Want to teach the nitty-gritty needed to write office action responses to new patent prosecution attorneys. Read on to find out if there is an easy way to do it!
The Gap in Learning Patent Prosecution | ‘School’ and ‘On the Job’
Patent attorneys are among the most highly educated professionals out there. Simply to be eligible to sit for the patent bar exam, a would-be patent attorney must have demonstrable proficiency in a field of science or engineering. Many candidates come with industry experience and/or advanced degrees. The problem is, upon conclusion of law school they, like nearly all aspiring attorneys, are likely missing the most important ingredients for success. In fact, a 2015 survey by 5 Square Research found 95% of hiring partners and senior associates who supervise new attorneys believed recently graduated law students lack key practical skills at the time of hiring. This study focused on basic competencies in drafting, transactional skills and legal research, however the gap is greater for more technical, specialized fields. How many IP courses in law school begin to get into the nitty gritty of responding to an office action, for example?
Hiring New Attorneys – A Huge Investment
New attorneys are a huge investment. One law firm strategist calculated $295k as the average cost simply to make the initial hire when recruitment costs are factored in. Large law firms typically find that it takes three to five years to break even on a new hire. The first years can be a time of friction for new attorneys as well, making it even more important that measures are taken so churn is avoided, for the wellbeing of attorneys and firms alike. While such observations have inspired calls for curriculum reforms and certification programs to address the issue, much of the onus remains on the hiring firms, with firms investing an estimated average of $19k per new associate per year, often forming specialized programs to acclimatize new cohorts to life at the firm. New technologies can provide another, often overlooked way to bridge the gap, that was not available for previous generations. Historically law schools have been seen as intertwined with liberal arts education, whose purpose was to “provide the student with certain faculties of thought and expression” designed to allow the student to continue learning long after leaving the classroom.” Law students hone their critical thinking abilities through intensive hours spent analyzing statutes and cases. Even when combined with the most comprehensive knowledge of case law, the best a young attorney can do at this point is reinvent the wheel from first principles. The true education on how to practice as an attorney comes on the job, as is recognized in European practice under the EPO, where the qualification period is not complete until an attorney has finished three years of supervised postgraduate training.
The Need for Mentorship From Experienced Attorneys
Although no such formal requirement exists under the USPTO, the situation is not so different in the United States. On day one I was given an office action to respond to for a client because it needed to be done,” recalls U.S. patent attorney William Morriss of his training fifteen years ago, “A senior attorney reviewed my work. The same is done for new associates today.” While there is no substitute for the depth of experience provided by a solid mentor, guidance can be enhanced with supplementary resources. Such resources in turn lighten the load on mentoring on senior attorneys, who are often pushed to juggle multiple internal and external responsibilities. Over the years, Mr. Morriss started collecting examples of good responses in a folder and spoke to others who did the same. Firms may put together internal examples, but such collections are resource intensive to assemble, and not always kept up to date. These resources are valuable but tend to be limited to the particular examiners and types of rejections colleagues happen to have seen.
Patent Prosecution Software – Arguminer
Mr. Morriss, who was inspired partly by such observations to develop Arguminer, software specific to the patent prosecution cycle, has likened the on-the-job education new attorneys typically receive to induction to an artisanal guild. There is a certain irony in that we secure protection for the most cutting-edge inventions, yet are often reluctant to incorporate new innovations when it comes to our own practices. With the Arguminer software attorneys are able to get immediate feedback on the specific arguments that did or didn’t work. There is a lot going on behind the scenes. The software uses algorithms to automatically match the user’s uploaded rejection to examples with strong similarities to their situation and allows users to apply their own customized search filters as well. In the case of a brand-new associate, these examples can serve as a sort of template that can be quickly modified to match the situation at hand. More seasoned early career patent attorneys and agents, who have already achieved strong proficiency in drafting, have been able to leverage the Arguminer software to make stronger, more strategic responses on behalf of their clients and to exercise more confidence in their prosecution choices. Users may discover a competitive edge by uncovering responses prepared by a competing firm or draw upon their research to lend support to recommendations when counseling clients.
Novice to Experienced Attorney
The Arguminer software, developed by Mr. Morriss with IP Toolworks, is one example of how technology can allow for a smoother path from novice to experienced attorney. It is no substitute for experience, but it means that new attorneys can start their careers with the working knowledge of the most successful practitioners in their field already at their fingertips. From there it is up to them to apply their own judgement, knowledge and insight to do the best job possible on the task at hand.