Patently-O Bits and Bytes No. 111

Courtoon via David Mills.

Although patent activity may be down 10%, it is still much more active than it was a decade ago. Folks are hiring:

18 thoughts on “Patently-O Bits and Bytes No. 111

  1. 17

    New Agent Model,
    I wonder if the practitioner who wrote
    “providing, at a merchant’s web site, means for a consumer to participate in an earning activity to earn value from a merchant; and”

    was an agent or an attorney?

  2. 16

    Patent Attorney–

    I will try to use your comparison of a BS-JD w/no industry experience to a PhD-no JD w/industry experience to further develop my point.

    Your comparison completely misses the mark–I could accept the comparison of a PhD w/industry experience with, and without a JD, or alternatively the comparison of a BS without industry experience with, and without a JD.

    First, yes, someone w/o a JD can get legal experience through OJT. But similarly, a BS can get industry experience through OJT. There appears no particularly good reason to restrict your BS to no industry experience if you’re going to give your PhD industry experience.

    The PhD getting legal experience through OJT might learn to think legally, but that is something for which law school is particularly good, some would argue even indispensable, hence the only path to legal licensure now requires law school attendance.

    Further, many PhD’s who actually have industry experience and who would be willing to do something relatively unrewarding like write patent applications are often bound by NDA’s and non-compete’s, which can be a pain to work around at times.

    Yet further, a PhD is not always required for a good BS, Beng, or MS to be able to successfully interview clients and to obtain a working understanding of the disclosures and the field. I acknowledge that there are exceptions to this.

    Why do you artificially limit the sign-off to a first- or second-year associate? First of all, not all first- or second-year associates are the same–for instance, they could be foreign transfers, or foreign legal experts, with substantial legal, and even USPTO experience. And I never suggested that any attorney of less “rank” than would normally be required for sign-off should sign off on patent applications or related prosecution submissions.

    Bottom line is, each situation is specific. In the abstract, restricted by your hypo, I would take the BS-JD with patent experience over the PhD w/industry experience, and use the inventors to bring the BS up to speed technically.

    PhD agents should still be enrolled in law school, if only to help decipher what it is that the lawyers are talking about all day. Where I am, lawyers don’t have the time to educate and tutor the PhD’s in the distinctly different epistemology of the legal world, as opposed to the scientific world. Hence law school.

  3. 15

    Recruiter, I am a recruiter too. Have been since 1990 both in house and retained. While pedigree is an important factor, my job is to overcome mindless objections. With smart partners and GC’s, it’s really just a matter of your salesmanship and logical presentation of results against a position. If all you do is provide a pedigree, your are providing a poor service to your client and I’ll beat you every time. Happy hunting, PM

  4. 14

    New agent model, I couldn’t disagree more. I’ll take a PhD agent with industry experience over a BS-JD lawyer with none any day of the week. The dichotomy between agents and attorneys in the US is a just a fiction pepetuated by lawyers to help protect the guild. Any legal knowledge needed for this job can be picked up on the job – it sure doesn’t come from law school (or at your firm do they let first and second year associates sign off on their own papers?)

  5. 13

    “As a former recruiter, you should know if you have somehow been ejected from the group of firms that people care about, and it was probably intentional and for not conforming to firms practices.”

    You are obviously a moron and a bad recruiter. As an IP/patent attorney who worked at a top national boutique, I found that it was rarely “intentional and for not conforming to firms practices.” It was often financial or an abusive @$$hole partner who you pissed off. Guess what – I think you would also presume all partners are ethical too . . . get a mind.

  6. 12

    It sounds like “recruiter” is having a difficult time enticing “quality” patent prosecution candidates to leave IP boutiques and corporations to work for Big Law.

  7. 10

    “Law firms are looking for quality candidates with excellent credentials. Period.”

    One option, if you have “blemishes” on your record, is simply to change your record. If you get caught, there’s always business school: link to .

  8. 9

    Recruiter – sounds like you woke up on the wrong side of the bed this morning

    (also sounds like you have never been an attorney who worked for a law firm — real or not real)

  9. 8

    “please save recruiters time”

    I wish I had a dollar for the cumulated dozens of hours of time that has been wasted answering recruiter phone calls.

  10. 7

    “Recruiter” says:

    “Law firms are looking for quality candidates with excellent credentials. Period.”

    Exactly. And that is precisely what is wrong with “prestige firm” culture that sacrifices considerations of quality at the expense of convenience and insularity.

    IP departments of larger firms and institutions are built directly by recruiters. They do a fine job of fulfilling their mandate, a mandate designed exclusively by and for the maintenance of the existing hegemony that the branded schools and firms maintain.

    As to the quality of the lawyers, it is anyone’s guess. Certainly there are no empirical data to suggest that they are any better than any other lawyers.

  11. 6

    You can’t lump prosecution jobs with litigation jobs, though. They can and do move independently.

  12. 5

    Law firms are looking for quality candidates with excellent credentials. Period. Most REAL law firms are not interested in the non-sense excuses people come up to explain a blemish on a resume (where sometimes that blemish is the law school one attends, regardless of GPA).

    As a former recruiter, you should know if you have somehow been ejected from the group of firms that people care about, and it was probably intentional and for not conforming to firms practices.

    So for those tough gals/guys looking for jobs who are between jobs, please save recruiters time, and understand that one of our recruiter friends has probably already told us all about you. Do not try to CHEAT the system.

  13. 4

    given the number of patent practitioners, the patent activity is considerably slower than a decade ago.

    I can never remember this many patent attorneys being laid off.

  14. 3

    We have a democrat in office. The way many large companies have exerted their influence in the patent industry should be examined by way of private anti-trust actions. That is where I am puttin my money. See you all in court.

  15. 2


    WRONG! There are so many strictly legal dimensions to the prosecution of a patent application arising from administrative law that I would NEVER hire anyone other than an attorney to prosecute my application.

    Also, there are issues of development and preservation of evidence for appeal that require a legal understanding of the possible legal bases for appeal, that an agent would be inadequate for the task.

    An agent MIGHT be OK to draft the initial application, but I would definitely recommend getting it both reviewed by an attorney before submission, and prosecuted by an attorney after submission.

    I wouldn’t at all be surprised if all those agents will have their work reviewed by one or more attorneys.

    IMHO, agents should only be allowed to practice under the direct supervision of an attorney, like paralegals–which is, after all, what they are. Agents should be required to be attending law school–after all, law school is easy enough to do while holding down a job.

  16. 1

    I note that many of these jobs call for patent agents, not attorneys. And that is as it should be.

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