Is there any hope for the future of patent prosecution compensation? Most of us are drafting applications for the same amount we charged in 2020 ... or 2015 ... or 2005.....

Would PERA / PREVAIL passing have an impact? Will retirements cause a shortage that boosts compensation? (Been hearing that one for a while).

Every year it makes less and less sense to stay in this brutally difficult profession while other fields see regular compensation growth.

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It’s too commoditized. The only way to improve it is to become the boss and spend your time getting work for the firm and reviewing work. Or you get out and go in house, which I highly recommend.

likesmart

...same amount I was charging in 2000.

Is there hope? Sure. If the value of an issued patent were to 100x, then the rates one could charge for prosecution would increase and then your comp would as well. What do you think would be the catalyst for such an increase in patent value?

It's more likely that generative AI becomes useful eventually and becomes a force multiplier for experienced patent prosecutors. The only bright point, and this is from a sour grapes perspective, is that life sciences is finally experiencing the pricing pressure that tech has been enduring for decades now.

My advice to you? If you're young and you've got better options, take them.

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Partners that service prosecution or only have clients with prosecution work will be second class citizens in any partnership with a litigation practice.

No amount of legislation is going to have the impact you think. AI is going to bite into our budgets pretty heavily. Unless volume increases significantly (which is possible, as R&D departments are going to get more productive and there are already tools that automatically harvest inventions from looking at Confluence and Jira etc.), there just won’t be enough for people to do.

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Additional Posts in Patent Prosecution

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

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?

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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I am working on a NFOA for a design case. The Examiner identified a primary references and four secondary references. The Examiner also pointed out five differences between the primary reference and the claimed design. For the reply, I found nine additional differences between the claimed design and the primary reference, two of which are not present in any of the cited references. Should I clarify the level of a designer having ordinary skill in the art first? Complex/Expensive article. TY!

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

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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

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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How do firms handle export control rules compliance for inbound disclosures for new filings?
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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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Subject matter eligibility "doctrines" .... lol amirite?

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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.

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.
After the mental beat down that was grad school, I’m happy to have straightforward tasks and mentally coast, but my attys want me to start studying for the patent bar asap.
I like where I’m at and I know that once I start down the tech spec/agent/attorney path, it’s going to be full speed. How long do you think I can/should stay in this position before starting to study?

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

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

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

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First year associate thinking about making the just from medium sized reputable IP firm to In House. Started at said firm summer of 1L year as a law clerk/patent agent in May 2019, have worked through school and full time as associate since Sept 2021. Feeling very “stuck” in day to day work. Love the patent/IP space but drafting and pros w/minimal human interaction is getting very difficult. Thinking In House would be better, but not sure how much experience needed. Thoughts?

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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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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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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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