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Author Topic: How long for a new patent analyst to become efficient?  (Read 1532 times)

billyandted

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Hello,

I recently (about a month ago) started working as a patent analyst for a small firm.  So far, I've mostly been analyzing office actions, reviewing relevant prior art, and developing and counter-arguments to the office actions, although I have also done some European-US patent conversion and reviewing prior art searches for patentability.

Although I think my supervisors are pleased with the quality of my work, I'm not sure they are pleased with the quantity; I feel as though I am still very inefficient at this point.  I am quite sure it still takes me several times as long as one of my supervisors to analyze an OA, read and understand the application and prior art, develop counter-arguments, and write them.

I am somewhat concerned about this, and have a few questions:
1.  How long does it normally take a new patent professional to become efficient and profitable?
2.  Do you have any tips on becoming more efficient in reading OAs and prior art, identifying the issues, and writing arguments?

Any advice would be much appreciated.  Thanks!
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Robert K S

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Re: How long for a new patent analyst to become efficient?
« Reply #1 on: 05-30-09 at 10:47 pm »

I would always prefer someone capable of quality work over someone capable of quantity work.  An OA response that is persuasive enough to earn an allowance (or even one that wins on a minor point) is worth infinitely more than ten OA responses that just pollute the prosecution history with misstatements, mistakes, and misrepresentations.

Does your #1 have an answer?  The good practitioner never stops learning new tricks and becoming more efficient, but that said, a few weeks or months are sufficient to understand the rules of the game and tricks of the trade.

#2 - OAs are usually short and one can't be "efficient" in reading them--one just has to read them through and try to understand if the examiner's rejection has any prima facie merit or if, as is the typical case, the examiner is concocting BS.  I frequently use Adobe Acrobat to OCR patent literature references in order to make them text-searchable after acquiring the PDF copy from Google Patents or pat2pdf.org (Google Patents is faster but doesn't have newer publications).  I use Google to search the MPEP, and I quote and cite to the MPEP with nearly every response argument.  (It doesn't surprise me anymore when examiners don't follow, don't know, or don't understand the guidance given in the MPEP.)

I also find that I spend half or more of my time developing arguments that I eventually pare down or strategically discard.  Culling arguments that for whatever reason are more likely to harm than help the prosecution process is really where the quality comes in.

If your boss(es) are going to be rating you on a counts system, your output quality is going to be as bad as the PTO's.  I'm not sure why they would have billing set up to bill by the response rather than by the hour, anyway.  As long as you're not missing statutory deadlines, you're doing well.

Two last bits of advice (though they both go toward quality rather than quantity.)  First, answer the mail.  By that, I mean, make sure to address or argue every point.  Let no stone go unturned.  Second, never fall prey to the temptation to make an needless admission.  It might seem easier at the time to explain a claim amendment by offering that the examiner may be right on a technical point.  There's almost never a good reason to do this, even if you have a suspicion the examiner might be right, because if you're wrong about that, and you or someone else later discovers the flaw in the examiner's rejection rationale, it's more difficult to surmount the earlier admission.
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Examiner

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Re: How long for a new patent analyst to become efficient?
« Reply #2 on: 06-11-09 at 11:06 am »

former patent examiner for 7 yrs, send me an email at tuanhai713@yahoo.com then I will guide you the trick of response office action
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