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 on: Yesterday at 04:58 pm 
Started by jtyshxq - Last post by ThomasPaine
The most important thing to learn in biglaw is when to say "No."  Don't agree to do work that you won't be able to finish in the time given. 

You have to have enough work to bill your time, with the understanding that even if you are pretty efficient, you'll only be able to bill about 80+% of the time you spend working.  In prep and pros there is a lot of "work" that needs to be done that you can't bill clients for.  Managing your docket, reviewing bills, fixing PTO screw ups, etc.  Can't bill any of that.  You probably already know that, but it will be more time when you're working in a biglaw environment.

But you don't want to have so much work that you can't meet your deadlines, both internal (i.e. to the attorney assigning the work to you) and external (i.e. to the PTO).  It's a balancing act.  Every single day.  Look at your docket.  Every single day.  Figure out how you're going to get everything done on time.  If you can't get everything done, ask for help.  Before it's late.  Not after. 

If you have too much work, and you're offered more, absolutely decline.  Politely.  If it's somebody you haven't worked with before, tell them you would like to work with them when your work load lightens up.  They will respect you for that.  They will not respect you if you agree to take on the work, and then deliver it late. 

You'll get fired if you miss due dates.  Probably not for missing a 3 month due date and costing the firm a $200 extension, but if you miss dates that cause cases to go abandoned, you'll be fired.  Of course, if you miss a lot of 3 month due dates, you'll probably get fired, so whatever you do don't defend yourself along the lines of "Sheesh, it's not like it went abandoned!"

Reviews from partners, and senior associates if they give you work, varies widely.  Some will put your work through the ringer.  Others will review more loosely.  Especially as you are coming in with 3 years experience, they might be expecting a higher level of work. 

Print your work out (yes, on paper) and step away from it for awhile (a day if you have it) and sit down and read it with a red pen in your hand before submitting it for review.  Partners are not your spelling and/or grammar teachers.  If you consistently turn in work that needs those basic revisions, eventually you will get fired.  Partners are interested in how much money they can make from your work.  The less review they have to do to have a high degree of confidence in your work means more money in their pocket.  They like that.

Other than that, you can get fired for all the garden variety reasons people get fired from any job, e.g. inappropriate "relationships" with co-workers, talking out of school, unexplained absences, etc.

Remember, they want you to succeed.  Because when you do they are profiting.  Keep making them money and you'll be fine.

 on: Yesterday at 04:24 pm 
Started by jtyshxq - Last post by jtyshxq
Hi, everyone,

I have been working with a solo practitioner (a partner and another patent agent) for the last 3 years.
Very small firm, laid back atmosphere. Normally, every piece of work I have done gets a revision from either the partner or the senior patent agent.

I just accepted an offer from a biglaw last week. While giving the two-week notice to my current boss, he basically says biglaws give you very small margin of error. You might get fired due to a single mistake you make. I never made any big technical mistakes during last 3 years, but his words make me really nervous.

I am just wondering what is everyone's experience with working in biglaws. Do partners normally give you revisions? what is generally considered a mistake that can get you fired?

 on: Yesterday at 02:14 pm 
Started by FroggyStyle - Last post by KING_KOOPA
First time poster here:  I am very curious about patent law and was pushed into pursuing that after my naval career.  After some research I was a bit discouraged after reading about advanced degrees in life sciences being necessary.  How true is this?  And what would my life be like after law school with my current credentials and what are some recommendations to make myself more marketable?

About me:
- BS in Biology 3.0, intended to go to med school prior to military
- 12 years as a Navy SEAL, still active
- damn good at video games haha, also pursuing fixtion writing


Bio works, as far as sitting for the patent bar examination.

Also in San Diego, there is a pretty high demand for biotech patent attorneys.  Biotech patent law is somewhat specialized, which is a positive in my opinion. 

 on: Yesterday at 01:43 pm 
Started by cdk270 - Last post by Robert K S
Okay, add "clear link" to the list, but I think that such a requirement is fulfilled by "may" language as proposed by the OP just as well as it is fulfilled by "is" language as Karen suggests.  In other words "[MPF feature] can be [structure A], or it can be [structure B], or it can be [structure C]" clearly links the claimed feature to the three disclosed structures, and if interpreted under 112(6/f), the claim will be read to cover only A, B, and C for the MPF feature.

 on: Yesterday at 01:21 pm 
Started by Furryous - Last post by artchain
The potential impact on your business is too great to mess around.  You need to take action quickly.  The scope and complexity of the questions you are asking are well beyond the information that you can get from an online discussion forum.

 on: Yesterday at 01:11 pm 
Started by cdk270 - Last post by lazyexaminer
MPEP 2181 II. C. uses the clearly links language that Karen used. It cites B. Braun Medical, Inc. v. Abbott Laboratories, 124 F. 3d 1419, 1424 (Fed. Cir. 1997) for this, and the court says this too.

We hold that, pursuant to this provision, structure disclosed in the specification is "corresponding" structure only if the specification or prosecution history clearly links or associates that structure to the function recited in the claim. This duty to link or associate structure to function is the quid pro quo for the convenience of employing 112, 6.

The context seemed to be: X clearly linked to function in spec. Patentee argued Y also did the function (to catch infringer having Y but not X). Court said only X was clearly linked to function, no indication in spec that Y does function, so X is the only corresponding structure in spec.

I don't know that a "clear link" is the important issue, or simply the fact that Y doesn't seem to do it at all. I didn't look into what was going on in that case in great detail. I guess there was at least a colorable argument that Y did the function, though the spec didn't say so.

Anyway, I can't recall this ever being an issue in any of my cases though. I don't think I would personally care whether you used may or can or will or what have you...that is, if you say X may do Z in the spec I would look to X as the corresponding structure for "means for Z." I guess in that sense I am ok with your "sufficient for PHOSITA to understand metes and bounds" argument. "Clear link" may be more important if there are competing structures that could do the function, like in the case--one may be more clearly linked than the other.

 on: Yesterday at 12:48 pm 
Started by Patentstudent - Last post by still_learnin
still-learnin, thank you for your reply.
I understand your position but I am really confused about how to tackle this one.

Hmm ... perhaps I was too harsh.

Upon re-reading your original post, I see you did make a stab at the claim ("a device that is placed ..."). Sounds like what you really wanted was some help in how to structure the claim -- maybe how to divide up the elements? how to express functional language?

I agree with what the other two posters have said. I'll echo/restate one of the points already made: think carefully about what is your invention and what is the operating environment of your invention, and try to positively recite only the former, even if it's necessary to refer to the latter. Here, you want to make sure you don't actually claim the car.

1. A coupling apparatus comprising elements x, y and z, configured to engage when linear tension is applied between x and y, and disengage when a predetermined force is exerted upon z.

I like the way mybrainisfull has translated your "disconnects when pushed sideways" function into something much more precise, yet kept mostly functional language (rather than adding structure). This is key to claim drafting. Inventors often give us either extremely detailed claims or extremely broad claims. I think practitioners can add a lot of value by thinking carefully about the middle ground.

I guess the risk of doing it that way would be enlarging the universe of pertinent prior art, because "couplings" could be used for many things other than tow cables.

The other concern with this broad functional language is enablement. That is, if you claim in terms of conditions for engage/disengage, yet only describe one structure which operates this way, your claim might not be enabled for its full scope.

This part of the middle ground I referred to earlier. The practitioner should work with the inventor to a) describe the structure the inventor has already thought of to accomplish the function and b) come up with alternative structures that could be used, and discuss all of these in the spec.

 on: Yesterday at 12:05 pm 
Started by cdk270 - Last post by Robert K S
Case law for 112P6 is pretty demanding. You need to *clearly* link the function to the structure. So I would avoid "may" and affirmatively state "is."

Maybe Karen is remembering something I have forgotten (or never learned), but I believe the only rules for MPF language are (a) that some structure be described in the spec sufficient for the skilled artisan to understand the metes and bounds of the claim and (b) MPF claims are limited to the corresponding structure described in the spec.  So whether "may be" or "is" is used, if the "unit" is found to fall under 112(6)/112(f), the effect will be the same.  Am I wrong?

 on: Yesterday at 11:34 am 
Started by still_learnin - Last post by still_learnin
For this to apply (examiner not allowed to make final the first office action after RCE), do I have to supply arguments to all of the rejections and objections made by the examiner, or is it just the amendment that provokes the non-entry ccomment that counts

The response you file must be "responsive" to every rejection and objection, per 37 C.F.R. 1.111.

It is common practice, however, for the response to a particular rejection to be "the amendment overcomes the references because the references don't teach [amendment]."

The above always applies, regardless of final/non-final status.

Are points of the examiner not rebutted in the after final amendment/reply accepted to be true and any chance for later rebuttal (for instance together with filing an RCE) lost?


Your last chance to make arguments is in the appeal brief. In fact, the appeal brief can contain arguments not yet raised in prosecution. 

 on: Yesterday at 11:24 am 
Started by Furryous - Last post by Furryous
Is this a bad idea?  Is it likely that the infringer will just ignore it, or even take down the counterfeit merchandise and refuse further communications?  We would like to get sales and distributor information and may pursue damages eventually.

The infringer is a large sales website based in California.  They are not fly-by-night (even though they mostly sell dime-store crap).

Is it necessary to list every single item and a reason we know it is counterfeit, or can we just assert that the items are fakes?

The counterfeit-seller has dozens of products listed under our brand name.  Nearly all are blatant counterfeits (we have never manufactured anything with the features shown, although they are the same general product type as ours, just as a Yugo is the same general product type as an Acura).  Three might be genuine but appear to be a counterfeit we are familiar with.  The difference is very subtle and we can't be certain without a test buy, but because all the others on the site are counterfeit and we believe these are too, we would like to include them in the list.

Can we demand a list of buyers so that they can be notified that the products are counterfeits?  We don't want our reputation damaged.  We're familiar with the products that they are selling under our name, and they are bottom-tier garbage of a design that we have never made because it's so low-end.

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