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[thought001]

I am a patent agent with a Ph.D. in Chemistry who now has one year of law firm experience.

At this time, I am considering starting my own practice for drafting and filing patent applications.  In regards to starting a private practice, I notice that docket numbers are used in law firms and seem to be required on many
USPTO documents.
Must I use docket numbers? And if so, are there rules governing them, or can I make them any number I wish.
For example I was thinking of making the first client,
client 100 and making each case associated with that client 100-01, 100-02, etc.

Also, how important is it to begin a money account with the USPTO? I was thinking of sending a check with each filing or other response. However, I see that law firms normally have an account in case of a mistake in the check amount. Such an account allows the USPTO to draw in the event the check amount was insufficient, and to ensure the date of the response remains in effect. In effect, it is an insurance. Would such an account be considered required or very recommended for a patent agent in my position?

Anything else I must consider that may be an obstacle before I plunge into drafting and filing applications on my own?

Thanks,
Thought001

[JimIvey]

Personally, I'd be more worried about a client base.  The rest is easy.  I don't know much about the chemistry end of the patent practice and what clients are like, but I imagine your clients will tend to be larger companies rather than individuals.  As a person in solo practice trying to find interesting ways of marketing my practice, I'd be interested to here how you approach this if getting clients isn't a problem for you.

Now, on to your questions.

Docket numbers.  How do you intend to identify your cases within your practice?  As far as I know, every attorney as a system of identifiers which are sorted in some manner such that the attorney can find the case file in the filing cabinets.  I don't see how you can do that without some sort of ordered system of identifiers.  So, while docket numbers aren't required, it's a practical necessity to running any practice I'm familiar with.

As for your proposed numbering system, it's fine as far as I can tell.  I chose a straight sequential system.  Files for a single client are not contiguous.  The reason for this is that it's possible that a new matter for an early client can over-fill a file drawer early in the sequence of files, requiring re-distribution of files within drawers relatively frequently and at times not selected by me.  In my system, the only major file shuffling happens to re-pack periodically to reclaim space left by closed/archived files.  And I can choose when that happens.  This kind of dense-list vs. sparse-list processing is second-nature for CS majors.

Deposit Account in the USPTO:

I don't have one.  I write checks, and have since I started my solo practice in 1995.  At the time, I was filing cases in batches for large entities.  One night, I filed 10 cases, each with filing fees in the range of $1,000-2,000.  That means I would have to have had $20,000 in the account.  If any other matters come up, the account would be severely depleted.  I guess I just didn't want to manage yet another account.  And, it always bugged me that I would have $10,000 or so (the amount I thought I could get by with most of the time) just sitting there.  And, that particular client with the $20,000 night takes a good couple months to pay the invoice, so that's quite a hefty float for a small-timer.

I suppose now I should probably start one to cover incorrect amounts in the amount I pay.  But it's never been a problem.  I can't think of any situation in which you aren't given an opportunity to correct an incorrect fee payment.  Maybe one exists, but I just can't think of one right now.

HOT TIP FOR PRACTITIONERS:  Here's what I recommend.  Get a frequent flyer miles credit card for your practice (if you don't already have one).  Keep some headroom on it.  Use it for fees (form PTO-2038).  Bill the client immediately.  The PTO generally takes weeks to months to get around to taking the money from the credit card (or bank if you use checks).  When the client pays, pay the credit card off and you should never pay any interest (or at least not much).  And, you should rack up the flyer miles like crazy.

If you don't have the need or want to fly, pick a credit card with another perk.
<cont.>

[JimIvey]

<cont. -- part II>

Anything else:

Time billing.  How do you plan to do that?  Some get around that by charging flat fees for applications.  I do that sometimes, but my clients still want to know what they would have paid at my rate for comparison.  Time tracking and a billing system which ties into it is nice.  I use TimeSlips but would like to drop them for something that runs under Linux if I could find something.

Calendaring.  When you first start, there's nothing to calendar.  My first system was a stack of files, the top one having the soonest deadline.  That worked until I started filing applications with missing parts.  Soon, half my time was spent doing stuff an admin could/should do.  Outlook or some other simple electronic calendar is okay to start, but it takes a lot of work on your part to make it work.  I found a system about 10% the cost of the ones used by big firms for IP docketing (less than $2,000 compared to $10,000-50,000 for the big firms).  It's based on Access.  It works pretty well.

Insurance.  While you're not required to carry it, you should know what's available.  It's surprisingly hard to find insurance for a patent practice (because litigation of patent malpractice always involves experts and gets quite expensive).

IT.  At the very least, have a system for regular backups.  I've set up scripts which back up my systems every few hours automatically without intervention by me.  I recommend all-in-one, fax, scanner, printer, copiers.  They're by far the cheapest sheet-fed copiers you can buy.  Get a laser one.  Inkjets may fade or smear (less now than then), but more importantly they're more expensive to operate (due to small capacity ink cartridges).

Shredding.  How do you hope to do that?  Don't throw draft applications on your street for recycling.  All you need is one sheet to blow down the street to get really embarrassed and to do a disservice to your clients.  I found a place that will shred a box (bankers box size) at a time for $10.  I've burnt out 2 $300 shredders in less than an hour each (with just two boxes of paper each).

Environment.  Do you plan to work out of your home?  Don't short-change yourself on space or light!  Make your office the best room in the house.  That's where you'll spend all your time.  If you lease a space, don't short-change yourself on space or light!  You'll be spending a lot of time there.

Taxes.  Unless you like doing that sort of stuff (I hate it), find someone good who'll do it for you.  Even then, you'll probably have to track your own receipts and give them totals at the end of the year.

A source for patent file folders....  Letterheard..... Bizcards..... Web presence....

Health insurance.....  Disability insurance.....  Retirement fund (SEP)....

I'm going to have to drop it there.  There are many things you'll come across with questions and such.  Feel free to write me with questions.  A lot of this stuff you'll figure out as you go along.  It's really not that hard.  You just sit down and start writing patent applications and figure out each of these one at a time.  Soon you'll be collecting checks and everything will seem like it's just a little too easy.  Then, you think about the list I just gave you and add a few more and it seems overwhelming.

Good luck!

[thought001]

Please let me take this moment to thank you very much for your comprehensive response to my question. It has been quite helpful to me.

You are correct that getting a client base is probably the most important question. Since I haven't been in solo practice yet, I really don't know much about how hard it will be to get clients. I plan to advertise in various relevant venues to the field and perhaps even send advertisements to prospective clients. But, there is only one way for me to find out how difficult it will be.

As I go along, I am bound to have more questions for you.

Thank you once again for your very helpful input on this matter.  

Thought001

[marcus bates]

Hello from a retired successful patent agent who has spent a lifetime as an independent patent practicioner. You do need clients and that is the biggest obstackle you face. Visit all the older patent practicioners you know and ghost write for them. This alone will tide you over until you feel more secure. The big problem here is that they will insist on hiring you.  Join and give speaches at several local societies , starting with ToastMasters International for they are famous for supplying last minute speekers for various organizations. Always give talks involving patent matters, of course.  Do open a deposit account. Never advertise free consulations- always charge $100 for the first consultation, up to one hour.  The freebies are for the old clients that feed you. Do not purchase insurance-just wear a white hat and treat everyone absolutely honest. This is what assures you are Never  involved in a serious contraversy, and this is what makes insurance un-necessary. Never accept a Client that asks you to do something you know is wrong. Never ever get caught in that web. Get rid of Clients that you may occasionally have personality conflicts. Dont work cheap. You only need a few good well satisfied clients because they will inundate you with more work than you can handle. Get rid of the bums by pricing them out of your office. Good Luck and remember to do something every day of your life to reduce the terrible bureaucracy that abounds throughout our governmental structure; especial the FAA. marcus bates of west texas

[JimIvey]

I think Marcus gave good advice.  I only wish to augment one point he made:

Do not purchase insurance-just wear a white hat and treat everyone absolutely honest. This is what assures you are Never  involved in a serious contraversy, and this is what makes insurance un-necessary.

For the record, I went for years without insurance on this belief.  However, you should be aware that "serious contraversy" is as easy as missing a deadline in an irrecoverable manner.  Missing filing deadlines (local and foreign) come to mind as an example.  Most other things are fixable for a fee.

Feel free to go without insurance, but you should be fully aware of the risks in doing so.

One last tidbit re insurance:  I've heard the statistic that as many as 70% of all claims of malpractice are in defense of suits for unpaid legal fees.  Want to avoid malpractice?  Don't sue your non-paying clients.  Like Marcus said, choose your clients carefully.  I would add: don't sue the bad ones.  Let them go and trust that their kharma will catch up with them in good time.

One attorney I spoke with a while back had his own solution to this problem.  He sent a letter terminating the relationship, then waited for the statute of limitations to run on malpractice claims (one year, I believe).  Then he would send his invoices to a collection agency.  I'm not sure this is an effective approach, however.  Malpractice issues can come up much later than the attorney's relationship with the client (e.g., during litigation) and the statute of limitations begins to run as soon as the client knows there's a problem.  Interesting technique, though.

Regards.

[Isaac]

I plan to advertise in various relevant venues to the field and perhaps even send advertisements to prospective clients.
 

When sending out writting correspondence to prospective clients, be aware of the rules on solicitation (37 CFR 10.32-33).  They should not interfere with a generic advertising brochure sent out in a general mailing.  

[Denise]

Hello,

My name is Denise and I am a new attorney in Chicago.  I just took the patent bar yesterday (July 15th; I believe that I passed).  Anyhow, unable to land a position, I have started my own practice.  Can some of the IP attorneys give me advice as to the best way to gain IP experience including writing patents.  Below is a summary of my background.

-B.S. in Computer Engineering
-ETA KAPPA NU (Computer and EE honor society)
-worked as a software eng at Motorola for 1 yr and 7 mos.
-Graduated from Chicago-Kent with a certificate in IP
-clerking exp:
     -Software Company (contracts; summer pos)
     -IP boutique (all areas of IP; semester externship)
     -solo law office (entertainment attorney; semester internship)
-Licensed to practice in IL

Thanks in advance.

Denise

[Denise]

Hello,

My name is Denise and I am a new attorney in Chicago.  I just took the patent bar yesterday (July 15th; I believe that I passed).  Anyhow, unable to land a position, I have started my own practice.  Can some of the IP attorneys give me advice as to the best way to gain IP experience including writing patents.  Below is a summary of my background.

-B.S. in Computer Engineering
-ETA KAPPA NU (Computer and EE honor society)
-worked as a software eng at Motorola for 1 yr and 7 mos.
-Graduated from law school with a certificate in IP
-clerking exp:
     -Software Company (contracts; summer pos)
     -IP boutique (all areas of IP; semester externship)
     -solo law office (entertainment attorney; semester internship)
-Licensed to practice in IL

Thanks in advance.

Denise

[MotGuy]

Hi Denise.

I have a similar background as you.  I have been working for Motorola in the Chicago area for a numer of years. I am considering pursuing education in patent
law.  Given my technical background and affinity for the law profession, I thought that patent law is right for me.

I would like to hear more about your experience as patent attorney as well as the experience of a law student.  Any advice or information would be greatly appreciated.  

Thanks.

[Isaac]

The safest way to get experience is in a situation where another
practioner is going to be looking at your stuff.  IMO the best
situation is doing some overflow work with another solo.  If
your technical background fills in some gap that the practioner
cannot fill, perhaps the practitioner might find your services
useful.  I was lucky enough to hook up first with a practitioner
who was a classmate at law school, and then with an attorney I
was close to as an undergrad.

Your technical background seems high on academic credentials but fairly
low on experience, so maybe you'll have some selling to do.  But
I'll bet you're up to it.

Have you approached your old employer about any patent work?
Also, even though I recommended approaching other solo practitioners,
don't rule out approaching firms for overflow work.

[bill]

All:

I want to emphasize a point raised in this string:  experience.  In my 15+ years in the patent field, I strongly believe that a patent practitioner should have at least 3 years of comprehensive preparation and prosecution under the supervision of an experienced practitioner BEFORE considering doing her/his own work.  

This is what Eric Stasik said in another post:

Having passed the registration exam, you are (IMHO) about 25% qualified to draft and prosecute applications. Drafting is hard, writing claims is hard, the procedures are extremely complex and until you have about 3-5 years of doing this under the guidance of an experience practitioner, you should not be flying solo. This is one problem I have with the US procedure - it gives agents and attorneys the right to represent clients in front of the USPTO long before they are really qualified to do so.

I want to emphasize something tacit in that last sentence:  THE CLIENT SUFFERS FROM WORK DONE BY UNQUALIFIED PRACTITIONERS.  I cannot stress enough the absolute necessity to obtain experience before representing clients.

So to those of you who want to represent clients with little or no experience, DON”T DO IT.  Do what Eric stated in that other post, "Thus, what you should do is to find a law firm, or patent agency, with an experienced staff and work at their slave labor wages until you have acquired the experience you need."

[ttglink]

I recently pased registration exam.   I do not have legal experience but due to my profession ( R & D) have been involved with patents, patent attorneys, licensing etc..

Now, I want to develop second career in IP field.  With liking for IP field, advanced degrees, several issued patents, and curiosity to learn about almost nay technolgy area, I think I can do it.  Question is how competitive/ difficult it will be to make money in this field?

I was doing research about attorneys in Dallas area to see how they are doing.  There are more than 300 registered patent attorneys and agents in DFW area.  I look under each to see how many cases they have prosecuted (from USPTO database).  I was surprised.  60% were not listed as primary agent/ attorney for a single patent!  There were about 20% with 1-10 cases, about 5-10% with 50-100 cases and handful with 200-500 cases.  One even with 570 cases!  Attroneys who had prosecuted large number of cases had them in general/ mechanical area.  All with less than 50 patents had them in specific technical areas.

I think, patent attornyes with lower number or no patent cases, perhaps are in litigating or in trademark/ other IP areas.  Now, considering average cost of getting a patent to be $7500-$10,000 (that is what I have paid for my patents), one considering solo practice have to have roughly 20 cases per year to make decent wage  of $100,000!  Does that seem right?  What is an average cases an avarage firm do?  How long an average patent agent takes to prepare a case?

This statistics indicated that patent agent has to be very good to take upon this a full time career, as he or she is not allowed to practice in areas other than drafting and prosecuting patent applications.  

[mchang]

I am a patent attorney with 5+ yrs of experience in patent prep and pros.  I have recently started out on my own.  Since my tech. background is in bio and chem. most of my potential client base is going to be corporations.  While I am working on this aspect of client development, I was wondering if anyone has any advice for tapping into some overflow work, to carry me through this initial time when things are slow.  Any advice is appreciated.