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Author Topic: Not very satisfied client but still gettting many patents issued  (Read 764 times)

PatentScientist

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Ok so I have a general question and would appreciate your experience dealing with clients. I am a biotech major doing mechanical cases and prosecution for client X at a small IP boutique. Since I have started prosecuting their inventions I have gotten a good number of cases allowed. I have been at the firm a little over a year and I have been given full authority to sign off my own work. Last week or so client X has contacted my boss stating that the "quality" of work is not what it used to be. I have a pretty ok Issuance/Office Action ratio and the procedure is that I comment the OA, draft a response and have them review it. >75% of the time they agree but there is one attorney or agent or whatever he is at client X who keeps sending me emails back stating don't focus on this bla bla bla, that is not the core of the invention etc. But the approach is always you read the cited art, try to patentably distinguish over the art and argue that. I am not a mind-reader so naturally some times I can't get the stuff perfect and right the first time without any interaction with the client. I know that my boss is satisfied with my work, he pulled me in to his office and I explained my case without getting defensive but with this one guy at client X sometimes he has comments or wants to amend the claims focusing on something else or redo the draft. Is this something you have experienced ? Hard to please person at a client ? Other clients Y,Z are pretty content and not acting like this one person at client X. Any insight would be appreciated.
« Last Edit: 06-14-17 at 01:24 pm by PatentScientist »
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smgsmc

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(a) Allowance rate per se is not necessarily a good metric of the quality of patent prosecution.  I know many practitioners who take the easy way out:  narrow the claim a lot to get allowance.  But the allowed claim might not have much value.

(b) The scenario you've described is common in my experience.  In my firm, we kept guidelines (specific do's and don'ts) not only for individual clients, but also for individual in-house counsels at each client.  All of us at the firm would collectively pool our feedback in shared files.  When you got a new app or an OA, we would check who the managing in-house counsel was first, and then lookup his guidelines.
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PatentScientist

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Thanks for your insight smgsmc truly appreciated yes I haven't had any so to speak "quality" related issues with other counsels at client X but correspondence back and forth with this one. My ego is not shattered or anything but I would only see it as a natural course of action to have interaction with a counsel before something is submitted. Again I am not a mind-reader so I will amend the claims, draft a response, then in your email steer me in the right direction if I am totally wrong which has not even been the case. Anyhow truly appreciated.   
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UVAgal4

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Maybe you could meet with the client X and go over some of the cases and get a better feeling of what their core inventions/products/direction is? But anyway, of course yes sometimes the clients will say no, embodiment 2 is more important to us than embodiment 3, take the claims in a different direction. 75% right seems pretty good to me.
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fewyearsin

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75% satisfied is pretty good.  Keep up the work with those cases/clients/in-house attorneys, and try to improve the other 25%.  You sound like you're relatively new to this.  The more you learn now, the better and easier things will be in the future.  Remember, the client is always right (unless they're wrong to the point of an ethics violation).  You give them your advice, then do what they want.

And yes, your situation sounds very normal.  There are great, easy clients, and great, difficult clients.  As long as they are paying their bills, they're both great clients, one just takes a bit more work to please.  I think the goal is to keep the easy:difficult client ratio on the higher end of the spectrum to maintain sanity.
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PatentScientist

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Thanks for the insight and advice yes relatively new around 3,5 years of experience in prosecution with a biotech major doing mechanical and computer software cases that is not always easy but I am hanging in there. It is a foreign client so it is not possible to meet them to talk about the different portfolios. Anyhow got two more cases allowed last week for the "hard to please" counsel. But we have stopped getting new applications from them and are prosecuting the things that were started long time ago so my boss is kind of like "whatever."   
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