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[I_just_started_this]

I'm being trained as a patent attorney as we speak.  I am somewhat shocked by some aspects of the training.  Specifically, I have been told that the presentation (down to avoiding double spaces where there should be single spaces) is far more important than substance.  In fact, a senior associate basically told me that you do not actually need to understand the invention to write an application.   He said that all you need to do, basically, is to parrot back what the inventor says, make some edits and add some details to make it look like you did some work... and place the whole thing in a presentable form (free from typos, etc. and so that it looks perfect, correct margins uniform font, etc.).  Is this true?  If so, I find it really disappointing.  I don't understand why I went to law school and got a masters in engineering just to be a high quality typist.

[Robert K S]

Get a different mentor, quick.  You won't be doing any service to your clients if the disclosures you produce for them merely parrot theirs rather than translating them into the form of what is essentially a legal document that will protect their rights in part by avoiding the many pitfalls that could make their patent invalid, easily design-around-able, or make the application unprosecutable from the get-go.

A patent application has almost nothing to do with formatting.  If/when the application or issued patent is published, it's going to be re-typeset anyway.

[UVAgal4]

I would say no.

I think you need to at least mostly understand what is being invented. A lot of times the inventor is more down into the nitty gritty details (an N-channel transistor here, a resistor there) whereas the attorney needs to take a step or two back, see the big picture, and what can be generalized (a switch, a doodad) and still solve the problem.

But yes, some practitioners will send a first draft to the inventor that basically says "The invention relates to [Note to inventor: please insert the field of your invention here.]. In this domain, it is commonly known that [Note to inventor: please mention what is generally known in this field here.] Nevertheless, a drawback of this prior art document is [Note to inventor: Please state the problem that your invention is trying to solve here.]....."

[MYK]

I agree with Robert.  Even the patent mill I worked at had more training and wanted more substance in an application than that.

To be charitable, maybe your supervising attorney is just checking how well you draft it, and will next go through it carefully to show you the pitfalls you stumbled into.  Doesn't sound like it, but we can hope.  If not, run.

You didn't take any patent drafting classes during law school?

[khazzah]

You didn't take any patent drafting classes during law school?

Do many law schools offer such classes? I know specialty schools like Franklin Pierce do, and I've heard of a few others. But I'd expect these to be in the minority.

[khazzah]

free from typos, etc. and so that it looks perfect, correct margins uniform font, etc.

In general, lawyers do place a *lot* of emphasis on getting the little things right. This is just built in to the basic personality of most folks who go into law.

The most defensible explanation I've heard for why this matters is this. Most clients either don't have the background to understand the documents we send them, or they have the understanding but not the time to focus on the substance. Therefore, clients focus instead on presentation, and things like misspellings, mixed fonts, incorrect dates, incorrect numbers, etc. really jump out at them. So ... get that stuff right.

If you're not a person that is naturally detail-oriented, you need to get a system in place to help you. Use checklists, rely a lot on your secretary, etc.

all you need to do, basically, is to parrot back what the inventor says,

Can you get away with that some of the time, for some partners, and for some clients? Maybe. But most other partners and clients will demand a quality product in which you actually add some value for your $200+ bill rate.

So if I were you, I would do everything in my power to get work from someone other than the senior associate who told you this.

You can learn how to write a high quality patent application and then later on, to choose to write a patent application that is of lower quality yet accomplishes what the client wants (and pays for). But you're going to have a hard time adapting if you all you learn at the beginning is to take shortcuts and do the minimum work required.

[Yak]

Not sure about other schools, but mine offered each a patent law, a patent drafting, and a copyright/trademark law class.  No where to go after those 3 electives, but it was a start. 

[Wiscagent]

I think you need to at least mostly understand what is being invented. A lot of times the inventor is more down into the nitty gritty details (an N-channel transistor here, a resistor there) whereas the attorney needs to take a step or two back, see the big picture, and what can be generalized (a switch, a doodad) and still solve the problem.

I agree, and for most applications an interview with the inventor goes a long way to gaining that understanding.  Also, it is important to have some understanding of the state of the art.  For example, If a client comes to you with the great idea of installing solar panels on the roof of a house, you'd better know enough about solar panels and how they are installed and used to at least ask some questions that will draw out the inventive aspects of the great idea.

But yes, some practitioners will send a first draft to the inventor that basically says "The invention relates to [Note to inventor: please insert the field of your invention here.]. In this domain, it is commonly known that [Note to inventor: please mention what is generally known in this field here.] Nevertheless, a drawback of this prior art document is [Note to inventor: Please state the problem that your invention is trying to solve here.]....."

From time to time, I have read granted patents that literally include lines like:
      Note to inventor: please insert the field of your invention here.
That's not good advertizing for the practitioner.

[smgsmc]

Part of the focus on minutiae stems from the patent filing requirements.  If your margins are too narrow or your fonts are too small or if you have photocopy marks, you can end up filing substitute specifications and replacement drawings ... and you can't (or shouldn't) bill for that.  The firm eats those costs.

Looks like you do need a different mentor.  Are you in a commodity high volume, low flat rate environment?  My boss thinks you can switch on/off ... do poor work for low paying clients, and high grade work for high paying clients.  The problem comes if you don't learn to do it right in the first place.  And even if you do learn to do it right in the first place, your skills will deteriorate if you get a steady diet of low grade jobs.  It's just like sports:  you get better by playing stronger opponents, your game goes to hell if you play weaker opponents all the time.

I've had my hands full with Office Actions trying to rescue applications written by attys who had no clue about what they were writing about, and these were for high paying clients with real inventions, not PR fluff.  Personally, I would like to see more malpractice suits; maybe then, law firms would cough up more bucks for technical expertise.

[MYK]

You didn't take any patent drafting classes during law school?

Do many law schools offer such classes? I know specialty schools like Franklin Pierce do, and I've heard of a few others. But I'd expect these to be in the minority.

Dunno.  Mine offers:
1) Patent law (basic general course)
2) Patent prosecution (drafting, OA's, issuance)
3) Advanced patent practice (more drafting, Markman hearings, opinion letters)
4) Patent litigation (initial prep, local rules issues (ND IL), complaint, depositions, motions, Markman)
5) IP trial advocacy (including a full, albeit short, patent infringement mock trial)
6) Patent clinic (drafting applications for the Lemelson competition people)
7) International technology transfer (ok, this is getting pretty tangential)

There are a few other short courses, but I can't remember the titles.  That's in addition to TM/UC and Copyright, TM moot court, and a couple of other short courses related to copyrights and first-amendment issues.  Also, there's a course that combines patents, copyright, and trademarks all in one, for those who just want overviews (and who, generally, don't want to go any further).

[Itoen]

MYK, that sounds like an unusually high amount of patent specific courses.  I'm guessing Chicago-Kent or maybe John Marshall.  I would venture to guess that most law schools only have 1-2 patent specific courses.

[MYK]

MYK, that sounds like an unusually high amount of patent specific courses.  I'm guessing Chicago-Kent or maybe John Marshall.  I would venture to guess that most law schools only have 1-2 patent specific courses.

Two or three hours south of those.

(But we do get to share the Holdermans with JM. )

[Robert K S]

Yeah, that IP curriculum sounds pretty enviable.  Anyone who managed to take all of those courses in law school would probably come out fairly well prepared to enter the IP law market, and do a great deal of "damage".

[BobRoberts]

Wiscagent said:
"Also, it is important to have some understanding of the state of the art."

This is a good point.  It is important to be able to draft the claims around what is currently out there.  I would only add that this can usually be (easily) solicited from the inventor(s):
"So, how is this currently being done in your field, before your invention?" 

[heyitsjohn2002]

by nature of the beast, applications drafted by Attorney A end up being prosecuted by Attorney B.  This happens because of the 2-3 year backlog/wait that it takes to get an examination.  I saw recent data (forget where) that indicates this happens 50-60 percent of the time.  Most likely because Attorney A was a newbie and moved on to bigger and better things, and 2-3 years later Attorney B is the newbie.

This is the problem I am dealing with now.  The even BIGGER problem is that Attorney's back in 2006-2008 generally had little forthought and/or understanding of the ramifications of KSR (rightfully so since its effects weren't really noticed until 2008).  Thus, nearly every application I am prosecuting these days is terribly positioned for an adequate response to an obviousness rejection.  *sigh*  Declarations are largely unhelpful.  If it's not in the spec, the Examiner is not persuaded.  Sure... you can appeal examiners... but to what end?

I digress...

In my opinion, and as I draft applications now, disclose EVERYTHING, and disclose everything in as broad of manner as reasonably possible.  Be thinking of how 2-3 years later you will overcome obviousness.  Formalites are the least of my concerns.  I'm not saying they're not a concern.. i'm saying they're the LEAST of my concerns.

I do note that as a new newbie, it might be hard to grasp drafting strategy... just something to keep in mind.  good luck