Examiner seeking advice for becoming an agent

[two banks of four]

I have been with the Office for 4-6* years and have mostly enjoyed the work; however, in the past year, it has dawned on me that I may care too much about the work that I sometimes feel as if I were treading water and perhaps even sinking.  On the outside, nothing would appear amiss as I've almost made it to primary, but on the inside, I feel that the evermore stringent time constraint has really increased work stress. 

TLDR version as follows:

I know that the amount of time I've spent at the Office is frowned upon, but perhaps in my favor are a doctorate from a well-regarded institution and fluency in an in-demand language.  The only other down side is that my doctorate and the cases I've worked on aren't from the in-demand areas.  I do not yet have a reg #, but I'll study for the test when I decide to start applying.  Right now I just want know how should I prepare myself (e.g. perhaps come up with 200 firms to cold call, look up alumni working as practitioner, etc)?  Further, what are the potential pitfalls of which I should be aware?  For example, although I complain below about given insufficient amount of time to do things, what if the same holds true outside as well for firms charging fixed fees for prosecution?

Any comment and/or suggestion would be welcomed, and many thanks in advance.
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Longer version below

I think most of this frustration has to do with the fact that I was able to do (at least what I consider to be) quality work for a long time, and that I've reached the point of reckoning where I have to balance the time constraint with the quality of work.  When I was GS12, I used to be able to write up multiple cogent lines of rejections; however, as I've progressed up the GS scale, I learned that this should be avoided due to time constraints.  Now I just alert Applicant to the other references without going into how they are relevant.  While this is perhaps against the whole directive re: compact prosecution, I just can't justify the time.  In addition, I feel as if I can't even do a proper search within the allotted time.  Ten hours for comprehension of invention, searching, and drafting of an office action is often insufficient, and I've maximized the usage of aids to speed up the searching process, including the maintenance of a synonym and reference database.

Similarly, while compact prosecution encourages the identification of allowable subject matter and reducing the number of office actions, I've come to realize that it just won't be worth my time to call unless the allowable subject matter is already present in a dependent claim and is in acceptable form.  There have been quite a few instances where I attempted to work with Applicant after I noticed allowable subject matter from the spec.; however, working with Applicant to arrive at satisfactory language often took way longer than the 1 hour of interview time allotted.  If Applicant accepts the changes, then all is dandy.  But more often than not, Applicant asks me to draft up with language I deem acceptable, sits on the proposed language for a few weeks (to the detriment of my docket management), and then says no without offering anything constructive in response.  While I can understand Applicant's perspective, it just appears that the Office wishes us to put in extra effort in the name of compact prosecution while paying us with nothing more than lip service.  Makes me wonder why I should care, and this makes me feel quite cynical.  When I started, I was bemused by the concept of the RCE gravy train; now, I may have to become an active participant...

It seems that everyone else understands that people are trying to do the best they could in the time given, but only the Office espouses the impractical goal of productivity + quality + customer service, all the while not really rewarding much for the latter two. 



*Certain numbers and facts are fudged to maintain semblance of anonymity

[smgsmc]

Just to clarify:  Do you have a JD and are looking to be a patent attorney, or do you not have a JD and are looking to be a patent agent?  What is your PhD in (that affects the type of cases you could get)?

[two banks of four]

Sorry about the confusion.  I do not have a JD and am looking to become an agent.  The degree is in chemistry, though it is unrelated to the hot areas (such as organic synthesis and chemical biology).  I'm being slightly vague here as I don't want to be identified too easily.

[ExaminerBob]

As another Examiner, I'm surprised that you would think that practitioners get sufficient time to produce their work product. I am in a very different trchnology area, but I do not get that impression based on the quality of responses that I see.

[MYK]

As another Examiner, I'm surprised that you would think that practitioners get sufficient time to produce their work product. I am in a very different trchnology area, but I do not get that impression based on the quality of responses that I see.

Producing a quality response is difficult when the OAs themselves tend to be complete garbage.  "A flat bearing surface is identical to a cylindrical coupling linking two pieces of hose because I say so!  Not persuasive!  A phototransistor is exactly the same as a potentiometer!  LOL!  Oh shit, appeal notice!  Ok, you got me!"

[smgsmc]

I became a patent agent after a long stint in industrial R&D; I have a PhD in physics.  What you are seeking is possible, but only under very limited circumstances.  As a patent agent, your goal is not to produce the most thorough applications and responses to office actions, period.  Your goal is to produce the most thorough applications and responses, subject to given cost and time constraints.  So the higher the cost and the longer the time constraints, the better the job you can do.  The constraints can vary widely from firm-to-firm; with a given firm, from client-to-client; and with a given client, from case-to-case (in some instances).

The problem is, that for many firms, the bread-and-butter is a large volume of low flat-rate cases from Megacorps.  Sometimes, for some Megacorps clients, there will be two or three tiers of flat-rates, and the Megacorps will designate in advance the tier for each particular case, depending on how significant the client considers the case to be.  For the lowest tier cases, the client doesn't expect a thorough job at all; it just wants an issued patent added to its annual count for PR, or for the in-house patent counsels to meet or exceed their target annual quota. 

Solo inventors want a thorough job, but many don't have the funds to pay for it.  And, often, for those who can pay, the cases are one-offs, with little repeat business.

That then leaves a small group of intermediate-size corps and well-funded start-ups that are serious about IP, have a reasonable amount of repeat business, are willing to pay for a thorough job, and have the funds to do so.  So first you need to get hired by a firm that has such clients.  And then you need to successfully compete with other practitioners (attorneys and agents) within the firm to get these cases assigned to you.  I was able to do so (after my initial training period) because I was able to leverage my PhD in physics and my long stint in industrial R&D ... I was able to handle technically complex cases that other practitioners couldn't comprehend, and I was able to garner good rapport with star inventors (typically PhD scientists and engineers) who subsequently specifically requested me to be assigned to their future cases.

[ThomasPaine]

you'd be an idiot to leave the pto to become an agent 

dont be an idiot 

[still_learnin]

... I may care too much about the work that I sometimes feel as if I were treading water and perhaps even sinking. 
... I feel that the evermore stringent time constraint has really increased work stress. 
... For example, although I complain below about given insufficient amount of time to do things, what if the same holds true outside as well for firms charging fixed fees for prosecution?

It does. smgsmc gave a great explanation why these things are true for most agents/attorneys doing patent prosecution at a law firm.

In addition to the same negatives you have now, you'll also have the negative of greatly increased work hours. For the vast majority of patent prosecutors, billing 1800 hours works out to far more than M-F, 9-5.

You may get paid more as an agent than as an examiner, and perhaps you'll consider this a fair tradeoff for increased hours at work. But be aware that the "big bucks" go the attorneys, not the agents. Agent bill rates are almost always lower than similar-years-of-experience associates, and at some firms the agent salary is based on a lower percentage of billables (maybe 25% for agents instead of 33% for associates).

Finally, you'll be giving up generous government vacation and sick leave. At the firms I worked, there was no such thing as separate and distinct pools of time off. Attorneys/agents could take as much time off as "wanted" as long as billable requirements were met. Which becomes increasingly harder to meet as the amount of time off increases. I've heard of other firms that did have a bank of paid time off, but firm culture leads to few attorneys/agents that used it.

[abc123]

But if you are an agent, you can switch firms. Kind of hard to switch patent offices.

If you are an agent, you can go to law school and use the claim drafting skills you learned as a patent attorney. The only skill patent examining is useful for is becoming a searcher.

If you are an agent, you can open your own shop. Most people in this forum have reported positive experiences doing this. As far as I know, it is kind of hard to open your own patent office, though I am aware of one case where someone sort of tried to.

It is true the government benefits are good. But you have to give up all your future work options to get them. I had lunch with someone a few weeks ago who quit patent examining, and it took him years to find another job, and he had to get a graduate degree as well.

I can only think of one person who quit patent examining to become an agent who was not happy with their choice, and he was basically incompetent to begin with.

Which I guess goes to show there are two sides to every story, and that the grass is always greener on the other side of Eisenhower Avenue.

[fewyearsin]

If you want to stay long term in DC, and you are 1 income household, become a patent attorney, work hard, and support your family well.

If you want to move anywhere else that is not a gigantic city, stay as an examiner and max out at around 140-160k (including bonus/overtime) and live just as well or better, and have guaranteed time off, work flexibilty, etc. and support your family with your presence rather than just your money.

That was my line of thinking.  I was an attorney for a few years and then went to the Office when we had our third kid.  We then moved out of DC.  I may go back to working as an attorney once my kids are older, but for now I get to watch them grow and spend time with them every day.  I enjoyed the work as an attorney much more than as an examiner, but I make as much as attorneys do out here in flyover country, so . . .

Everyone's situation is unique.  You are right that you are at a point where you either settle in for another 10 years of examining or get out.  It is easy to just stay at the Office, but make sure that you actively DECIDE to stay, instead of having it be your default.  I am happy at the Office because I decided to stay.  My outside options are dwindling, but it was my choice to be here.  If you are at the office because you never tried anything else or never really evaluated your life, you are more likely to be miserable.  Do some soul searching and figure out what you want from life, then go out and make it happen.

[two banks of four]

thanks to all posters for taking the time to share their thoughts and experiences.  I certainly understand that the possibility of landing a job may be slim. 

I think the one thing I would like to get a better sense of is just how bad things could get during a down-turn?  Someone once mentioned to me that prosecution is more "recession-proof," whatever that means.  I know that it was very difficult for people without experience to find agent/attorney positions during the recession, and I've also heard that work at firms dried up quite a bit that people left, even at the more established firms.  Quite a few ex-agents and attorneys ended up going to the Office as a safe haven when the Office was doing quite a bit of hiring.  I doubt the Office would have as many positions available the next time the economy tanks, given that the Office is mostly hiring to replenish attrition and that attrition is nowhere near where it was back in the 00's. 

In addition to the same negatives you have now, you'll also have the negative of greatly increased work hours. For the vast majority of patent prosecutors, billing 1800 hours works out to far more than M-F, 9-5.

What would be a reasonable estimate of actual time spent for 1800 billable hours?  Assuming 20-25% of time goes to overhead/admin issues, that works out to 45-48hr/week for a 50 weeks of work per year.

It is true the government benefits are good. But you have to give up all your future work options to get them. I had lunch with someone a few weeks ago who quit patent examining, and it took him years to find another job, and he had to get a graduate degree as well.

Is this person now a practitioner after leaving the examining corps?  Presumably he was employed while looking for the new job?

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Finally, for those who are currently on the inside, how did you manage to find a balance?  My impression is that people on the outside appear to understand that they need to do the best under the constraints and accept the consequences of constraints.  In contrast, the higher-ups at the Office impose the quixotic goal of maintaining quality and production.  While everyone else mostly views the examination process as an initial sift, it just appears that the Office wants to have its cake and eat it too.  And I'm too stupid/naive/honest that I buy into it, as I'm afraid that someone might find fault with my work if I were to slack a bit (over trivial things such as not doing a "thorough" interference search, never mind that I had looked through publications of later-filed applications).  I also hear that it's easier to make production now than it had been for many years, and I can't imagine what life must have been like during the Dudas days when people can't allow things...

The thing is that I know there are primaries without a lot of work stress, but they seem to be the type who wouldn't mind gaming the system.  One person issued more than 50 patents the year prior to becoming a primary and issued 90 after becoming a primary (other primaries in that art unit issue half as many per year).  In contrast, I have yet to issue 50 since starting at the PTO.  I also surmised from this person's chafing at the new time-keeping rules that this person was most likely someone who claimed time for hours not actually worked.  As the saying goes, nice work if you can get it...  Perhaps when I become a primary I would start caring less, but until that time, I'm too risk averse to test the boundaries.  One would certainly hope that there's a medium ground between gaming the system and trying to satisfy all whims of those in Madison Building.  I'm just not sure where that medium is and how to achieve it, and I think getting to this medium would be necessary if I decide to stay at the office and attend law school part-time.

[bluerogue]

I think the one thing I would like to get a better sense of is just how bad things could get during a down-turn?  Someone once mentioned to me that prosecution is more "recession-proof," whatever that means. 

I was in biglaw during the '08 downturn.  I was a 1st year associate at the time.  It was pretty bad. We had a decent amount of prosecution work, but there were still layoffs and the partners tried getting senior associates that they liked, but weren't promoting to partner, into in house jobs.  It's not recession proof.  I think it's less now, but back then, firms were also trashing the reputations of the let go associates because the firm didn't want to be seen as "laying off" associates.  It was not a good situation. 

I doubt the Office would have as many positions available the next time the economy tanks, given that the Office is mostly hiring to replenish attrition and that attrition is nowhere near where it was back in the 00's. 

I think for the Dallas office, Michelle Lee once remarked it was more difficult to get into the PTO than Harvard based on the % of candidates turned down.

What would be a reasonable estimate of actual time spent for 1800 billable hours?  Assuming 20-25% of time goes to overhead/admin issues, that works out to 45-48hr/week for a 50 weeks of work per year.

I think 50-60 hrs/week on average.  But you have to know, you give up a ton of flexibility with respect to your hours.  Although you have some control over your schedule, there are still some feast/famine situations and you're at the mercy of the client/partner.  It's rarely a consistent schedule.

Finally, for those who are currently on the inside, how did you manage to find a balance?  My impression is that people on the outside appear to understand that they need to do the best under the constraints and accept the consequences of constraints.  In contrast, the higher-ups at the Office impose the quixotic goal of maintaining quality and production. 

I find a balance by doing the best job I can in the time allowed. I don't think most of Madison thinks they can get all three of quality/speed/cost despite what seems to come out from there at times. You'll have to do the same thing on the outside.  If anything, it's potentially worse. It's called "realization" on the outside.  You're constrained by prosecution budgets.  Being on the outside does not mean unlimited time.  Often, it means less time and writing time off. Plus, your client expects good quality and fast. The partners will cater to the client because they pay the bills.  At least at the PTO, the client can't go to another patent office.

Like fewyearsin, I made the choice to go from a good career as an attorney: T14 school, clerkship, biglaw, and in house, to the PTO.  The patent office strikes the right work/life balance for me.  Only you can decide what's the right balance for you. 

[still_learnin]

In addition to the same negatives you have now, you'll also have the negative of greatly increased work hours. For the vast majority of patent prosecutors, billing 1800 hours works out to far more than M-F, 9-5.

What would be a reasonable estimate of actual time spent for 1800 billable hours?  Assuming 20-25% of time goes to overhead/admin issues, that works out to 45-48hr/week for a 50 weeks of work per year.

While I stick by my "far more than" statement, your mileage may vary. Being in the office 9 hours a day M-F is not uncommon.

Time spent in the office really depends on a number of factors, some of which are unknowable before you start work, and some of which are beyond your control.

Here are some factors:
- billable or billed: all firms care about billed, but some care only about billed
- client budget: high budgets gives more time to spend on the matter before time is cut
- non-billable tasks: time entry, bill review, secretary issues, firm committees, client development, professional development; these tasks tend to grow with seniority/responsibility
- personality: some people are extremely focused (work straight though with no lunch, no office chit chat and no personal business); some people can focus for a stretch but need regular down time; some people have trouble focusing at all and find it's late afternoon with little accomplished

[steelie]

For me it's the hoteling and the pension. I'm close to 15 years as an examiner.

The calculation is (average high three years pay * years *1.1%) if retiring at 62 or older.

At present max (160,0000 * 42 * 1.1%) = $73,920 per year for the rest of your life.

When you factor that in, does the common patent agent or patent attorney pay even come close to what an examiner makes?

[lazyexaminer]

For me it's the hoteling and the pension. I'm close to 15 years as an examiner.

The calculation is (average high three years pay * years *1.1%) if retiring at 62 or older.

At present max (160,0000 * 42 * 1.1%) = $73,920 per year for the rest of your life.

When you factor that in, does the common patent agent or patent attorney pay even come close to what an examiner makes?

I agree with you that this really offsets the perceived salary difference if you are willing to make a career out of it. Let's look a little more closely.

I can quibble with your numbers a little (max GS-14 is more likely as GS-15 jobs are limited, so take the final salary at GS-14 step 10. Also anything more than 40 years is probably unusual...) but they are close enough to what I calculated. A GS-14 step 10 retiring at age 62 after 40 years would get around $67,000/year or $5,500/month.

To buy a non-COLA annuity at age 62 paying out that much costs about $1-1.3M today. A COLA obviously adds value, though it is difficult to say how much and quotes on such products are much harder to come by. Let's say for the sake of argument the pension would cost $1.5M to replace, and for this comparison we have to assume a pension from the government is equivalent to an insurance company product.

Can an attorney make so much more than an examiner that they will save an extra $1.5M by retirement? Of course they can, things like partnerships and stock options aren't available to an examiner and there is no salary cap (big law starts above an examiner's max and doubles it fairly quickly). But these things aren't available to most attorneys either, and the attorney will likely have to work many more hours to achieve this. Many would say the attorney's work is more interesting and fulfilling but it is likely more stressful, though these depend on the person. There are tradeoffs.

Health care in retirement is nothing to sneeze at either. And working just 40 hours a week at my house is awesome.

Of course the analysis will differ for those who will end up with fewer years in government, and there is a very real possibility that these benefits could be largely reduced in the next year.