Patent prosecution or trademark prosecution? I have interest in both places but would love to hear the thoughts/experience of others.

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If you can do both, that would be better

I’m patent pros, but some variety would drastically improve my life. Drafting patent apps is a mental marathon

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I currently do both, 85/15 Patent/Trademark. I prefer drafting patent applications, but it is nice to get a break here and there.

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Do you want to work with technology?

The demand for patent prosecutors is much higher than trademark prosecutors (mainly due to the technical degree requirement on the patent side). I think patent-related work is a bit more interesting as well, but I’m a bit biased — YMMV!

How desirable is your technical background?

I do both. (85/15) I love patent work but trademark is so different with the subjectivity of LoC. I write a lot of preliminary screening reports for TM.

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It was suggested I repost this here. Figured you'd all appreciate it.

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In prosecution, if a patent attorney does not try to remove prior art cited by an examiner (eg a 130 affidavit to assert an exception under102(b)(1)(A)), but instead makes arguments to overcome the art, may the attorney made an admission that bars removing the art later in prosecution. Just received such a transfer case, looking for options.

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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Any recommendations for patent prosecution practice management software for a small firm? Currently not using anything and want to be able to better manage and monitor associates.

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

Do you work somewhere where quality is valued over efficiency? Where can I find this? In-house? Small boutique?

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

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

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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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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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Hi, are there any women-owned patent firms in the SF Bay Area that focus on patent prosecution in computer technologies? Thanks!

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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.

Subject matter eligibility "doctrines" .... lol amirite?

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