Prep & Pros: Separated by a Backlog

PatentLawPic1010The world continues to turn even though several hundred thousand patent applications are sitting examined at the US Patent Office.  During this multi-year delay, patent attorneys change jobs, receive promotions, raise billing rates, etc.  One bottom line is that the patent professional that drafts a patent application is often not the same individual that argues the prosecution.  This is a subtle problem created by the backlog.

For the following quick survey, please consider the last five USPTO office action responses that you signed.  Out of those five cases, how many of the corresponding US applications did you personally draft & file? (Obviously, this poll is primarily directed to individuals that prosecute patent applications).

[Don't forget to click "Vote" after selecting your response.]

29 thoughts on “Prep & Pros: Separated by a Backlog

  1. 29

    Of course the RCE statistics won’t be of assistance for applications which have prosecution instructions originating from outside of the US.

    A more interesting analysis would be comparing the number of years a patent drafter stays at the same firm with the number of responses handled by the same person.

    Even though I would expect the correlation to drop off in accordance with the more senior a person becomes, this doesn’t mean much. I.e. just because a partner didn’t draft the application himself (or herself), but directed a less senior drafter and subsequently a less senior responder to draft a response to an Office Action, does not mean that the partner did not retain intimate knowledge of the application.

  2. 28

    I didn’t respond to the survey because my situation doesn’t really fit it. I draft almost all tof the applications whose prosecution I contribute to, but the attorney keeps changing.
    I’m a patent agent for a large corporation and mostly act as a technical liaison for several patent attorneys (I also have a small docket of my own, but that’s recent). I draft the applications which are then reviewed by an attorney. What with attorney resignations and rotations through assignments on the one hand and a typically 3-year delay between filing and a first office action on the merits on the other (during which time the inventors are also likely to be 2 or 3 assignments removed from the project for which the invention was generated, if not retired or dead), I am often the only constant in the prosecution. Some of my cases currently in prosecution are on their fifth attorney. But because I’m still here, this can give us both the benefit of “fresh eyes” and some continuity.

  3. 27

    “There are these things called budget caps. If the budget caps are set too low, practitioners cut corners. ”

    People cutting corners when they’re not given enough time and resources to do a proper job? Say it ain’t so.

  4. 26

    There are these things called budget caps. If the budget caps are set too low, practitioners cut corners.

  5. 25

    One (admittedly rare, but amusing) problem I sometimes get when an application is prosecuted by a different attorney than the one who drafted it is that the attorney arguing sometimes presents arguments that are contradicted by his/her own specification.

    For example, the the claim refers to an element x. I cite a reference showing y to meet element x. The attorney argues what I cited is not x. In response, I refer them to their own specification which states that examples of element x include y.

    Truly sad when the examiner complains about the attorney not having read the spec for the application he/she is prosecuting.

  6. 24

    In addition to the “attorney changes jobs” issue, part of this is driven by the degree to which clients are willing to move entire dockets from one firm to another.

    I realize that some of those moves are motivated by crappy work from the firm that is losing the work, but giant rafts of “prosecution only” files are efficiency killers for the receiving party.

  7. 23

    Red – Ida add that most people (outside of the massive cog-widget world) like to fancy themselves as professionals who do their best work “just because”.

  8. 22

    “It seems that there is not much incentive for most of the junior to mid-level drones grinding out patent applications at most law firms to do a great job.”

    I think this is a bit cynical. Most people want to do a great job just because most people want to feel proud of their work.

    If that isn’t enough, most people know that if you do a good job, it’s more likely that the client will follow you to a new firm when you leave in 1-3 years.

  9. 21

    My response at 5:15 should be amended as follows:

    Lit experience is essential to Prep/Pros.

    Lit, by and large, would rather welcome the Plague then return to Prep/Pros.

    Good luck finding someone at a large firm willing (hint did you say billable hour) to share the essential experience to those doing Prep/Pros.

    Thanks Steven T.

  10. 20

    I tried to vote for 2, but the computer said I had already voted! (I hadn’t)

  11. 19

    I’m in my third year and I’m just about to file my first response on an application I drafted.

  12. 18

    Chalk me up for 4/5 as well. Interestingly, I prep with a pros strategy in mind. If there isn’t an over-lap in the attorney(s) doing these functions at some level, it seems that the client is at a real disadvantage in that good prep thinking is then unknown in pros–it also relieves “preppers” from being responsible for what they drafted. BTW–if you want to really tighten up your prep and pros tactics, jump into a little litigation.

  13. 16

    Pros experience is essential to Prep.

    Pros, by and large, would rather welcome the Plague then return to Prep.

    Good luck finding someone at a large firm willing (hint did you say billable hour) to share the essential experience to those doing Prep.

  14. 15

    …It seems that there is not much incentive for most of the junior to mid-level drones grinding out patent applications at most law firms to do a great job…..

    Snort. How many partners draft patent applications at their rate? FYI, the motivation comes from the prosecution world being a small world indeed.

    I think I learn more from prosecuting applications I am thankful I didn’t write. Better to learn all the sorts of things not to do.

  15. 14

    It seems that there is not much incentive for most of the junior to mid-level drones grinding out patent applications at most law firms to do a great job.

    GF’s anecdote sounded like an example of a partner not doing a great job.

  16. 12

    It seems that there is not much incentive for most of the junior to mid-level drones grinding out patent applications at most law firms to do a great job. Not if they know that they will not be around long enough to have to prosecute their work.
    Interesting.

  17. 11

    I agree that it’s not a problem when a different attorney prosecutes a case — it’s an advantage. Case in point, I knew one prosecution partner who used to yell at junior prosecutors who amended claims that he originally drafted, because the partner read in all sorts of context to the claims that no one else (including the examiner and the junior) was burdened with. The fresh perspective is wonderful.

  18. 10

    identify shifts in the prosecuting attorneys.

    Is it too late to compile data on which firms are getting those cases allowed without additional RCEs?

  19. 9

    Mark Nowotarski said: Tying this into RCE’s, an interesting statistic would be to look at the RCE rate for applications where prep and pros was divided between at least two individuals and applications where prep and pros was done by the same individual.

    DDC Replies: Thanks Mark. I’m on it. Earlier this morning I asked one of my trustworthy law students to review a stack of patent prosecution file histories to identify shifts in the prosecuting attorneys.

  20. 8

    To second PharmaPatent’s comment, the results are likely skewed by individuals with significant foreign practices where the applications are drafted and originally filed by foreign associates.

  21. 7

    Like the last survey I attempted, when I hit “vote” I received a pop-up saying I’d voted already.

    So put me down for zero.

  22. 6

    Tying this into RCE’s, an interesting statistic would be to look at the RCE rate for applications where prep and pros was divided between at least two individuals and applications where prep and pros was done by the same individual.

  23. 5

    If the inventor was sufficiently well-versed in the art, it’s often a good starting point to assume that what the drafter meant to claim is a good invention, and then the trick is simply to fix the claim.

    I don’t think we disagree. My point was simply that a neutral observer is sometimes better positioned to spot the difference between what the drafter meant to claim and what he actually did claim. I’ve taken over cases where it is clear that the examiner and the attorney are on opposing sides of two completely different arguments.

    I take draft claims down the hall for the same reason. When I review something I’ve just written, it’s easy to “read” what I was thinking, not what is actually on the page.

  24. 4

    I’m actually not terribly surprised at this result given that a large number of practitioners stay with an employer on average only 1-3 yrs, and it typically takes much longer than that for an application to be picked up. After 7 yrs of practice, I can count on one hand the number of responses I’ve filed for cases I actually drafted from scratch.

  25. 3

    It’s sometimes easier for someone who didn’t draft the claims to understand what an examiner is concerned about, as the “neutral” observer isn’t burdened by knowing what the drafter meant to say when drafting the claims.

    My first step is usually to try to find the discrepancies between what the drafter meant to say and what the examiner understood the claim to say. If the inventor was sufficiently well-versed in the art, it’s often a good starting point to assume that what the drafter meant to claim is a good invention, and then the trick is simply to fix the claim.

  26. 2

    My follow-up question. For applications that you didn’t write, how many were:
    (i) written by the applicant?
    (ii) written by a U.S. patent attorney/agent?
    (iii) written by a foreign patent attorney/agent?

  27. 1

    Wow – the results so far are amazing! My answer was 4 – I’m way in the minority. I might have to incorporate this into my marketing.

    That said, there is something to be said to having a fresh set of eyes on a case at the attorney end. It’s sometimes easier for someone who didn’t draft the claims to understand what an examiner is concerned about, as the “neutral” observer isn’t burdened by knowing what the drafter meant to say when drafting the claims. But that’s why I routinely take office actions down the hall to chat about them.

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