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[chemist62]

I just passed the bar and am looking for a job.  Sometimes I consider small boutique firms.  I was courious:  how many utility patents represent a normal workload for an agent per year?  100? 200?

[patentsusa]

If you don't have a big backlog of amendments and are just writing new applications, you could do one a week (after a couple of years of training).  When you are just starting out, particularly during the first six months when nobody will be looking too closely at your billings, I recommend that you focus on learning, not on production.

[chemist62]

patentusa, thank you for the answer.  This made a lot of things clear to me.

[khazzah]

The number of "cases" you work on depends on a number of factors:


• number of hours your firm requires you to work
• how much the client pays per apps/response
• your level of experience
• ratio of app:responses (rule of thumb: apps take 3-4 times as long as a response)

So you can see that working at a firm with an 1800 hour requirement and clients that are "cheap" is more time consuming that a firm with a 1600 requirement and clients that are "generous".

And you can see that if do nothing but draft apps, you'll handle a lot less cases than if you also do responses.

[The mix of work usually depends on what type of work the firm has at the time. Though I have heard of firms that feed agents mostly apps, and give the repsonse work to attorneys.]

In short, too many variables. If you want a better idea, you need to start by doing some research on #1 and #2.

[Robert K S]

I don't know of anybody who in actual practice (a) only writes applications and (b) manages to crank out one a week.  Patent practice isn't just about initial filings.  If that's all you did, no patents would be granted.

Juggling prosecution of 100-150 applications would seem to me to be the upper limit of what any practitioner should be expected to handle.  If all of them are being actively prosecuted, that's 2-3 responses a week, on average, which would seem to me to be a pretty full load, given that they do tend to get bunched up with respect to deadline dates, and given all the other things that take up time in a practitioner's day (talking to clients/inventors, playing phone tag with examiners, working and discussing things with colleagues, administrivia, giving away free advice here :-) ...)

If anyone can legitimately handle 200 applications solo, and still have an excellent issuance rate with broad claims, I'd like to hear about it; they deserve some sort of award.

[DogDayPM 9er9er9er]

Juggling prosecution of 100-150 applications would seem to me to be the upper limit of what any practitioner should be expected to handle.  

Can you be my boss?

[Robert K S]

DogDayPM, do you manage a response a day on average?

Some responses only take a few minutes.  Restriction requirements elected without traverse... actions in which the only rejections are non-statutory obviousness-type double patenting rejections and a terminal disclaimer solves the problem...

And I can imagine a style of practice in which every action is responded to with a narrowing of the claims and a payment of an RCE until a notice of allowance comes in.  If that's how you practice, sure, bump up the maximum to 300 or 400 applications a year.  That style of practice, I think, doesn't deliver much value to the client even if it results in issued patents because the types of claims likely to be allowed would be narrow, design-around-able, and probably wouldn't necessarily cover would-be competitors.

In our practice, every line of every reference used to reject us is scrutinized.  If the rejection isn't immaculate and unflawed, it's not a prima facie case and it's argued on every issue.  In our practice, we're having to write appeal briefs for about 85% of our cases just to counter nonsense (though a smaller fraction actually go to appeal because that's what the PTO does these days--send out weak finals and then withdraw finality to recook rejections when it looks like the applicant is serious about actually getting a patent on broad claims).

Now, perhaps there are clients out there that, for reasons which could include ignorance of patent law and the importance of claims, prefer the former style of practice and just enjoy having issued patents for the sake of having issued patents, nevermind that they're weak patents and a waste of the clients' money.  And I'm sure that there are a lot of law firms that work very well by the former style of practice, churning out responses and racking up billable hours.  So I won't go so far as to characterize one style of practice as "bad"/"wrong" and one style as "good"/"right".  Objectively, they both work for different subsets of the client/practitioner populations.

But it should be evident that one style is more likely to result in issuance of the broadest claims to which the inventor is entitled at the expense of accomplishment of a bigger workload as measured by volume.

[klaviernista]

DogDayPM, do you manage a response a day on average?

At my old firm, I managed about 500 cases if you include foreign cases as distinct from their U.S. counterparts.  If not, I'd estimate that I managed about 100-120 active U.S. matters.  I personally prosecuted about 50% of those cases.  The other 50% were prosecuted directly by others, but I was the primary review attorney on their work product.  Depending on the experience of the person who actually produced the response, it could take me ~ .5-4 hours or more to review. 

I won't speak for DD, but I know that he is in-house at a pharma company.  And every in-counsel I've known in the pharma industry is up to his/her eyeballs in work.  It is not uncommon for one in-house pharma counsel to manage 1000 cases or more.  Its the same way in some other industries too.  E.g., I know the senior IP counsel for a large specialty lighting company in Massachusetts.  He once told me that his company holds him personally responsible for the entire patent portfolio covering two major product lines of the company.  I forget the actual number of cases, but it was well over 1000.  Maybe over 2000.  He worked A LOT. 

That said, Robert's point is well taken.  Volume often comes at the expense of quality.  But how you define how many cases a single attorney can "handle" will determine the response you get to that question.  Someone in DD's position or mine, who "oversees" a large number of applications and prosecutes a subset of them, will "handle" a significantly higher number of cases than a single attorney who is substantively prosecuting every case on his docket (for the reasons Robert mentioned).  For a completely green associate/agent, quality is far more important than volume.  It doesn't matter if you crank out 1000 or 10,000 widgets per day. If you make shi!!y widgets no one is going to pay for them. 

Best,

Klav

[Robert K S]

It's worth it emphasize the distinction between "managing" cases (i.e. taking the signatory responsibility for them but not actually doing the bulk of the research for them) and personally handling every detail of a case.  If a practitioner has capable help, his productivity can double or triple, sure.

When I used the word "manage" as quoted by klav above, I meant a different sense of the word--sense 9 on dictionary.com--to succeed, to get along.

[DogDayPM 9er9er9er]

DogDayPM, do you manage a response a day on average?

Why, I never before stopped to wonder whose "pen" was bigger.   

Er, what I mean is, never stopped to count.  So I did a quick query and my docket is over 200 active families on my own working docket with about another 200 managed through OSC.  The average family is US + about 12 foreigns, and active means cases are being prosecuted, but does not necessarily mean the US case itself is still being prosecuted.

But looking at the queue of "to do" US case folders, there are currently only 24 which should represent the next 3 months of substantive responses.  (Restrictions, NFMP, etc. do not go in that queue.)  So if what's sitting in my queue is typical, it's only about 1 substantive response/3 days, not nearly the 1 per day you asked about.  And whatever proposed responses I need to review from OSC, although they're pretty good and I probably don't need more than an hour on the average (less if they're proposing only argument, more if amending).  And the foreigns, but those do lag the US prosecution and the rejections are often derivative of the US, so you can't count foreign response time spent on par with US responses.

As for prosecution style, I don't figure I'm one of those you'd consider the lazy schlub going for that easy/worthless allowance.  Not to mention I know my grants are going to get microscoped at some point and I'm going to have to justify my amendments to a committee.  But no,  I do not scrutinize every line of every reference.  I generally stop when I've got enough information to make my rebuttal arguments.  But although I filed three notices of appeal this week, I'm sure I'm not even close to the 85% appeal rate that you mentioned.  Maybe half that. 

I also do 5-10 agreements a week, and I'm currently managing 3 litigations (which I don't like, by the way).  Usually about 15 hours/week in meetings, much of which is wasted time.  Then I'm supposed to write 12-14 new apps per year, but it'll be a miracle if by year's end it doesn't turn out that about half of them get written by OSC.  That takes time, too, for reviewing, but only maybe a quarter of the time it takes to do it myself.

[patentsusa]

I don't know of anybody who in actual practice (a) only writes applications and (b) manages to crank out one a week.  Patent practice isn't just about initial filings.  If that's all you did, no patents would be granted.

I should clarify that I didn't mean to imply that it is realistic to do nothing but write applications (though I do know attorneys who do nothing but write amendments).  I was only suggesting that about 40 hours would be a typical amount of time required for a 2 year associate  to write an application when they are not familiar with the technology.

The firms I was at never paid much attention to billings for the first 6 months or fraction of the first calendar year when a new associate joined.  I think getting training in this period, for someone with no experience, should be the focus.

[JimIvey]

My apologies if someone else has made this point.  Applications are not all the same size.  If you work in an area in which most applications are reasonably complex, even a well-seasoned practitioner won't write more than 2 or so each month, with some taking several months to complete.  At the same time, a seasoned practitioner can write an application for a relatively simple invention in one day.

Asking how many applications a practitioner can handle is a bit like asking how much a fish weighs.  Some weigh less than an ounce and some weigh over 23 tons.

Regards.

[smgsmc]

Getting back to the original circumstance (rookie agent) ... a synthesis of the responses from Karen, Deepak, and Jim covers the key variables.  But since you're probably looking for some guidance, and not just "It depends", here's my twist. 

(1) My experience, and that of about 5 others I know in different firms, track with Deepak:  after a year, the "target level on average" is about one new application and one office action per week.  If a firm wants in excess of 50 new applications/yr, clear out once you get a year's experience on your resume. 

(2) In theory, your managing partner is supposed to distribute cases among the associates/agents such that you get a balance of easy and hard cases to attain the expected target. 

(3) In practice, it doesn't work out that way.  I know of one associate who did only office actions for his entire first two years.  I (an agent) have ~80% new apps/20% office actions.  The senior associate next door has the flip side, ~20% new apps/80% office actions.

(4) The factor that's going to impact you most is what Karen refers to as "cheap clients"/"generous clients".  Translated into other terms, "cheap clients" =  Megacorp clients with a large book of business at low flat rates, $X/new app, $Y/office action; "generous clients" = clients with real inventions and real funding who pay $Z/hr.

So, if the flat rate for a new app is $5K, and you start out with a billing rate of $150/hr, you are expected to crank out an app in 33.3 hr.  If you are a senior associate and have a billing rate of $300/hr, you are expected to crank out an app in 16.7 hr.  The times are inclusive of everything:  the clock starts ticking when you open the case folder and stops when the app is filed.  The actual allotted time is less, because the partner takes his cut for review; this cut is substantial if he bills $500/hr.

A new app has considerably more overhead than an office action (inventor interviews, preparation of figures, IDSs, declarations, misc forms).  A new app also has a lot more uncontrolled variables:  quality of the initial disclosure, availability and cooperation of the inventors.  Office actions are also variable, but overall they are more tightly constrained than new apps and have less overhead.  As Jim pointed out, except for trivial cases, even a highly competent agent/associate would be hard pressed to crank out a new app in 17 hr (especially when there is a minimum fixed overhead).

Net result:  Senior associates get more office actions and a greater fraction of "easy" apps.  Patent agents get more apps and more difficult ones at that.  So here is the bizarre quirk of law office practice, as your billing rate goes up, you are allotted less time to complete the task.  In theory, the added experience allows you to do the job faster.  But that starts to level off after 2-3 yr; and there is still that fixed minimum overhead.

Of course, you can't do a good job under these circumstances.  But the Megacorps clients don't expect you to.  They just want to meet or beat their target metrics.  That was the subject of another thread a while back, so I won't repeat it here. 

So find out what the mix of clients is, hope you have some generous clients, and find out what it takes to get their cases assigned to you.

[chemist62]

Wow, this was an interesting discussion.  It shows that the work conditions vary widely.  It appears to me that there are two systems (at least) at work, the billable and the, lets' call it per item one.  From my experience in consulting work, it is hard to go over 1900 billable hours.  Somewhere around 1600 there is no more time for the non-billable work overhead any work activity brings with it.  Also, it looks like that office actions and the actual filings are split up.  Is this to the clients best interest?  Wouldn't one think that the office action should be left to the person who worked on the application for filing in the first place?

[Robert K S]

Of course, you can't do a good job under these circumstances.  But the Megacorps clients don't expect you to.  They just want to meet or beat their target metrics.

This doesn't make any sense to me.  What is a "target metric"?  A statistic of the number of filed applications?  A good solid set of issued claims has the potential to be worth something; 1,000 patents pending, or even 1,000 poorly-prosecuted issued patents, are usually worth only negative money.

I also don't understand how any system that files more applications than Office action replies can be sustainable.  The typical case has how many Office actions?  (In house, ours probably average 3 actions plus 0.7 appeal briefs.)  Even a system that files half as many new applications as Office action responses is going to have a hard time keeping up.