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(Message started by: Annabelle on Feb 7th, 2007, 11:20am)

Title: Starting my own patent agent business
Post by Annabelle on Feb 7th, 2007, 11:20am
Hello,

I am considering taking the patent bar exam.  In my small community, employment prospects are very limited;  I would have to open my own patent agent business.  Can (and do) Patent Agents successfully market their services OUTSIDE their communities?  
The cost of living here is not high.  My  revenue requirements (net) are in the range of $5K per month.

Thank you

Title: Re: Starting my own patent agent business
Post by biopico on Feb 7th, 2007, 1:02pm
As a registered patent agent, you are entitled to do so.  But you have to ask youself whether it is wise to practice without actual experience and/or being trained.  I am wondering what area of expertise you have.  



on 02/07/07 at 11:20:08, Annabelle wrote:
Hello,

I am considering taking the patent bar exam. In my small community, employment prospects are very limited; I would have to open my own patent agent business. Can (and do) Patent Agents successfully market their services OUTSIDE their communities?
The cost of living here is not high. My revenue requirements (net) are in the range of $5K per month.

Thank you


Title: Re: Starting my own patent agent business
Post by Anabelle on Feb 9th, 2007, 11:47am
Thank you for the comment.  There are no legal patent agencies in my (small) town, however there are some patent agents under whom I might be able to intern.

As far as my background:  I have a B.S. in physics, an M.B.A., and considerable experience in materials science and in very exacting technical writing.  

I am not sure if this is sufficient, or if it is critical that I move my family to an area (temporarily) where I would be able to work in a patent firm for a short period of time.

Any further comments are helpful!



Title: Re: Starting my own patent agent business
Post by biopico on Feb 9th, 2007, 1:52pm
It sounds more than sufficient to sit for the exam and pass.  And you can do some internship to get trained.

Then do you believe you would have enough number of clients so that you can get your salary generated in your small town (e.g., at least 5 clients)?

It is not that you can't do remotely, but realistically is it feasible for you to have any client from your community?

Do you have anyone from any firms who can give you the work for you to do at home?

What if you are residing in the middle of nowhere and it is difficult to find any work for your own salary in your area.  

Depending upon your situation, I would suggest you consider moving to a city where you can be employed with your pending patent agent status.  






on 02/09/07 at 11:47:56, Anabelle wrote:
Thank you for the comment. There are no legal patent agencies in my (small) town, however there are some patent agents under whom I might be able to intern.

As far as my background: I have a B.S. in physics, an M.B.A., and considerable experience in materials science and in very exacting technical writing.

I am not sure if this is sufficient, or if it is critical that I move my family to an area (temporarily) where I would be able to work in a patent firm for a short period of time.

Any further comments are helpful!


Title: Re: Starting my own patent agent business
Post by Ding-a-Ling on Feb 9th, 2007, 3:48pm
Some patent agents, and some attorneys, pick up work remotely from small law firms all over the country. I've seen small firms advertise to get writers to remotely do the bulk of the writing in patent applications. In that model, the small firm actually completes all of the filings with the patent office. Your exposure to malpractice issues is limited by this approach ... an advantage as you get started. In the remote model, your clients may not be the actual patent applicants ... your clients may be established patent practitioners.

The trick may be getting into the flow. If you need that $5k ASAP ... hmm ... you may need to go to the employers location as a first step. The remote model I've suggested is seemingly practiced by people who already have experience. It may take a while to build a network to get enough work ... you might need remote work from several little firms to get the income you're seeking. It's overflow work to them, they'll do the work if they can, but send it to you if they're busy. It's also a budget arrangement for them ... you probably wouldn't be a full time employee. That means no benefits ... you might get paid a flat fee per application written.

I haven't worked by that model but have met some agents who do it. They work from home and control their own hours. I work for a big firm now ... but may want to go remote one day. For now it's just a daydream.

Good Luck!

Ding-a-Ling!

Title: Re: Starting my own patent agent business
Post by arnie on Feb 13th, 2007, 3:21pm
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

Title: Re: Starting my own patent agent business
Post by ChrisWhewell on Feb 13th, 2007, 10:55pm
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 ?

Title: Re: Starting my own patent agent business
Post by Isaac on Feb 14th, 2007, 7:32am

on 02/13/07 at 15:21:17, 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.


Title: Re: Starting my own patent agent business
Post by plex on Feb 14th, 2007, 6:04pm
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.

Title: Re: Starting my own patent agent business
Post by LF on Feb 21st, 2007, 7:38am
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

Title: Re: Starting my own patent agent business
Post by Arnie on Feb 21st, 2007, 5:22pm
Sure its better to have worked for an experienced patent attorney before leaping into a solo practice.   But almost every patent I've looked at on PAIR the initial claims submissions by the atty are totally changed - literally altered completely in some cases in the end.  What difference does it make if you draft the best set of claims on the east coast when in the end it will all change.  And some of the claims change dramatically.

And look at some of the arguments made by practitioners responding to final notices.   Its almost like they agree with the examiners and amend the claims to get the patent issued with the most minimal of arguments.   You can see where the atty surrendered patentable material by amending the claims.  You hardly ever see an application going to a notice of appeal status.

Maybe you can't learn patent claim drafting from Landis totally but between the books, manuals and PAIR I really think you can get a great start.




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