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Yes, this can be successfully done

1 (6.3%)

No, this is crazy talk

8 (50%)

Maybe, this is the only option because there are no jobs

3 (18.8%)

No, see my comment below

2 (12.5%)

Yes, see my comment below

2 (12.5%)

Total Members Voted: 16

[Agent007]

Hi everyone,

If you've read this far, why not take a click at the poll?

Here's a little more background: 

• recently passed the PTO registration exam
• BSEE & MBA
• 25 years engineering experience (design engineer thru executive)
• inventor on dozens of issued patents filed by firms
• recently filed a handful of applications pro se
• Zero professional prosecution experience

   

Thanks for voting.
Gary

[Robert K S]

I'm not sure how this is different from saying "I have an architecture degree but nobody's ever paid me to build them a house before.  My idea is to pay some more experienced architect to look over my work."  What work?  Who will be hiring you?

[bleedingpen]

"successful" can meet different degrees of success, but my answer is no.

A solo patent agent has a hard enough time on their own.  Most clients want someone that can answer a wide variety of legal questions that are interconnected with patent law.  Patent agents don't have the authority to provide those answers. 

[cheesepep]

I said no because no one is going to hire you.  No one wants to hire a person with no formal experience even if they are being mentored.  A patent costs a lot of money...it is better left to be done by a professional.

I think at a minimum, you should have 3 years formal patent prosecution experience before going solo.

[Agent007]

Two excellent points, thank you!

no one is going to hire you 

With 25 years in product development, I've worked with may product development professionals.  Many are involved in small entrepreneurial ventures, others are in management positions , etc.  I'm confident that I can bring in some work.

look over my work 

by " having a more experienced practitioner 'look over my work' ", I mean reviewing my applications before submission, OAs, answer my questions, etc.

A solo patent agent has a hard enough time on their own. 

Yes, but I see that many are doing this.  Perhaps some will comment...

Most clients want someone that can answer a wide variety of legal questions that are interconnected with patent law.  Patent agents don't have the authority to provide those answers.   

This will be an advantage for my mentor.

you should have 3 years formal patent prosecution experience before going solo 

Ideally, yes, but is it realistic for me to expect to find this in the current economy?

Thanks again for your comments,

Please keep them coming!!!

[bleedingpen]

Most clients want someone that can answer a wide variety of legal questions that are interconnected with patent law.  Patent agents don't have the authority to provide those answers.   

This will be an advantage for my mentor.

Then the client will go to your mentor or find a "one-stop" shop to work with someone else.


If you think you can develop work, you are much better off getting under a firm "umbrella" with an experienced patent attorney.  Work it out where you get x% of billings and maybe they can also send some work your way if they are taking money off of the top of your billings.  Then clients will feel easy knowing they are working with a firm and you get instant credibility by having a recognized firm name on your business cards. 

I promise you that if an agent came to me and said, I have some work, but I need someone to review it and would like to be under another firm's umbrella, would you be willing to pay me 60% of what I bill for work I generate, then I would find a way to work with that agent and also send them some work to help for the 40% of billables that they are losing to the firm. 

[Agent007]

...getting under a firm "umbrella" with an experienced patent attorney.  Work it out where you get x% of billings...

Excellent suggestion, bleedingpen!

Being an outsider to this industry, I didn't know that that type of arrangement would be considered.  I will think about this and try to research it further.  At first glance, it would seem be a win-win.  I'm not concerned about the $$$ at this point, just looking to get some experience, get a view of the business from the inside and see if I love the work.

Thanks for your help.

Does anyone have comments on the viability of this option?

[DogDayPM 9er9er9er]

I just can't get past that double entendre...   

[Examinerguy]

In my opinion (an examiner's opinion) you need at least 6 months to learn the basics of IP law and prosecution. Learn how to write appeal briefs, respond to rejections, etc. Depending on the examiner's rejection, there could be many types of responses, each having a different consequence for later prosecution. You need to go through the cycle at least a few times in order to get a feel for the numerous possible outcomes in every case. 

To give you an example, I have had a pro se applicant who has worked in the field for 20 years. He has submitted around 30 applications in his career (I have examined 3 of them) and prosecution goes basically the same way every time:

1.) First action: 101/112/objections/etc.
2.) Second Action: Rewrites claims, 101/112/objections/etc.
3.) Aband/RCE..prior to RCE I will get a phone call basically training him on how to write claims.
etc. etc.


He has gone through the cycle multiple times and still can't correctly prosecute a case. Imagine what would happen with you! Costly for either you or your client.

[Agent007]

you need at least 6 months to learn the basics 

Yes, examinerguy, I couldn't agree more.  But how to get that experience if no one is hiring newbies?  (The PTO included)

[Examinerguy]

Stick with engineering for now while still applying for patent jobs.

[RMissimer]

The problem is that you have to disclose the mentor to the customer.   What customer will hire you after you have disclosed?

The mentor is providing "unbundled legal services."   We do that for clients all the time (i.e. review their work product before submittal).

Good luck getting started.

[khazzah]

Note that I said a Qualified Yes because I'm starting from the premise that

>I bring in my own business

As far as finding a mentor/reviewer, I don't think you'll find any med-to-big-size firm attorneys that would be interested. Nor could you afford to pay their going rate, since your clients wouldn't be paying *you* that much.

That said, I suspect there must be some small and/or solo practitioners that would be willing to do this work. Their rates would be cheaper than MidLaw or BigLaw. But still higher than yours. So you'd have to run the numbers and see if it's feasible.

[Agent007]

Just accepted an examiner job at the PTO.  Hope this experience will be of value.

Thanks to all on the is forum and for your comments and advice.

[UVAgal4]

I see the point is moot now, but just my two cents....

No, this is crazy talk because...
why would he or she want to invest so much time in effort in someone who will most certainly be taking off on their own and quite probably taking clients that they would like to have as their own?
why would a client bother with the middle-man (you)?