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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Honestly? My billing rate and the pressure to keep the fees down.

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I think we need a patent prosecution union haha!

People need to know this is, at times, literally rocket science-this stuff should not be commoditized!

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TIA

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Additional Posts in Patent Prosecution

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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Which IP firm has best in-house exit options?

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

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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.

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.

Transitioned from my first job (in-house at large tech company) to a boutique firm where "quality" is king. Problem is, every partner/client has their own idea of what "quality" is.

Feeling like I'm starting over brand new, and the stress is really getting to me. Everyone at my old job told me I was at the top quality-wise, but the partners at the firm all tell me it's going to be 2 years before I'm really confident/comfortable. I'm a 6th year. Is this normal? Having bad imposter syndrome.

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

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

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

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

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

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

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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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Reposting from litigation bowl. Question about patent term extension. Let's say the patent covers i) product A and ii) A in combination with B. PTE is granted based on the combination of A and B. This is the first marketing approval of A. Would the extended patent cover someone using combination A and C? I don't think so but would love to have input.

Is it the same answer if someone else was using A, B, and C?

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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?

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

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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