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(Message started by: kristen57 on May 25th, 2007, 9:28pm)

Title: Preparation for Patent Agent (Trainee)
Post by kristen57 on May 25th, 2007, 9:28pm
Hi, I will be working as a patent agent (trainee) starting sometime next month.

Would like to find out how can I best prepare for the job before it starts? I have been told I will be dealing with EE patents. What should I be reading up on, both on the technical and patent law aspects?

Thank you!

Title: Re: Preparation for Patent Agent (Trainee)
Post by patentsusa on May 28th, 2007, 1:34pm
Read Landis on patent claim drafting, if you haven't done so already, ignoring the outdated case law.  Read chapter 700 of the MPEP to start with then the rest of it (skip the interferences and PCT chapters for now), read the 37 CFR (skip the interferences and PCT chapters).  

Title: Re: Preparation for Patent Agent (Trainee)
Post by helene_eur_att on May 29th, 2007, 5:05am
Could you please confirm that Landis is the book entitled "Landis on Mechanics of Patent Claim Drafting"?
Would you have a recommendation for chemical/biotech inventions?
Thank you!

Title: Re: Preparation for Patent Agent (Trainee)
Post by biopico on May 29th, 2007, 5:41pm
For chemical and biotech areas:

Read the chapter 2400
I would read several patents and published publications related to your work soon.
I would also look at the file history of some of the patents issued to your employer, if any.


Title: Re: Preparation for Patent Agent (Trainee)
Post by still_studying on May 31st, 2007, 7:45pm
There have been some posts on this forum which discussed "Office action" responses.  I seem to recall that Isaac once wrote that his entire first year was analyzing and responding to OA's;  my experience as a "trainee" (I guess I'm still one ;D ) was similar.

Digging up those posts (Jim Ivey wrote one recently regarding a claims traversal) might be of use, as would reading lots of patents.  Hmm, you could ask your employer for some copies of OA's and responses to review so that you can get used to the style (at least, if you've already signed the confidentiality agreements, etc., etc.).  (Maybe they're available online by now, for issued patents?  That'd be really nice!)

Good luck and have fun!

Title: Re: Preparation for Patent Agent (Trainee)
Post by Wolfcastle on Jun 1st, 2007, 2:47pm
You can find copies of responses to office actions of published applications  as well as issued patents.

Step 1: Find some patents/Applications from the firm you are going to work for. I suggest using this site:

http://www.freepatentsonline.com/

Step 2:  Enter the publication numbers into the PAIR system

http://portal.uspto.gov/external/portal/pair

Step 3: Look at the image file wrappers

Title: Re: Preparation for Patent Agent (Trainee)
Post by kristen57 on Jun 1st, 2007, 9:27pm
Thanks for all the replies!Very helpful indeed!



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