docket (apps/diligence whatnot included) what do you think that equates to on a pure litigation docket? I keep hearing people say it’s easier to work more hours in lit

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You can't compare them like that. Billing lit is much easier though, you can get lost in discovery. Even when doing nornal writing the problem with pros is that it is so flat fee/commoditized that it has extreme efficiency goals. In lit you can be more relaxed and take the time it needs to make something perfect. Lit is also less mentally tiring because there are a lot of tasks you can zone out/half pay attention to. Pros actually used to have a lower hour req than anything else industry wide because of how hard it is to bill in pros but that isn't the case at most firms anymore because profitablity makes it hard to cut hours reqs nowadays.

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Patent prosecution at a law firm makes no sense anymore.

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I feel like patent pros only firms need to resort to tricks to make it profitable. Like my last firm was "overly cautious" with duty of disclosure and decided to cross-cite a bunch of families. There were a few sets where if an office action came in for one, we'd file an IDS citing the 892 in about dozen (sometimes more, and in one case 50+) cases. That's a lot in IDS fees/bills, and it's minimal review by the attorney because each IDS form is identical.

At my current firm they have junior attorneys draft the most routine reporting letters thinking a client won't argue with a 0.1, 0.2, 0.3, etc... it sucks.

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I have made this bowl to help UX/UI Designers to help each others. Feel free to add designers into our bowl.

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Say it louder for the ignorant people in the back.

Post Photo
likesmarthelpful

I'll switch to a startup as the only data engineer and will closely work with all the Head ofs + the CTO.

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Additional Posts in Patent Prosecution

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

For those at small/medium patent pros boutiques, what is your compensation structure, billing requirements, and salary like?

What are the pros and cons of the following IP boutique firms: Finnegan, Fish, Banner Witcoff, Oblon, Knobbe?

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Any recommendations for a document management system that automatically saves emails into the proper folders?

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Any good recommendations for patent industry magazines with regular print editions? too much of my keeping up to date is by blogs.

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

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

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Raise your hand if you received the “paul budnek” email today

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

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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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What do y’all use to draw informal figures? I currently use powerpoint but am curious if there are more efficient ways. What have you found most efficient/convenient?

Is it reasonably possible to jump from patent prosecution to trademark 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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Having some severe Executive Dysfunction atm. I can't imagine that the patent attorney bowl here is short on the neurodivergent. Suggestions/tips/tricks/advice are all appreciated. I recently moved, bought my first home, got vaccinated, etc. - basically just a huge load of stressful events that are probably doing a number on my brain, but I also just can't seem to get on top of.

Please, if you're neurotypical, think thrice before posting - I'm not normal, and want help, not stress or dismiss

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Has anyone regretted going in-house as patent counsel? If so, were you able to successfully transition back to a firm?

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