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   Starting my own patent agent business
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   Author  Topic: Starting my own patent agent business  (Read 2550 times)
arnie
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Re: Starting my own patent agent business
« Reply #5 on: Feb 13th, 2007, 3:21pm »
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I am thinking of starting my own patent attorney firm.   As far as experience I have five years of biglaw litigation and passed the patent bar with no problems.
 
I've been told get prosecution experience but I can't wait.  The way I see it is this:  No matter how well you draft your claims the fact is that every patent attorney does them differently.  Patent claiming is an art and everybody has a different art.  So how do you know whose is better?  Secondly, it doesn't really matter b/c the PTO will reject your claims anyway at leat 2x.   This means that no matter how good you are at drafting the claims they are going to change anyway to something entirely different from what you envisioned.  It probably is a good idea to get some prosecution experience but frankly if you spend the time in reading Landis you'll learn enought.   Also spend time on the PTO website especially "PAIR" which offers the images contained in the wrapper. You can teach yourself to write good claims good enough.
 
Nuff said
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ChrisWhewell
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Re: Starting my own patent agent business
« Reply #6 on: Feb 13th, 2007, 10:55pm »
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Wow, just curious, with five years experience in big firm litigation, why would you want to throw all that away ?  I was under the impression that litigation is stimulating an rewarding, especially in a big firm environment.  What shortcomings have you experienced ?
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Chris Whewell, M.S.
Isaac
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Re: Starting my own patent agent business
« Reply #7 on: Feb 14th, 2007, 7:32am »
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on Feb 13th, 2007, 3:21pm, arnie wrote:
Secondly, it doesn't really matter b/c the PTO will reject your claims anyway at leat 2x.

 
That's assuming that you don't waste the first office action or two just getting the examiner to actually search for the client's invention and that the specification as filed actually contains the client's invention so that you can eventually draft claims to it without giving away to much patent scope.   It may be that your litigation experience gives you some edge over other newbees, but your post suggests otherwise at least to me.
 
I'd recommend that a new practitioner take your advice of reading Landis, looking at PAIR, and in addition get some experience prosecuting applications under a mentor  before attempting to serve clients on their own.   There is a learning curve, and your clients shouldn't be suffer along with you as you push yourself up the curve.
 
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Isaac
plex
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Re: Starting my own patent agent business
« Reply #8 on: Feb 14th, 2007, 6:04pm »
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Arnie's post confirms what I have heard form multiple law offices that prosecution, combined with litigation, is essential to have a proper level of knowledge to practice IP law.  
 
It doesn't really seem possible to start a firm, or even be a knowledgeable IP lawyer, without any experience in writing claims and dealing properly with responses from the USPTO, the spectrum of which is very unlikely to be viewable simply through just reading the work of others.
 
IP law work consists of prosecution, litigation and licensing. Lacking a large amount of licensing experience is going to likely be a given with most newer IP lawyers, so also missing ANY experience in prosecution would likely lead to some serious problems when trying to complete all the functions of an IP law office.
« Last Edit: Feb 14th, 2007, 6:05pm by plex » IP Logged
LF
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Re: Starting my own patent agent business
« Reply #9 on: Feb 21st, 2007, 7:38am »
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I read Arnie's different. I thought he meant he has 5 years of Litigation (not necessarily IP). Like all doing (vs. talking about doing), it's a lot easier to judge other's work than it is to do the work yourself. So 5 years of litigation on non-patent things would not necessarily amount to that much as far as IP prosecution (I think).
 
That being said, doing this without any mentoring, would sound like shortchanging the clients.
 
LF
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