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thought001
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Beginning private practice
« on: Feb 27th, 2004, 5:56pm »
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I am a patent agent with a Ph.D. in Chemistry who now has one year of law firm experience.
 
At this time, I am considering starting my own practice for drafting and filing patent applications.  In regards to starting a private practice, I notice that docket numbers are used in law firms and seem to be required on many
USPTO documents.  
Must I use docket numbers? And if so, are there rules governing them, or can I make them any number I wish.
For example I was thinking of making the first client,
client 100 and making each case associated with that client 100-01, 100-02, etc.
 
Also, how important is it to begin a money account with the USPTO? I was thinking of sending a check with each filing or other response. However, I see that law firms normally have an account in case of a mistake in the check amount. Such an account allows the USPTO to draw in the event the check amount was insufficient, and to ensure the date of the response remains in effect. In effect, it is an insurance. Would such an account be considered required or very recommended for a patent agent in my position?
 
Anything else I must consider that may be an obstacle before I plunge into drafting and filing applications on my own?
 
Thanks,
Thought001
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JimIvey
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Re: Beginning private practice
« Reply #1 on: Feb 27th, 2004, 7:57pm »
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Personally, I'd be more worried about a client base.  The rest is easy.  I don't know much about the chemistry end of the patent practice and what clients are like, but I imagine your clients will tend to be larger companies rather than individuals.  As a person in solo practice trying to find interesting ways of marketing my practice, I'd be interested to here how you approach this if getting clients isn't a problem for you.
 
Now, on to your questions.
 
Docket numbers.  How do you intend to identify your cases within your practice?  As far as I know, every attorney as a system of identifiers which are sorted in some manner such that the attorney can find the case file in the filing cabinets.  I don't see how you can do that without some sort of ordered system of identifiers.  So, while docket numbers aren't required, it's a practical necessity to running any practice I'm familiar with.
 
As for your proposed numbering system, it's fine as far as I can tell.  I chose a straight sequential system.  Files for a single client are not contiguous.  The reason for this is that it's possible that a new matter for an early client can over-fill a file drawer early in the sequence of files, requiring re-distribution of files within drawers relatively frequently and at times not selected by me.  In my system, the only major file shuffling happens to re-pack periodically to reclaim space left by closed/archived files.  And I can choose when that happens.  This kind of dense-list vs. sparse-list processing is second-nature for CS majors.
 
Deposit Account in the USPTO:
 
I don't have one.  I write checks, and have since I started my solo practice in 1995.  At the time, I was filing cases in batches for large entities.  One night, I filed 10 cases, each with filing fees in the range of $1,000-2,000.  That means I would have to have had $20,000 in the account.  If any other matters come up, the account would be severely depleted.  I guess I just didn't want to manage yet another account.  And, it always bugged me that I would have $10,000 or so (the amount I thought I could get by with most of the time) just sitting there.  And, that particular client with the $20,000 night takes a good couple months to pay the invoice, so that's quite a hefty float for a small-timer.
 
I suppose now I should probably start one to cover incorrect amounts in the amount I pay.  But it's never been a problem.  I can't think of any situation in which you aren't given an opportunity to correct an incorrect fee payment.  Maybe one exists, but I just can't think of one right now.
 
HOT TIP FOR PRACTITIONERS:  Here's what I recommend.  Get a frequent flyer miles credit card for your practice (if you don't already have one).  Keep some headroom on it.  Use it for fees (form PTO-2038).  Bill the client immediately.  The PTO generally takes weeks to months to get around to taking the money from the credit card (or bank if you use checks).  When the client pays, pay the credit card off and you should never pay any interest (or at least not much).  And, you should rack up the flyer miles like crazy.
 
If you don't have the need or want to fly, pick a credit card with another perk.
 <cont.>
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James D. Ivey
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JimIvey
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Re: Beginning private practice
« Reply #2 on: Feb 27th, 2004, 7:58pm »
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<cont. -- part II>
 
Anything else:
 
Time billing.  How do you plan to do that?  Some get around that by charging flat fees for applications.  I do that sometimes, but my clients still want to know what they would have paid at my rate for comparison.  Time tracking and a billing system which ties into it is nice.  I use TimeSlips but would like to drop them for something that runs under Linux if I could find something.
 
Calendaring.  When you first start, there's nothing to calendar.  My first system was a stack of files, the top one having the soonest deadline.  That worked until I started filing applications with missing parts.  Soon, half my time was spent doing stuff an admin could/should do.  Outlook or some other simple electronic calendar is okay to start, but it takes a lot of work on your part to make it work.  I found a system about 10% the cost of the ones used by big firms for IP docketing (less than $2,000 compared to $10,000-50,000 for the big firms).  It's based on Access.  It works pretty well.
 
Insurance.  While you're not required to carry it, you should know what's available.  It's surprisingly hard to find insurance for a patent practice (because litigation of patent malpractice always involves experts and gets quite expensive).
 
IT.  At the very least, have a system for regular backups.  I've set up scripts which back up my systems every few hours automatically without intervention by me.  I recommend all-in-one, fax, scanner, printer, copiers.  They're by far the cheapest sheet-fed copiers you can buy.  Get a laser one.  Inkjets may fade or smear (less now than then), but more importantly they're more expensive to operate (due to small capacity ink cartridges).
 
Shredding.  How do you hope to do that?  Don't throw draft applications on your street for recycling.  All you need is one sheet to blow down the street to get really embarrassed and to do a disservice to your clients.  I found a place that will shred a box (bankers box size) at a time for $10.  I've burnt out 2 $300 shredders in less than an hour each (with just two boxes of paper each).
 
Environment.  Do you plan to work out of your home?  Don't short-change yourself on space or light!  Make your office the best room in the house.  That's where you'll spend all your time.  If you lease a space, don't short-change yourself on space or light!  You'll be spending a lot of time there.
 
Taxes.  Unless you like doing that sort of stuff (I hate it), find someone good who'll do it for you.  Even then, you'll probably have to track your own receipts and give them totals at the end of the year.
 
A source for patent file folders....  Letterheard..... Bizcards..... Web presence....
 
Health insurance.....  Disability insurance.....  Retirement fund (SEP)....
 
I'm going to have to drop it there.  There are many things you'll come across with questions and such.  Feel free to write me with questions.  A lot of this stuff you'll figure out as you go along.  It's really not that hard.  You just sit down and start writing patent applications and figure out each of these one at a time.  Soon you'll be collecting checks and everything will seem like it's just a little too easy.  Then, you think about the list I just gave you and add a few more and it seems overwhelming.
 
Good luck!
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James D. Ivey
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thought001
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Posts: 11
Re: Beginning private practice
« Reply #3 on: Feb 28th, 2004, 4:25pm »
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Please let me take this moment to thank you very much for your comprehensive response to my question. It has been quite helpful to me.  
 
You are correct that getting a client base is probably the most important question. Since I haven't been in solo practice yet, I really don't know much about how hard it will be to get clients. I plan to advertise in various relevant venues to the field and perhaps even send advertisements to prospective clients. But, there is only one way for me to find out how difficult it will be.
 
As I go along, I am bound to have more questions for you.
 
Thank you once again for your very helpful input on this matter.  
 
Thought001
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marcus bates
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Re: Beginning private practice
« Reply #4 on: Mar 15th, 2004, 9:18am »
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Hello from a retired successful patent agent who has spent a lifetime as an independent patent practicioner. You do need clients and that is the biggest obstackle you face. Visit all the older patent practicioners you know and ghost write for them. This alone will tide you over until you feel more secure. The big problem here is that they will insist on hiring you.  Join and give speaches at several local societies , starting with ToastMasters International for they are famous for supplying last minute speekers for various organizations. Always give talks involving patent matters, of course.  Do open a deposit account. Never advertise free consulations- always charge $100 for the first consultation, up to one hour.  The freebies are for the old clients that feed you. Do not purchase insurance-just wear a white hat and treat everyone absolutely honest. This is what assures you are Never  involved in a serious contraversy, and this is what makes insurance un-necessary. Never accept a Client that asks you to do something you know is wrong. Never ever get caught in that web. Get rid of Clients that you may occasionally have personality conflicts. Dont work cheap. You only need a few good well satisfied clients because they will inundate you with more work than you can handle. Get rid of the bums by pricing them out of your office. Good Luck and remember to do something every day of your life to reduce the terrible bureaucracy that abounds throughout our governmental structure; especial the FAA. marcus bates of west texas
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