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Author Topic: Number of Patents an Agent can Prosecute  (Read 1038 times)
smgsmc
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« Reply #15 on: 08-02-10 at 04:38 pm »

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?

In principle, you are right.  In practice, there's a ~3 yr backlog at the Patent Office in many areas.  That is, once you file a new application, you need to wait 3 yrs before you get an Office Action back.  Within a three period, associates and agents are likely to come and go, and clients are likely to change outside counsel.  We also recently took over ~100 cases from a firm that went belly up.
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smgsmc
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« Reply #16 on: 08-02-10 at 05:06 pm »

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.

A "target metric" is the number of new applications filed.  The $ value of a patent portfolio is only one consideration.  For Megacorps clients, there is great PR value:  "We are one of the most innovative companies in the world, we filed over 1000 patent applications last year and got X patents issued last year."  The number of new applications is the common metric because the current in-house counsel can be held directly responsible and accountable.  Whereas the number issued depends on the legacy of years past, and the number of Office Actions responded to is not a good metric because the execs would say, "Huh, what's an Office Action?" when the IP head hauncho gives his annual presentation to the execs.

Sorry if I wasn't clear on the number of new applications vs the number of Office Actions.  Of course, the number of Office Actions we get far exceed the number of new applications.  But as I mentioned, the proportion is not equally distributed among all the associates and agents.  And, remember, Megacorp clients have dealings with many outside counsel, and the proportion of new applications and Office Actions are not necessarily equally distributed among the various firms.
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