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Author Topic: Training Resources for new Patent Agents  (Read 758 times)

EchoMike

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Training Resources for new Patent Agents
« on: 10-19-17 at 05:49 pm »

Hello,

Here's the run down:

I recently graduated from college with a B.S. in Electrical Engineering. This is after 6 years in the Air Force, and 5 years in the Energy business.  I accepted an opportunity to work as a Patent Agent for a reputable law firm (small, I guess, 5 partners and about 35 employees total).

I really had no idea what to expect of this job, and it seems to be one of those jobs you can only learn by doing. I took this job because I've got some financial flexibility to get started, and there appear to be many perks over the corporate engineering culture I could go back to that may make the start up pains worth while. Also, one of the founders/partners is a family friend who I respect a great deal (though we're not terribly close), so when he made me the offer I was honored and felt that I may be able to be of service to his growing business.

That said, I've been at this a month. In two months my training period will end, and my pay will go to poverty level wages if I can not crank out 6 or more office actions per month.

Currently, I can only consider myself a technical analyst. The firm wants me to test for my registration number within one year. They have me analyzing, and preparing complete responses to OA's, then waiting for attorney review and sign off.

The problem: No one talks to new employees! On day one I was given a 30 minute talk with a basic run down of how to go about breaking down an OA, handed a big folder with my first case and sent off to my work space. Since then, after one month, I've had about 60 minutes worth of feedback and instruction from my "trainer" and done my best to pick up as many other nuances by bugging other agents and paralegals. Since no one else is really familiar with the case I was handed they can't take the time to get familiar with it and then offer me any real help, they can only offer anecdotes based on their prior experiences, which are nice, but limited in helpfulness.

The Questions: Is this typical for new agents? Sort of a sink-or-swim approach. Do I just need to be more patient with the attorneys since they're so busy and their time is clearly way more valuable than mine? 

Does anyone know of useful training resources? Books? Websites? I just discovered this forum and it does seem helpful! (although there are a lot of people that appear to hate this line of work warning engineers from making this career choice!) ;)

Also, would it be helpful to just jump into the PLI training for the Patent Agent Exam? Would I pick up anything of value to improve my Patent vernacular, understanding of procedures, etc. etc. that could make responding to these OA's a bit more clear?

Honestly though, I would have to kick down someones door to get any more training than I'm currently receiving. Over email the attorneys will not respond to open ended questions with more than a 3 word answer, if they respond at all. I come in everyday, analyze the hell out of the same two cases and wait around for feedback with no clue whether I'm doing my job right or not! So frustrating!


Thank you!
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MYK

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Re: Training Resources for new Patent Agents
« Reply #1 on: 10-19-17 at 07:05 pm »

Training varies from firm to firm. It sounds like the one you've ended up at is on the "see if they can hack it" end of the spectrum.

Do you understand that the goal is to differentiate your client's application from the references?  Is it just that you're not finding any differences?  Is EVERYTHING disclosed, right down to the smallest comment that your client made in the application?  Maybe the references are "good" and your client is going to have to give up on that application.
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"The life of a patent solicitor has always been a hard one."  Judge Giles Rich, Application of Ruschig, 379 F.2d 990.

Disclaimer: not only am I not a lawyer, I'm not your lawyer.  Therefore, this does not constitute legal advice.

EchoMike

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Re: Training Resources for new Patent Agents
« Reply #2 on: 10-19-17 at 07:49 pm »

Thank you MYK.

With my first case, I was able to find distinct differences. It's a method of modeling sound data, and has some really complex content in the specifications. The things that weren't complex, were written in far too vague of language, including the claims. The attorney training me asked me to write up a summary of what each of the 3 references were, how they worked etc., then do the same for our application. That took me two weeks. They were very complex topics I was not familiar with, but I feel I succeeded in pointing out key differences that others had failed to see (this is OA3 for reference). We had an interview with the Examiner last week. It lasted about 10 minutes and 8 of those minutes was the attorney buttering up the Examiner! The Examiner admitted that he was overstating one of the references, but his problem was that our claim language was simply too broad! So, the attorney told me to write some proposed amendments to the claims. I ran all this by the attorney that actually wrote the case nearly 4 years ago, and he agreed this was a really hard case for a new employee. He said that we should have an interview with the inventors to clear up these few key topics I found that weren't gaining traction with the Examiner because the specs don't support our claims in specific enough language. That was a week ago, and even though I drafted the synopsis email to the inventor, I haven't heard back from the attorney as to what the next steps are. (I am not allowed to email inventors or Examiners at this stage.)

Anyhow, I apologize if it seems like open ended whining. I think I'm just needing to get used to an entirely different culture. I've worked mostly in operational environments where clear, and prompt communication was key. I always had good training, and if I had questions there was always someone to ask. You were also never left to do anything important by yourself until you proved you had the skill, which I always quick to establish. So, I think I'm just a bit stressed by the freedom I have!

The whole reason I left that work environment though and earned my degree in EE was that I wanted to get away from the high stakes, multi-tasking roles and enjoy having a clear and singular focus (if only for a few days or less), working on projects, or something like what I imagined the Patent agent job to be. Maybe I'm experiencing the growing pains of that transition, but I agree this is a place on the "see if they can hack it" end of the spectrum! They're friendly and insightful when they do offer help, it's just difficult to pin anyone down!

Due to the lack of dialogue, I'm concerned that I may not pick up on the job specific language very quickly, which is why I was glad to find this forum, and am considering jumping into the Agent exam prep. Do you think that would be wise?

Also I must need lots of validation and feedback! Warm hugs are great too!
« Last Edit: 10-19-17 at 08:09 pm by EchoMike »
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NJ Patent1

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Re: Training Resources for new Patent Agents
« Reply #3 on: 10-19-17 at 08:41 pm »

Echo:  Disclosure: I type from perspective of an attorney, not agent, if such relevant.   And this was typed off line before your last extensive post.  Per MYK, it appears that you landed at a “swim or sink” firm.  Maybe not.  The first case I was handed ‘solo’ was so far outside by technical ken.  I drafted a 12 step-impossible-to-infringe primary independent method claim with zero minute’s feedback until after I handed it in.  In retrospect, it was probably a ‘test’ to see how much ‘work’ had to be done on me.  I didn’t get the sack, but OTOH I did have colleagues who were apparently a bit more helpful than those you type about (but they had their own dockets to worry about, so not much help). Maybe this is just a ‘test’ for you to determine level of coaching needed as, apparently, that very first case was for me? 

MYK gave good basic advice.  I’d just amend “differentiate” to “differentiate as matter of patent law”.  If there are differences, why are such not ‘obvious’ as a matter of patent law?  What is/was ‘obvious’ to you as an EE is not necessarily obvious at law. If there are no differences, you may have to fold the tent and speak with the partner. 

You might want to consider spending some personal free time (don’t expect stuff to get handed to you on client’s time) perusing a file history or two of applications in the appropriate art unit prosecuted by reputable firms.  Get a feeling of the ‘gist’ of R111 Replies, how they are teed-up.  Sometimes it formulaic. 
Best of luck.  Don’t get discouraged.  Many have been there and survived – ultimately thrived.
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NJ Patent1

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Re: Training Resources for new Patent Agents
« Reply #4 on: 10-19-17 at 09:05 pm »

EchoMike:  Read UR last post and don’t mean to demean.  But if UR really “Mike” and not “Michelle” (who knows here); you are simply suffering from a form of “male performance anxiety”  :).  Can I cut the mustard?  Relax dude.  You “recently graduated”.  Unless UR a vet, that places you in early 20s.  You have plenty of time to screw-up and reinvent yourself.  I graduated law school at young age of 47.  I’m not a warm and fuzzy guy.  Will you settle for a fist-bump bro/sista? 
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Robert K S

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Re: Training Resources for new Patent Agents
« Reply #5 on: 10-19-17 at 09:29 pm »

Oh, man, that is frustrating, and bordering on disgusting.  If it were up to me, the brand new hires would be working in the same offices as more experienced practitioners, and there would be a lot of feedback and daily or at least weekly learning sessions with presentations on how to tackle common and not-so-common problems.  I would not have gotten anywhere without (a) good mentorship, (b) other strivers of similar experience level to bounce ideas off of and learn from, and (c) plenty of time in the early days to conduct a lot of personal research (lots of delving deep into the MPEP, case law, and legal history, and building my own files of notes and folders full of Board cases).  So I have to feel for you.

Patent prosecution in many cases requires collaborative thinking to strategize and to veto, early on, likely-unsuccessful lines of attack.  It also can be aided immensely by direct lines of communication with inventors and examiners.  Without the authority or the confidence to pick up the phone to conduct an interview, and without the mentorship, the practitioner can be stuck sitting and staring at a screen, and that's sometimes true even regardless of experience level.
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This post is made in the context of professional discussion of general patent law issues and nothing contained herein may be construed as legal advice.

midwestengineer

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Re: Training Resources for new Patent Agents
« Reply #6 on: 10-20-17 at 12:21 pm »

Oh, man, that is frustrating, and bordering on disgusting.  If it were up to me, the brand new hires would be working in the same offices as more experienced practitioners, and there would be a lot of feedback and daily or at least weekly learning sessions with presentations on how to tackle common and not-so-common problems.  I would not have gotten anywhere without (a) good mentorship, (b) other strivers of similar experience level to bounce ideas off of and learn from, and (c) plenty of time in the early days to conduct a lot of personal research (lots of delving deep into the MPEP, case law, and legal history, and building my own files of notes and folders full of Board cases).  So I have to feel for you.

Patent prosecution in many cases requires collaborative thinking to strategize and to veto, early on, likely-unsuccessful lines of attack.  It also can be aided immensely by direct lines of communication with inventors and examiners.  Without the authority or the confidence to pick up the phone to conduct an interview, and without the mentorship, the practitioner can be stuck sitting and staring at a screen, and that's sometimes true even regardless of experience level.

I agree with Robert.  It sounds like you've started at an old school firm that provides training by mercilessly critiquing your work without actually training you on how to complete your work.  Modern law firms do not behave like your firm.

For a point of comparison, where I work new engineers start with a two week intensive training session that lays out the basics (lectures, practice work).  Following the two week training, they are paired up with senior agents/attorneys for intensive one on one training.  The senior agents/attorneys are allocated ~70 billable hours of training time that they bill to when training the new engineer (it's a fixed amount of money, but is approximately 70 hours +- 10 hours depending on bill rate).  Additionally, following the two week training session, the new engineers are given 3 weekly lectures during a catered lunch for about an addition four months.

It is expensive to train engineers, my firm puts in ~150k per engineer.  But after four months our engineers are up to speed.

In contrast, your firm is putting in little $$$ to train you and looks like from the description of your pay structure that you receive a commission rather than salary. 

This can be good or bad.  Your firm has much less overhead because they don't contribute $$$ to training, so they could theoretically pay you a larger percentage of your billings.
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Tobmapsatonmi

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Re: Training Resources for new Patent Agents
« Reply #7 on: 10-22-17 at 09:56 pm »

...

  Modern law firms do not behave like your firm.

For a point of comparison, where I work new engineers start with a two week intensive training session that lays out the basics (lectures, practice work).  Following the two week training, they are paired up with senior agents/attorneys for intensive one on one training.  The senior agents/attorneys are allocated ~70 billable hours of training time that they bill to when training the new engineer (it's a fixed amount of money, but is approximately 70 hours +- 10 hours depending on bill rate).  Additionally, following the two week training session, the new engineers are given 3 weekly lectures during a catered lunch for about an addition four months.

It is expensive to train engineers, my firm puts in ~150k per engineer.  But after four months our engineers are up to speed.

In contrast, your firm is putting in little $$$ to train you and looks like from the description of your pay structure that you receive a commission rather than salary. 

This can be good or bad.  Your firm has much less overhead because they don't contribute $$$ to training, so they could theoretically pay you a larger percentage of your billings.
[/size] 


This should  be a sticky.  Great information.
« Last Edit: 10-22-17 at 09:59 pm by Tobmapsatonmi »
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EchoMike

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Re: Training Resources for new Patent Agents
« Reply #8 on: 10-23-17 at 02:03 pm »

EchoMike:  Read UR last post and don’t mean to demean.  But if UR really “Mike” and not “Michelle” (who knows here); you are simply suffering from a form of “male performance anxiety”  :).  Can I cut the mustard?  Relax dude.  You “recently graduated”.  Unless UR a vet, that places you in early 20s.  You have plenty of time to screw-up and reinvent yourself.  I graduated law school at young age of 47.  I’m not a warm and fuzzy guy.  Will you settle for a fist-bump bro/sista?

This is great advice! Very funny. And sorry, I wasn't feeling creative with my username, EchoMike is just the phonetic initials for my first and middle name, Eric Michael! So, a fist bump, Bro, will suffice!  And I will certainly try to relax!
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EchoMike

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Re: Training Resources for new Patent Agents
« Reply #9 on: 10-23-17 at 02:13 pm »

Oh, man, that is frustrating, and bordering on disgusting.  If it were up to me, the brand new hires would be working in the same offices as more experienced practitioners, and there would be a lot of feedback and daily or at least weekly learning sessions with presentations on how to tackle common and not-so-common problems.  I would not have gotten anywhere without (a) good mentorship, (b) other strivers of similar experience level to bounce ideas off of and learn from, and (c) plenty of time in the early days to conduct a lot of personal research (lots of delving deep into the MPEP, case law, and legal history, and building my own files of notes and folders full of Board cases).  So I have to feel for you.

Patent prosecution in many cases requires collaborative thinking to strategize and to veto, early on, likely-unsuccessful lines of attack.  It also can be aided immensely by direct lines of communication with inventors and examiners.  Without the authority or the confidence to pick up the phone to conduct an interview, and without the mentorship, the practitioner can be stuck sitting and staring at a screen, and that's sometimes true even regardless of experience level.

I agree with Robert.  It sounds like you've started at an old school firm that provides training by mercilessly critiquing your work without actually training you on how to complete your work.  Modern law firms do not behave like your firm.

For a point of comparison, where I work new engineers start with a two week intensive training session that lays out the basics (lectures, practice work).  Following the two week training, they are paired up with senior agents/attorneys for intensive one on one training.  The senior agents/attorneys are allocated ~70 billable hours of training time that they bill to when training the new engineer (it's a fixed amount of money, but is approximately 70 hours +- 10 hours depending on bill rate).  Additionally, following the two week training session, the new engineers are given 3 weekly lectures during a catered lunch for about an addition four months.

It is expensive to train engineers, my firm puts in ~150k per engineer.  But after four months our engineers are up to speed.

In contrast, your firm is putting in little $$$ to train you and looks like from the description of your pay structure that you receive a commission rather than salary. 

This can be good or bad.  Your firm has much less overhead because they don't contribute $$$ to training, so they could theoretically pay you a larger percentage of your billings.


Thank you, Robert and Midwestern Engineer. That type of training plan sounds amazing. I appreciate your comments, if I can hack it here  I'd like to use such advice to improve training and in turn employee retention in the future! 
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Robert K S

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Re: Training Resources for new Patent Agents
« Reply #10 on: 10-23-17 at 02:32 pm »

To get to your question of training resources, when you start to get a little more comfortable you should start reading appeal decisions while also looking into the prosecution histories of the cases behind the decisions.  This should afford a lot of insight as to what works and what doesn't work as a practical matter in patent prosecution.  You may also start to form some opinions as to which Board decisions were wrongly decided and why.

For now, since you sound fairly new, yes, you may opt to take a bar review course, and it should be pretty helpful, even if you don't opt to take the patent bar right away.
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EchoMike

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Re: Training Resources for new Patent Agents
« Reply #11 on: 10-23-17 at 02:55 pm »

To get to your question of training resources, when you start to get a little more comfortable you should start reading appeal decisions while also looking into the prosecution histories of the cases behind the decisions.  This should afford a lot of insight as to what works and what doesn't work as a practical matter in patent prosecution.  You may also start to form some opinions as to which Board decisions were wrongly decided and why.

For now, since you sound fairly new, yes, you may opt to take a bar review course, and it should be pretty helpful, even if you don't opt to take the patent bar right away.

Thanks Robert. Since I'm spending most of time here at work trying to teach myself this job, I think I will take your advice and jump into some exam prep materials. However, I did manage to find an agent who is willing to let me jump in on an OA and work in tandem with her! So that's a bit of a victory! :)
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