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(Message started by: Brett on May 10^th, 2004, 5:16am)

Title: Newly Minted Patent Agent w/ ?'s
Post by Brett on May 10^th, 2004, 5:16am

Hi everyone. I was informed a few days ago that I passed the patent bar on appeal. I have a few questions related to the job market for patent agents. Is the market hot or cold? Which readily-available books should I purchase to learn how to draft a patent? Do large law firms typically subsidize law school? Any advice is welcome. BTW, I'm a mechanical engineer with 5 years experience.

Thanks,
Brett

Title: Re: Newly Minted Patent Agent w/ ?'s
Post by eric stasik on May 10^th, 2004, 7:36am

Dear Brett,

My impression of the market is that it is lukewarm. For mechanical engineers I don't know if the water is ever warmer than tepid.

The USPTO is perhaps the best place to look for employment if you want to go to law school and want to learn how to write applications.

As a general comment, it is a little disturbing that someone can pass the USPTO's registration (not bar) exam and be asking for help as to how to draft an application! I have said it before in this forum, 50% of the USPTO's problems are a result on the applicants' representatives who are not adequately trained.

In contrast, a European Patent Attorney must have several years of apprenticeship under a registered EP attorney before he is even allowed to sit for the European Qualifying Exam.

Until the AIPLA demands tougher standards for its own members their complaints about the USPTO are hypocritical, self-serving, and not worth listening to.

/end rant

As for books to help you NoLo's "Patent it Yourself" is not bad.

Good Luck!

Regards,

Eric Stasik
(Registered US Patent Agent 37, 944)

Title: Re: Newly Minted Patent Agent w/ ?'s
Post by Isaac Clark on May 10^th, 2004, 8:56am

I understand Mr. Stasik's concern about the lack of training in drafting an application. Upon certification we are so ill prepared that few newly minted practitioners would try to draft an application without a suitable apprenticeship period.

I'm not sure why you object to the term "bar" exam. I suppose the term is not literally correct, but it is at least colloquial to refer to patent agents and attorneys as belonging to a patent bar/

Title: Re: Newly Minted Patent Agent w/ ?'s
Post by eric stasik on May 10^th, 2004, 10:39am

on 05/10/04 at 08:56:46, Isaac Clark wrote:

Precisely my point Mr. Clark. One should not be "certified" until one is adequately prepared. Apprenticeship BEFORE certification would make more sense. I believe it is a disservice to the public for the USPTO to authorize people to represent inventors before the USPTO before they are properly prepared to do so.

on 05/10/04 at 08:56:46, Isaac Clark wrote:

I'm not sure why you object to the term "bar" exam. I suppose the term is not literally correct, but it is at least colloquial to refer to patent agents and attorneys as belonging to a patent bar/

Perhaps I am being pedantic, but the term "bar" refers exclusively to those who are authorized to represent clients in front of courts of law. There is no "patent bar" the USPTO is not a court of law and thus the term "bar" is both misleading and inaccurate - despite it's common use.

RogersDA - thanks for the info! I was unaware that the USPTO is no longer sponsoring law school for examiners. Pity. Some of the best patent attorneys I know have been minted in this manner.

Regards,

Eric Stasik

Title: Re: Newly Minted Patent Agent w/ ?'s
Post by JimIvey on May 10^th, 2004, 11:22am

on 05/10/04 at 07:36:59, eric stasik wrote:

As a general comment, it is a little disturbing that someone can pass the USPTO's registration (not bar) exam and be asking for help as to how to draft an application! I have said it before in this forum, 50% of the USPTO's problems are a result on the applicants' representatives who are not adequately trained.

In contrast, a European Patent Attorney must have several years of apprenticeship under a registered EP attorney before he is even allowed to sit for the European Qualifying Exam.

I have to agree with Mr. Stasik's observation. I worked as a patent attorney for 3 years before being confortable signing my own papers without partner supervision.

I ocassionally see work done by other attorneys and agents. Much of it is fine, but some of it is downright scary!

Combine that with the trend away from the doctrine of equivalents and the inadequacy of PTO funding, and the future looks pretty bleak for US patent applicants.

Regards.

Title: Re: Newly Minted Patent Agent w/ ?'s
Post by m on May 18^th, 2004, 1:18am

> Combine that with the trend away from the doctrine of equivalents

Can you explain this? I assume you're refering to PHE?

Title: Re: Newly Minted Patent Agent w/ ?'s
Post by JimIvey on May 18^th, 2004, 8:46am

PHE (prosecution history estoppel) is an exception to the doctrine of equivalents (DoE) which in turn is an exception to the general rule that a claim covers what it says it covers.

The DoE is quite complex, but let's just say that you can avoid literal infringement yet still infringe if you substitute a claimed element which its equivalent. What "equivalent?" Who knows? There used to be a tripartite (3-part) test of (i) performs substantially the same function (ii) in substantially the same way (iii) to obtain substantially the same result (function/way/result). If you think too hard about that phrasing, it's simply a more wordy way to ask if the thing is "equivalent", albeit in a functional manner.

Suppose, for whatever reason, a claim recites that a device is implemented as an ISA card. The accused device is a PCI card. It doesn't infringe literally, but should it infringe? PCI cards are known and obvious replacements for ISA cards. Suppose the accused device is a USB device.... should that infringe?

Under PHE, you couldn't capture the PCI device if you have specifically amended the claim to no longer recite the PCI card. Under Festo, if you amended that claim element for any reason related to patentability, you could never capture anything but an ISA card.

Festo was about exceptions to PHE -- about the types of amendments that shouldn't bar application of the DoE. I think one of the Judges said something like "this case is about an exception to an exception to an excpetion to the general rule" that a claim covers what it says it covers.

Now, why did I make that original comment? Consider my example above. Why did the patent practitioner claim an ISA device? Maybe at the time ISA devices were the only commonly used bus device. That's very poor foresight and thinking by the patent practitioner, but it's the patent holder that pays for that shortsightedness. Maybe there's something specific to the ISA architecture which made the invention really cool and so the claim was intentionally limited to ISA architectures. In that case, the PCI device shouldn't infringe.

The problem (as I see it) is that the simplicity of the rule that a claim covers what it says it covers requires perfect clairvoyance on the part of patent practitioners. I readily admit to human fallibility, and I've seen much worse than myself out there. I've seen claims which claim "a user" among other things. Who makes, sells, or uses anything which includes "a user?"

In addition, patent practitioners are frequently given very limited budgets. Patent applications typically cost $2,000-20,000 depending on the complexity of the technology. Patent litigation costs $2-3 million. And the stakes can be rather high (see, e.g., Eolas v. MSFT award of $520 million). So, $2.5 million will be spent parsing a document built with $10,000 and with $0.5 Billion at stake.

Of course, the economists out there will tell you that, once the rule that perfect foresight is required propagates, applicants will adjust their budgets accordingly. So, after Festo, shop around carefully for top-shelf practitioners (better foresight) and be prepared to spend more money, especially as the clairvoyant practitioners raise their rates in view of the increased demand.

I hope that explains things. Let me know if I left something unclear.

Regards.

Title: Re: Newly Minted Patent Agent w/ ?'s
Post by m on May 20^th, 2004, 12:56am

Yes, thank you for the explanation.

Interestingly, in the UK, in recent litigation, the judge explictly discounted the whole notion of referring to prosecution history by stating that it would add too much complexity to claim interpretation, and a patent should be taken for what it is at face value without the need to refer to other documents. I think this was a fantastic way to keep the system fairly balanced.

Title: Re: Newly Minted Patent Agent w/ ?'s
Post by IPLoya on May 21^st, 2004, 7:42am

I don't think it's necessarily bad to license agents who have not interned. As evidenced by the OP' question, the newly licensed agent is aware of his limitations and his ethical responsibilities, and is unlikely to go off half-****ed and negligently file a bunch of crappy patent applications. A firm, in recognition of its own liability, is also going to acknowledge the limitations of the newly licensed agent, and will train the associate and/or check his work before it goes out. The agency exam objectively tests all the stuff that is important to ensuring the agent will know how to use the MPEP efficiently, to know or at least be familiar with all the deadlines and statutory principles surrounding the application, and as we all know this test was a pregnant dog - you can't slide by too easily without having really learned something.

As to the OP' question, you can start with Landis on Mechanics of Patent Claim Drafting - 4th or 5th ed. - to learn how to do the Claims, which you now know are the "metes and bounds," and arguably the most important part of the app. Although experience helps, you will eventually find employment as a new agent seeking experience and get some on the job training.

Title: Re: Newly Minted Patent Agent w/ ?'s
Post by Jeff Travis on May 21^st, 2004, 8:44am

To answer your question as to materials, I would recommend two very good resources for patent agents/attorneys:

Jeffrey Sheldon: How to Write a Patent Application
Landis: The Mechanics of Claims Drafting

These are pretty costly and you get them from PLI but as someone who started out with an apprenticeship and a 6 month course in patent application drafting, they have come to be invaluable tools.

Good Luck,

-Jeff Travis

Title: Re: Newly Minted Patent Agent w/ ?'s
Post by JimIvey on May 21^st, 2004, 10:02am

Within a few months of getting my copy of Landis from PLI (I took their bar prep course -- yes, I know, it's not a "bar" exam but it's easier to write/say and you known what I mean), I lent Landis to a summer associate who couldn't find it once she failed to get an offer from the firm. Since then, I haven't been able to find it. Does PLI sell them? I'll have to check it out. I've been flying with a net (drafting without Landis) since 1992!

Thanks.

Title: Re: Newly Minted Patent Agent w/ ?'s
Post by JimIvey on May 22^nd, 2004, 7:00am

Thanks. A few years back, I did exactly that. Only 1 used version was listed. I was not successful contacting the seller.

Thanks for the information though.

Motivated by this conversation, I went directly to PLI's site looking for it. Nada....

Regards.

Title: Re: Newly Minted Patent Agent w/ ?'s
Post by eric stasik on May 22^nd, 2004, 10:55am

Mr. Ivey,

I have a copy of Landis... somewhere.. I didn't see it on my shelf so it must be in one of my boxes full of books.

I'd be happy to send it to you. I don't do too much claim drafting in my practice and there is nothing worse than a good book going unused. I certainly haven't opened it in quite some time (as my ignorant answer in another thread about claim multiplicity made clear!)

Please contact me privately through my website and send my your mailing address. I'm pretty sure I have it here, but I've got stuff on three continents so there's no guarantee.

Kind Regards,

Eric Stasik

Title: Re: Newly Minted Patent Agent w/ ?'s
Post by Jeff Travis on May 24^th, 2004, 4:02pm

If this does not work out, www.pli.edu does have these available. (Albeit at an incredibly marked up price) From their main site go to Books - View All Treatises and there will be a list of them. I have refused so far to buy them there and did as the previous post mentione - used at Amazon.com and got lucky one day.

Regards,

-Jeff

Title: Re: Newly Minted Patent Agent w/ ?'s
Post by rrroseen on May 25^th, 2004, 5:47am

on 05/20/04 at 00:56:19, m wrote:

I am sorry if this starts a different thread, but a decision like this taken seriously in this country seems like it would change alot in US courts.

Title: Re: Newly Minted Patent Agent w/ ?'s
Post by rrroseen on May 25^th, 2004, 5:50am

I am surprised that another idea that many new agents use or want to use to become more experienced has not come up.

Patenting your own invention(s).

Provides experience and points for having your name on patents.

Title: Re: Newly Minted Patent Agent w/ ?'s
Post by patento on Jun 15^th, 2005, 10:28pm

1. Passing the patent bar (or whatever you call it) shows the seriousness of the person toward the professional. This helps employers hire "interested" professionals. Compare it with the situation where the employer needs to choose from thousands of candidate who may or may not be dedicated to the profession for long term.

2. It is unlikely that a new patent agent will jump into private practice right after getting the registration number. Even if he/she does so, it is almost unlikely she/he will get any business.

It is likely that the new agent will initially work under the supervision of an experienced practitioner. Therefore, requiring "several years of internship aka working in a sweat shop" is totally impractical. Requiring several years of internship before taking patent bar is also absurd. I am a quick learner, I can learn new things in just couple of months; why should I wait for several years before being eligible to take the exam.

The system is very good as it is right now.

on 05/10/04 at 07:36:59, eric stasik wrote: