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Author Topic: Billable hour - meaning and efficiency  (Read 826 times)

examiner_bio

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Billable hour - meaning and efficiency
« on: 04-25-17 at 06:27 am »

I'm still considered junior in the field and the whole idea of a "billable hour" still somewhat bogs my mind.  Basically, I don't see how, in some cases, one can expect high quality work within a certain time limit.  For example, an office action with only 1 rejection and say a silly reference does not compare to an office action with 4 rejections and 12 references.  For me, I'd estimate 1-2 hours of total time for the former case and as much as 14-18 hours for the latter case (assuming the client really wants the patent).  I see associates turning out somewhat crappy work and likely spending less time, but that doesn't line up with what I've been told.  How have people addressed this issue and how have you improved? I've improved simply by being in the field and gaining experience - i.e., exposed to more and more nuanced situations.  I'd love to hear others' experience.
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blakesq

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Re: Billable hour - meaning and efficiency
« Reply #1 on: 04-25-17 at 07:50 am »

If you have two independent claims, and 18 dependent  claims, then if you are able to traverse the rejections with respect to the independent claims, then you do not have to argue the rejections with respect to the dependent claims. This is because once the independent claims are allowable, all dependent claims will become allowable too.  This provides great efficiency.
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fewyearsin

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Re: Billable hour - meaning and efficiency
« Reply #2 on: 04-25-17 at 08:35 am »

The billable hour in prosecution is a fairly ineffective way to bill, but it's what some clients still use.  Most prosecution work is done with a budget cap, and most of the time that budget cap is hit or exceeded, so most prosecution work, while billed to the client showing "hours worked," is in reality "flat fee" based on the budget cap.

Only arguing the independent claims is a great way to save time, but not so great always for the client.  As an Examiner with prosecution experience, I absolutely LOVE getting a response that only argues the independent claims.  That makes my job easy.  I just argue back, or find another reference with the new feature.  Then the rejection of the dependent claims stays the same.  My suggestion for a good response is that, in addition to arguing/amending the independent claims, add claims where you can, and argue a few dependent features as well.  It is rare that the rejection is SO good that there aren't more than one good rebuttal/amendment approaches.

So back to your question, how do you get more efficient?  I think you're on the right track - perfect practice makes perfect.  Put in the time now to get good.  Learn the MPEP and useful caselaw.  Figure out how Examiners are responding to your different response approaches.  If you can get the client on board, interview.  Interview, interview, interview.  Some Examiners won't be helpful, but many will be.  As an Examiner, I estimate that an Applicant that interviews their case with me saves AT LEAST one round of prosecution.

Good luck.  Enjoy the field.  I've enjoyed both sides (attorney and examiner).  It can be fulfilling, and when it's not, it still pays well ;)
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examiner_bio

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Re: Billable hour - meaning and efficiency
« Reply #3 on: 04-25-17 at 01:28 pm »

The billable hour in prosecution is a fairly ineffective way to bill, but it's what some clients still use.  Most prosecution work is done with a budget cap, and most of the time that budget cap is hit or exceeded, so most prosecution work, while billed to the client showing "hours worked," is in reality "flat fee" based on the budget cap.

Only arguing the independent claims is a great way to save time, but not so great always for the client.  As an Examiner with prosecution experience, I absolutely LOVE getting a response that only argues the independent claims.  That makes my job easy.  I just argue back, or find another reference with the new feature.  Then the rejection of the dependent claims stays the same.  My suggestion for a good response is that, in addition to arguing/amending the independent claims, add claims where you can, and argue a few dependent features as well.  It is rare that the rejection is SO good that there aren't more than one good rebuttal/amendment approaches.

So back to your question, how do you get more efficient?  I think you're on the right track - perfect practice makes perfect.  Put in the time now to get good.  Learn the MPEP and useful caselaw.  Figure out how Examiners are responding to your different response approaches.  If you can get the client on board, interview.  Interview, interview, interview.  Some Examiners won't be helpful, but many will be.  As an Examiner, I estimate that an Applicant that interviews their case with me saves AT LEAST one round of prosecution.

Good luck.  Enjoy the field.  I've enjoyed both sides (attorney and examiner).  It can be fulfilling, and when it's not, it still pays well ;)

I'm right with both of you on only arguing the independent claims.  I'm also diving into more case law, thanks to the website and others.  Also, thanks for the interview tip - very insightful.  I have slowly learned that some responses are not even worthwhile based on the interview.
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