The Denver office of Akerman Senterfitt LLP seeks a Chemical Patent Associate with 1 to 3 years of pharmaceutical experience for its intellectual property practice group. Experience in Hatch-Waxman-related opinion work, freedom to operate analysis, due diligence and patent prosecution is considered a plus. Undergraduate degree in chemistry or chemical engineering is required. Must be admitted to practice in Colorado or willing to sit for the next exam. Akerman is ranked among the top 100 law firms in the U.S. by The National Law Journal NLJ 250 in number of lawyers. With more than 500 lawyers and government affairs professionals, we serve clients from major business centers in Florida, New York, Washington, D.C., California, Virginia, Colorado, Nevada and Texas.
Gilead Sciences is seeking a Counsel II – Patent Litigation to work in its Foster City, California headquarters. This position reports to the Head of Patent Litigation and will be responsible for assisting with the global defense of Gilead’s patent portfolio. The title will depend upon the candidate’s years of relevant experience. Specific responsibilities will include assisting with patent litigation in the U.S. and foreign countries, providing support in global opposition, invalidation and revocation proceedings and handling a small docket of patent application preparation and prosecution. The position may occasionally be called upon to assist the department in managing work load by undertaking additional activities as needed to support the IP interests of the company. The position may also occasionally be engaged in activities designed to improve departmental processes and procedures as requested by the Head of Patent Litigation and/or the VP of Intellectual Property.
Essential Duties and Job Functions: • Actively participate in litigation teams by assisting with overall litigation strategy, interviewing fact and expert witnesses, collaborating with outside counsel for the preparation of witnesses for deposition and attending same, collaborating with outside counsel in the selection and preparation of expert testimony • Assist in internal document collection and production • Assist in reviewing correspondence, arguments, memos, and briefs in support of litigation • Assist in providing instruction to local counsel in foreign litigation matters and coordination of consistent positions across various countries • Assist with the preparation of comprehensive patent portfolio summary documents and conducting patent portfolio reviews • Contribute to the development of strategy and arguments related to global opposition, invalidation and revocation proceedings; • Assist in the evaluation of Gilead’s patent portfolio in advance of litigation and engage in the activities to maximize the strength of same; • On occasion, conduct or assist in freedom-to-operate, validity and due diligence analysis and prepare opinions regarding same; and • Collaborating and assisting other IP department professionals to secure patents for Gilead inventions world-wide
Required Knowledge, Experience and Skills: • Bachelors degree in biology, chemistry, pharmacy or other related life sciences degree. • Juris Doctorate and admission to at least one State Bar. • USPTO Registration • Experience: From 5-8 years of relevant experience which will include a broad range of activities including patent drafting and prosecution, due diligence, opinion work, and patent litigation. At least 2 years of experience in patent litigation is required and particularly those with experience in Hatch-Waxman litigation are preferred.
Other: • This position requires demonstration of Gilead’s core values: Teamwork, Accountability, Excellence and Integrity • This position requires working within a team extensively and accordingly, the ability to work collaboratively and efficiently with others is absolutely critical. You must possess strong interpersonal skills and the ability to work well with a variety of different personalities to be successful in this role. • This is an “in-office” position. While occasional, reasonable requests for telecommuting will be accommodated, a regular out-of-office telecommute schedule is not Gilead’s policy and is not a viable option for this position. • Excellent interpersonal and communication skills are necessary, including the ability to speak and write clearly and concisely. • The successful candidate will be a highly motivated self-starter and will be given increasing responsibility. The ability to competently carry-out and follow through on directives and to learn quickly is expected. • The candidate is expected to be proficient at applying legal analysis in a business context. • Demonstrating the ability to independently identify issues, goals, needs and solutions will be key for future success. • The ability to handle multiple tasks in a fast-paced environment is critical. • The candidate must be proficient in MS Office-based applications. • Travel Requirements: Business trips within the U.S. and occasionally abroad associated with litigation-related activities will be required, typically not exceeding 15% annually.
Contact: We are an equal opportunity employer. Apply online today at www.gilead.com.
Additional Info: Employer Type: Large Corporation Job Location: Foster City, California
Gilead Sciences is a biopharmaceutical company that discovers, develops and commercializes innovative therapeutics in areas of unmet medical need. The company's mission is to advance the care of patients suffering from life-threatening diseases worldwide. Headquartered in Foster City, California, Gilead has operations in North America, Europe, Asia and Australia.
Carlson, Gaskey & Olds, P.C.seeks a patent attorney with 4-8 years of patent litigation experience and preferably at least some patent prosecution experience.
CGO is a dynamic, growing IP boutique located in the upscale Detroit suburb of Birmingham. Serving a sophisticated, national client base, CGO's atmosphere is collegial, yet hard-working and its compensation is quite competitive.
Contact: Please send a resume to: hiringattorney@cgoweb.com or Hiring Attorney 400 W Maple Suite 350 Birmingham, MI 48009
Additional Info: Employer Type: Law Firm Job Location: Birmingham, Michigan
The Technology Transfer and Intellectual Property Management Department is looking for an experienced Patent Attorney to help in its mission to protect and best position intellectual property in the physical sciences for commercialization. In this role you will work with cutting edge science and diverse technologies that can impact the world.
Key Responsibilities: Working in a highly collaborative environment, you will: • Prepare and file patent applications. Using the invention disclosure, other documents, and interviews with the inventors, draft patent applications as requested by Licensing associate responsible for the case. Conduct preliminary patent searches, review proposed publications for issues of patentability utilizing knowledge of U.S. and foreign intellectual property laws. Independently establish priorities to accomplish objectives and meet all bar dates. Coordinate and supervise work of external counsel on assigned cases that have been sent out; review associated legal bills for accuracy, reasonableness and compliance with Contract requirements. • Prosecute patents. Review Office Actions/Examiner Reports from US Patent and Trademark Office and those of other jurisdictions. Assess and analyze complex patentability issues with potentially significant impact to the Laboratory. Independently prepare arguments or claim amendments responsive to the Office Actions/Examiner Reports. Coordinate and supervise such work of outside counsel on assigned cases. • Perform legal review. Evaluate and analyze complex invention disclosures and interact with scientists/inventors to monitor for developments. Review licenses, options and other agreements as assigned. Evaluate university rights relative to new inventions. Conduct complex patent infringement analyses and evaluate contract provisions. Interacts with Lab Management, outside management, and attorneys on assigned negotiations. • Provide collegial advice and review to fellow patent practitioners, and participate in process improvement activities.
Qualifications: • Bachelor’s or advanced degree in applicable science or engineering field of study (preferably physics, material sciences or related field), as well as a law degree and admission to California state bar with at least 5 years experience as a Patent Agent or Patent Attorney; or an equivalent combination of education and experience. • Demonstrated proficiency in knowledge of patent preparation, prosecution, and enforcement • Proven technical proficiency in assigned scientific area. • Registered to practice before the U.S. Patent and Trademark Office. • Ability to manage and analyze a number of complex cases that hold a potentially significant impact to the organization. • Ability to independently review, negotiate and approve legal bills. • Demonstrated analytical abilities, with demonstrated ability to identify and resolve complex problems. • Excellent oral and written communication skills, to effectively communicate with all levels of internal and external personnel. • Strong interpersonal skills and proven ability to manage collaboratively and diplomatically with internal peers and colleagues, administrative support staff, scientists and engineers, senior management, as well as external attorneys with ability to obtain concurrence from key stakeholders.
Contact: Apply directly online at http://bit.ly/lbl74251Patently-O and follow the on-line instructions to complete the application process.
Berkeley Lab is an Affirmative Action/Equal Employment Opportunity employer committed to the development of a safe and diverse workforce.
Additional Info: Employer Type: Government Job Location: Berkeley, California
Lawrence Berkeley National Laboratory addresses the world’s most urgent scientific challenges by advancing sustainable energy, protecting human health, creating new materials, and revealing the origin and fate of the universe. Founded in 1931, Berkeley Lab’s scientific expertise has been recognized with 13 Nobel prizes. The University of California manages Berkeley Lab for the U.S. Department of Energy’s Office of Science. Read about the excellent Total Rewards Program at Berkeley Lab. For more about the TTIPM department, visit www.lbl.gov/Tech-Transfer/
Faegre Baker Daniels seeks an experienced trademark litigation attorney for a partnership-track position in our thriving Minneapolis Intellectual Property Group. Faegre Baker Daniels is an Am Law 100 firm with offices located throughout the U.S., Europe, and China. In this position, you will have an opportunity to work on trademark, copyright and advertising litigation as well as handling disputed matters before the Trademark Trial and Appeal Board. Successful candidates should have two or three years of trademark and copyright litigation and TTAB experience as well as strong academic credentials, writing skills and professional recommendations. This position offers competitive compensation and unlimited potential for professional growth.
Contact: Please send or e-mail cover letter, resume, writing sample and law school transcript to:
Trisha Selden, Legal Talent Manager Faegre Baker Daniels 2200 Wells Fargo Center 90 South Seventh Street Minneapolis, MN 55402 Trisha.Selden@FaegreBD.com
Additional Info: Employer Type: Law Firm Job Location: Minneapolis, Minnesota
Nixon & Vanderhye P.C.seeks experienced registered Associate or Patent Agent, primarily for drafting and prosecuting computer and electronics-related patent applications. Candidates should have strong technical and writing skills and experience drafting and prosecuting U.S. patent applications.
The DuPont Company is looking for experienced (Registered) US Patent Agents to work in our Wilmington, DE, Legal organization. Applicants should have extensive experience in preparing patent applications and in prosecution, as well as an advanced degree or equivalent experience in biochemistry, molecular biology, microbiology or bioengineering.
Specifically, applicants should have experience in preparing and prosecuting biotechnology patent applications under USPTO TC1600, including familiarity with PatentIn, BLAST, FASTA, and VectorNTI. Experience with industrial biotechnology and/or bioengineering is desired. Outstanding communication skills are required for interactions with scientists, attorneys and people in business development, as well as the ability to work proactively to coordinate multiple demands and meet aggressive timelines. Experience in foreign prosecution, developing IP Strategies, and Six Sigma are a plus.
Covidienis seeking an IP attorney to work in its New Haven, Connecticut offices (relocation benefit provided). The Intellectual Property Attorney spearheads patent protection for Covidien’s intellectual property and ensures that the Company has the right to manufacture and sell products develop brought to market.
A qualified candidate has deep experience in intellectual property, client counseling, strategic portfolio management and right-to-use studies.
Core Responsibilities: • The IP Attorney advances the specific technical interests of Covidien’s Surgical Devices’ business unit (SD GBU); • Works with research and development to secure disclosures of invention and closely follows development projects for preparation of patent applications in assigned areas of responsibility • Prepares and prosecutes patent applications before the USPTO; • Supervises outside counsel in the preparation and prosecution of patent and trademark applications globally; • Ensures that SD GBU has the right to make, use and sell products developed and brought to market; • Promotes, as appropriate, the interests of SD GBU’s on intellectual property matters and; • Follows patents issued in fields of interest to SD GBU and brings relevant patents to the attention of appropriate SD GBU research personnel and Chief Patent and Trademark Counsel
Competencies/Skills Required: • Strong interpersonal and analytical skills; • Must be able to strategically plan and drive execution; • Exhibit change- agent thinking; • Ability to develop and communicate compelling business arguments in a cogent, persuasive manner; • Comfort interacting with C-level executives; • Demonstrated leadership and teamwork skills and; • Proficient with Microsoft Word, PowerPoint and Excel
Qualifications: • 4 - 6+ years’ patent prosecution, client counseling and licensing; litigation experience preferred • Proven track record of success in a large law firm with a specialization in medical devices and/or life sciences • Admitted to State Bar and registered to practice before USPTO
Additional Info: Employer Type: Large Corporation Job Location: New Haven, Connecticut
The lifesaving work of medical professionals inspires us. Through partnerships with medical communities around the globe, we create advances in medical devices, supplies and pharmaceutical products to improve lives. From reducing surgery time to accelerating healing, our breakthrough solutions are a vital part of daily healthcare delivery.
Innovation drives our success. Through progressive thinking and cutting-edge technologies, Covidien is well positioned to lead the way in today’s rapidly changing healthcare industry.
Join us, knowing your career is backed by the resources only a $10+ billion healthcare leader can offer.
Stoel Rives LLP, a full service regional law firm, seeks an associate attorney with 3-5 years of patent prosecution experience to join the firm’s Portland, Oregon or Seattle, Washington offices. Strong technical background in electrical engineering, mechanical engineering, or optics is required. Excellent academic record, strong interpersonal skills, and USPTO registration also required. Membership to the Oregon or Washington bar is preferred. For more information on the firm and its Technology & Intellectual Property practice group, please visit www.stoel.com.
Candidates should have superior academic credentials and 3+ years of experience in drafting electrical-related patent applications and opinions.
Contact: To apply, please send a cover letter, resume, law school transcript, and writing sample to Rebecca Whittall, Lawyer Recruiting Manager, at rswhittall@stoel.com.
For more information regarding all our openings and how to apply, go to the careers section of our web site at http://www.stoel.com/careersindex.htm. Please, no calls. EOE
Additional Info: Employer Type: Law Firm Job Location: Portland Ore., or Seattle, Wash.
SASis seeking a Patent Counsel to support the company by providing legal advice and assistance throughout the company, including regional offices and subsidiaries on a worldwide basis. You will independently perform a full range of patent-related legal services and maintain a diverse caseload, but your primary focus will be on the preparation and prosecution of patent applications for inventions made by SAS employees. However, you will also be involved in patent licensing, patent litigation and other intellectual property matters that arise from time to time.
Primary Responsibilities for Role: • Managing idea development and harvesting from global research and development. • Processing new ideas to develop complete invention disclosures to help control application drafting costs. • Efficiently identifying prior art. • Providing consistent claim strategy and ensuring that patent applications are efficient and complete. • Working with outside counsel and inventors to respond to office actions from the USPTO. • Supporting managing attorney in litigation and other corporate counseling roles. • Providing legal counsel and oversight for basic to complex legal matters affecting the company.
Essential Qualifications: JD Degree from an accredited law school. Licensed to practice law by being admitted to and a member in good standing of at least one state bar. If not a member of the North Carolina Bar, be qualified for admission to the North Carolina Bar within the first year of employment. Member in good standing of the U.S. Patent Bar.
Additional Qualifications: Works on legal issues of moderate scope where analysis of situations or data requires a review of a variety of factors. Regularly interacts with senior internal and external personnel. Researches and analyzes proposed transactions, assesses risks and rewards, and recommends strategies to minimize risk. Ability to perform the duties of the job with general instructions on routine work and detailed instructions on new projects or assignments. Exercises judgment within defined procedures and practices to determine appropriate action
Preferences: Three years of patent preparation and prosecution (in the software field) experience at a law firm. Undergraduate degree in Computer Science or Electrical Engineering. Former examiner at USPTO. Prior in-house Corporate legal counsel experience managing preparation and prosecution. Experience with patent litigation.
Sterne, Kessler, Goldstein & Fox, a premier Washington, D.C. law firm with an international reputation for excellence in intellectual property law, has immediate opportunities for experienced Chemist patent attorneys.
Successful candidates must possess at least a master’s degree in Organic Chemistry, Medicinal Chemistry, or related discipline. We are looking for motivated candidates with excellent credentials. Candidates with at least three years of experience are preferred.
Position offers the chance for major responsibilities. Candidates who seek to break out of the pack and desire the opportunity to gain leadership experience are encouraged to apply. Position entails direct client contact and all phases of patent practice. This will include patent preparation, prosecution, licensing, client counseling, and litigation. Competitive salary commensurate with experience and excellent benefits package are offered.
Contact: Apply by emailing the firm at: legalcareers@skgf.com. Please use reference number PO-12 when applying for this position.
Additional Info: Employer Type: Law Firm Job Location: Washington, DC
Sterne, Kessler, Goldstein & Fox, a premier Washington, D.C. law firm with an international reputation for excellence in intellectual property law, seeks a Chemical or Biomedical Engineering IP Attorney to assist our growing practice.
Successful candidates must possess a Bachelor's degree in Chemical Engineering, Biomedical Engineering, Mechanical Engineering, or an equivalent discipline. An advanced degree in at least one of these fields is preferred. We are looking for motivated candidates with excellent credentials and at least one to three years of patent law firm experience.
Position offers the chance for major responsibilities. Candidates who seek to break out of the pack and desire the opportunity to gain leadership experience are encouraged to apply. Position entails direct client contact and all phases of patent practice. This will include patent preparation, prosecution, licensing, client counseling, and litigation. Competitive salary commensurate with experience and excellent benefits package are offered.
Contact: Apply by emailing the firm at: legalcareers@skgf.com. Please use reference number PO-12 when applying for this position.
Additional Info: Employer Type: Law Firm Job Location: Washington, DC
Millennium Inorganic Chemicalsis seeking Corporate Counsel to work in its Glen Burnie, Maryland, offices. This position will manage and direct intellectual property and portfolios, including worldwide patent prosecution, patent audit, patent opinion work, copyrights, trademarks and confidentiality agreements involving research, development and technology
•Bachelor’s or Master’s degree in science related field such as chemistry or chemical engineering (Ph.D. preferred) •Juris Doctorate Degree (JD) from an accredited law school •Seven plus years of experience including four years as a member of the United States patent bar •Candidate must be a member of at least one state bar or federal bar and the United States patent bar •Prior in-house counsel experience •Familiarity with recent court decisions relating to patents, licenses, antitrust, secrets, and unfair competition
Rutan & Tucker, LLP is seeking a Trademark Clerk to work in its Costa Mesa, Calif., office. Create and maintain foreign and domestic trademark files. Trademark docket entry and maintenance using IP Manager docket software. Assist trademark paralegal with research and other projects as assigned.
Qualified applicants will possess minimum one year IP docket and filing experience. Proficiency with Microsoft Outlook and Word required. Excellent organizational skills, attention ot detail and the ability to work well under pressure are essential. Experience with IP Manager docket software and Thompson CompuMark Saegis on line trademark system preferrred.
Contact: Send resume with salary requirement to dwilliams@rutan.com. Applicants only.
Additional Info: Employer Type: Law Firm Job Locations: Costa Mesa, California
Westerman, Hattori, Daniels & Adrian, LLP, a collegial, growing 24-attorney/agent international IP boutique seeks a chemical IP attorney/agent with three or less years of IP experience for its Washington, DC office. Candidates must be registered to practice before the USPTO. Prior industry chemical engineering work experience a plus. Preference is given to candidates with a second language capability. WHDA is an equal opportunity employer.
Banner & Witcoff a national intellectual property law firm, is seeking an experienced manager to lead the International Department in either the Chicago or Washington, DC location. The ideal candidate must have a minimum of 10 years in a management or leadership role, and at least 5 years in the international area of intellectual property. The ideal candidate will be detail oriented, have strong computer skills and be able to multi task.
Responsibilities include but are not limited to: • Managing the day-to-day operations of the International Department in both Chicago and Washington DC. • Training and mentoring new and existing staff. • Establishing and implementing departmental policies and procedures. • Preparing estimates for foreign filings and prosecutions costs.
Candidate must have a Bachelor’s Degree; have the ability to understand the rules and practices of foreign patent offices and have a solid working knowledge of international IP regulations. Some US travel required.
Contact: Interested candidates should send a resume and cover letter with salary requirements to: dcjobs@bannerwitcoff.com for consideration.
Additional Info: Employer Type: Law Firm Job Location: Washington DC
Axiom, a modern alternative to the traditional law firm and one of the nation's fastest growing private companies, is hiring attorneys to join our nationwide patent prep and pros practice.
Alums of the nation’s best law firms and corporate law departments, Axiom Attorneys work in a uniquely integrated way with our predominantly Fortune 100 client base. In Axiom they’ve found variety, interesting work, and the chance to be a legal pioneer.
The ideal candidate will have:
• Exceptional academic and law firm credentials; in-house experience with Fortune 500 company strongly preferred. • Undergraduate or graduate degree in electrical engineering, mechanical engineering or computer sciences strongly preferred. • 7+ years of patent preparation and prosecution experience, specifically substantial experience conducting proceedings before the USPTO, including several interferences under the old and new rules, reexamination proceedings, public use and protest proceedings, appeals and foreign oppositions. • Experience evaluating of invention disclosure; searching prior art references; interviewing inventors; drafting applications; filing IDS; responding to office actions; conducting examiner interviews; appealing final decisions; conducting interferences; conducting protests and public use proceedings, and prosecuting reissue and reexamination applications. • Must possess excellent interaction skills with executive management; senior business personnel; business teams; inventors; and general counsels. • Must possess experience managing a large patent portfolio. • Knowledge of computer science, electrical engineering or information retrieval, either through undergraduate degree or industry experience preferred. • Active membership in at least one state bar and registration with USPTO required.
Sterne, Kessler, Goldstein & Fox, a leading intellectual property law firm located in Washington, DC, has immediate opportunities for experienced electrical IP attorneys. Join a team that employs both the best and brightest technical and scientific minds.
We are looking for motivated candidates with excellent credentials and one to four years of patent law firm experience. Successful candidates must possess a Bachelor's degree in Computer Science, Computer Engineering, Electrical Engineering or Physics. Experience in one or more of: advanced Web technologies, procedural and object-oriented programming, computer graphics, geographical information systems, data mining, wireless technologies, and/or operating systems is a plus.
Position offers the chance for major responsibilities. Candidates who seek to work with companies on the cutting edge of their respective industries are encouraged to apply. Position entails direct client contact and all phases of patent practice. This will include patent preparation, prosecution, licensing, client counseling, and litigation. Competitive salary commensurate with experience and excellent benefits package are offered.
Contact: Apply by emailing the firm at: legalcareers@skgf.com. Please use reference number PO-12 when applying for this position.
Additional Info: Employer Type: Law Firm Job Location: Washington, DC
The Coca-Cola Company is seeking a Patent Agent to work in its Atlanta, Georgia offices. Reporting to the Patents Manager, the Patent Agent is responsible for assisting Counsel in developing and maintaining the Company’s patent portfolio in support of the Company's business objectives. The individual is responsible for all aspects of the Company's patent procurement activities, working closely and communicating effectively with scientific, technical, legal and business team members in the process. The individual will review invention disclosure submissions, consult key stakeholders to determine the best filing strategy, prosecute and, where necessary, manage prosecution by outside patent counsel in support of that strategy. This individual will support Counsel and/or outside patent counsel in strategic counseling matters, including opinion work and enforcement matters. The individual will play an important role in monitoring competitive activity and patent filings.
Responsibilities: • Assist in the development and implementation of the Company’s global patent strategy • Prepare, including drafting, file, prosecute and maintain US and foreign patent applications working closely with the inventors and in consultation with other key stakeholders • Assist in identifying competitive products/patent portfolios • Support M&A activity involving technology-based companies, when requested • Conduct and interpret prior art searches • Support client counseling, working closely with Counsel and/or outside patent counsel • Supports the invention disclosure process, with emphasis on fit with business strategy • Other responsibilities and key result areas will be assigned as required
Education & Experience: • Bachelor’s degree or graduate degree (in engineering, materials science, organic or polymer chemistry, molecular biology or other relevant technical degree, with minimum 2 (M.S., Ph.D) or 4 (B.S.) years of experience, including with preparing, filing, and prosecuting of patent applications • Registered before the USPTO • Strong knowledge of patent law • Experience with all common IP software • Extensive experience in drafting patent applications and responses in the USPTO • Experience in managing large, foreign patent dockets • Ability to work proactively, multi-task and meet aggressive IP timelines • Outstanding communication and networking skills and the ability to participate in a multidisciplinary team composed of inventors, scientists, attorneys, technical managers, and business development leaders • Ability to work independently and, where appropriate, with supervision provided by an in-house patent manager • The ability to effectively contribute as a team player • Demonstrated creativity and success in strategizing, structuring, and obtaining robust intellectual property protection for specific technology- related products
Functional Expertise: • Strong technical writing and patent drafting skills (min. 10-15 patent applications to draft per year) • Strong understanding (including current and historical knowledge) of products and technical literature and innovation • Superior English written and oral communication skills • Strong research and analysis skills along with an interest in legal issues concerning patents • Training or practical experience with patent classification systems and/or patent search tools (e.g., Innography, Thomson IP) • Understanding and applying procedures, regulations, and policies related to areas of specialized expertise • Utilizes technology-based tools and processes • Continuous learning and development • Customer service and results-oriented
Guest Post by Rick D. Nydegger. Mr. Nydegger is the former Chair of the Patent Public Advisory Committee and a Past President of the AIPLA.
The USPTO's release last week of its Proposed Patent Fee Schedule will likely spawn a wide range of reaction. Almost certainly some will raise a "hue and cry" and claim that the USPTO is needlessly enriching its coffers in a way that unfairly disadvantages the community of USPTO users. Others, like Horacio Gutierrez, Corp. VP and Deputy GC for Microsoft, will tend toward a more balanced view. In comments posted Feb. 9, 2012, Mr. Gutierrez observed that "Arguably there is no good time for a fee increase, and some will question whether increasing fees in challenging economic times is the right thing to do. But to us, there should be no question that now is the right time to have a discussion about the benefits of investing in further improvements in patent quality and the potential costs of delaying that investment." Mr. Gutierrez is right – this is the right time to have a discussion, and that discussion, at least in the initial stages, should focus on the big picture questions:
How important is reaching 10 months to first action and reducing total pendency to 22.9 months by 2015? This is a major assumption that cuts across virtually all the proposed fees.
How important is it to build a reserve fund equivalent to 3 months of the USPTO's annual operating expense, and how quickly does that need to be done? By some estimates, the reserve may be being funded at levels ranging from 150 million to 300 million dollars per year. Does this rank in importance with reducing pendency? In other words, should the user community be willing to simultaneously fund both of these objectives through higher fee increases, or would the user community prefer to see a more gradual, staged approach to building the reserve fund so that fee increases need not be quite so steep, at least for the next few years?
Will the currently proposed fee schedule permit adequate investment in critical USPTO resources such as improving its IT systems, and continued hiring, training and retention of qualified examiners? What are the projected costs and time frames for accomplishing such investments in human and physical resources? And do these costs rank in importance with reducing pendency and creating a meaningful reserve fund? One could argue that investment in critical resources such as its IT systems and the hiring, training and retaining of qualified examiners is one of the best things the USPTO could do to improve and insure patent quality.
With any proposal as sweeping as this one, and particularly where the impact goes right to the bottom line, there will be a tendency to want to dig in and debate whether the fee changes proposed for each part of the USPTO examination process are justifiable. This will have a tendency to compartmentalize the debate in a way that may not be helpful. That is not to say that it is inappropriate at some stage to have a candid and probing dialogue between the Office and the user community that is designed to help the user community understand the methodology, models and assumptions behind the USPTO's proposed fees. This can only ultimately help the user community provide more meaningful response and guidance to the USPTO. But before that happens, we should first attempt to provide some sense of priority to the Office on the big picture questions, since those will impact fee setting across the board, and in a very substantial way. In other words, as users, we need to help the Office understand what is most important to us, and then be willing to help fund those priorities.
Once that happens, we can then invite the Office to share the assumptions and modeling (such as cost recovery assumptions, front-end fee vs. back end fees as mechanisms for cost recovery, etc.) that will invite productive dialogue and input on the specific fee proposals on a more individualized basis.
In any discussion of this type, the process has to begin someplace. The USPTO's Proposed Patent Fee Schedule released last week is just that – a starting point for discussion. As users of USPTO services, we will have the opportunity on Feb. 15th and Feb. 29th to engage the process and begin providing response to the Office. PPAC should be applauded for providing a set of thoughtful questions to guide those hearings, with focus on the big picture issues. Hopefully, those of us who participate in the process will understand the need to start with the big ticket issues, and will not let the discussion become embroiled in minutiae.
The Denver office of Akerman Senterfitt LLP seeks a Chemical Patent Associate with 1 to 3 years of pharmaceutical experience for its intellectual property practice group. Experience in Hatch-Waxman-related opinion work, freedom to operate analysis, due diligence and patent prosecution is considered a plus. Undergraduate degree in chemistry or chemical engineering is required. Must be admitted to practice in Colorado or willing to sit for the next exam. Akerman is ranked among the top 100 law firms in the U.S. by The National Law Journal NLJ 250 in number of lawyers. With more than 500 lawyers and government affairs professionals, we serve clients from major business centers in Florida, New York, Washington, D.C., California, Virginia, Colorado, Nevada and Texas.
