Can a non-patent attorney/agent write a patent application for another person?
August 22, 2008 on 11:00 am | In Legislation/Regulation, Patent Searching, The-Practice-of-Law, USPTO | 4 CommentsInteresting quote in the comments (Comment 9) to the NEW rule set I mentioned previously on “Changes to Representation of Others Before the United States Patent and Trademark Office; Final Rule (14Aug2008)” (emphasis added):
Non-practitioners are not entitled to provide legal advice or otherwise practice law. To the extent practice of law includes a law-related service that comprehends any matter connected with the presentation to the Office, the preparation of necessary documents in contemplation of filing the documents with the Office, and communicating with * * * a client concerning matters pending or contemplated to be presented before the Office as in § 11.5(b), a practitioner authorized by relevant law must provide the legal services. For example, consultation with a client in contemplation of filing a patent application or other document with the Office as in § 11.5(b)(1) requires a registered practitioner to provide the services.
Perhaps a warning shot to any companies (including invention promotion firms) that file quick provisional patent applications for inventors that were not drafted by licensed patent practitioners.
Another interesting quote that follows right after the above quote:
A practitioner may not circumvent the Disciplinary Rules through the actions of another. See 37 CFR 10.23(b)(2). For example, a non-practitioner who is neither employed nor retained by the practitioner, or who is not under the supervision of the practitioner, may not assist the practitioner in matters pending or contemplated to be presented to the Office.
Perhaps a warning shot to patent attorneys/agents working with third-party patent application mills as their out-house “patent practitioner” where the communication with the client and drafting is done by the application mill and not the practitioner. I suppose one could argue that the practitioner in such an arrangement is essentially renting his/her license to the third party, merely serving as a “rubber stamp” before filing at the Patent Office.
Thoughts?
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One solution to the exploding cost of health insurance…
August 11, 2008 on 1:22 pm | In Articles, The-Practice-of-Law | 2 CommentsSomeone asked me about health insurance options for small businesses earlier. I pointed them to a three year old post I wrote on “Health Savings Accounts for Lawyers and Business Owners.”
I’m still using mine and am VERY glad I set it up.
A few months ago I had our office’s insurance guru give me a quote to add my family back to the Firm’s plan. His answer was $1700. OUCH. Needless to say, I’ll be keeping my HSA.
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Are attorneys (on average) lacking in basic technical skills?
July 26, 2008 on 5:15 pm | In Tech Tips, The-Practice-of-Law | 3 CommentsIt is surprising to most people, but attorneys tend to be late adopters of technology. I think it is a result of having a “I don’t have time to learn something new, must keep working” mentality.
Proof: check out branding guru Justin Foster’s recent post on “5 technical skills a modern professional should know” and tell me what percent of the attorneys you know have all five of those skills.
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Online Time Clock for Law Firm Employees
July 13, 2008 on 10:19 am | In Idaho, Tech Tips, The-Practice-of-Law | 1 CommentWith mentions in TechCrunch, Technorati, Inc.com, and an iPhone App…..one local Idaho software company (TSheets) is making big waves! See also this Idaho Business Review post.
As a user of their product (my office uses their software for our employees), I completely understand why. It is a great product. One slick feature is that the administrator (e.g., your office manager) has to approve any computer used to log in/out. Thus, an employee can’t log in/out from home (unless you approve them to do so).
So…if you’re looking for an online time clock (that exports to QuickBooks)…you might check out TSheets.com. They even have a free trial!
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Remember when the practice of patent law was “fun”?
June 12, 2008 on 12:01 pm | In Legislation/Regulation, The-Practice-of-Law, USPTO | 3 CommentsIt isn’t anymore…hasn’t been for a few years. My fellow practitioners know exactly what I mean.
Then, I read this:
…The SPE indicated that it was the policy in his Art Group not to issue
any patents any more. In fact, some examiners in this unidentified Art
Group have not issued a single patent in over 2 years!
PLI Patent Practice Center Blog on “Quality Review Shutting Down the USPTO.”
Wonderful.
As Gene says in that post:
If you have
come across any suspicious activity that might suggest there are
examiners, supervisors or Art Groups that are refusing to issue any
patents please let me know. If you have seen a ridiculous rejection
let me know. I am happy to keep all sources confidential.
Apparently, quite a few people have sent Gene emails about that post (see “More Quality Review Madness“). If you’ve seen something odd…you might want to contact Gene too.
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Why a Patent Firm Should Consider Outsourcing…Speed
June 12, 2008 on 8:49 am | In Patent Searching, The-Practice-of-Law | Comments OffThree years ago I wrote a post on the ReThink(IP) blog on “Insourcing Patent Work” where I talked about “insourcing,” namely rather than sending patent work overseas, instead sending it inland (US) to smaller metropolitan areas where hourly rates and costs in general are less. [note: I apparently misuse the word “insourcing” in that piece ("correct" definition here), perhaps “farm-sourcing” would have been a better word.]
That one post has, over the past few years, has resulted in handfuls of emails from Indian firms arguing with me, telling me that I am wrong…arguing that sending work to India is the best thing (to them?) ever.
To me, the biggest annoyance with the topic is all of the “Chicken Little” patent attorneys running around worrying that their jobs are going to India. I’ve never been able to understand why these same Chicken Little’s don’t worry about Canada, which, last time I checked has many patent practitioners that speak perfect English and generally are more inexpensive than US practitioners. Your jobs aren’t going to India (nor Canada), so relax.
A couple of months ago I received an email from Mark Ross (mross@law-scribe.com) at LawScribe. At first I thought it was another “you’re wrong about India” email, but it turns out that Mark is a fellow law blogger (he writes the “Legal Process Outsourcing” blog). I traded a few emails with Mark, one of which used the term “farm-sourcing.” We had a fun discussion of “farm-sourcing,” culminating in a phone conversation. It turns out Mark is from the U.K., living in Southern California, working with LawScribe. Nice guy.
On a whim, I asked Mark what they charged for patent and trademark searching services and for example search reports. He sent me a brochure and a couple example searches. The searches were shockingly good for the price, as good as (if not better) than my US searcher gives me, and was priced a little higher than my US searcher charges (my US guy is very economical). The kicker was that Mark touted a 1-3 day turn around (instead of 1-3 weeks). Hmm…how many of my clients would prefer the quicker turn around, same quality and same cost?
Perhaps that is what I didn’t get about “outsourcing.” It isn’t about the price (which in this case was competitive with what I was paying in the US). It isn’t about quality (the quality I can get from US searchers is fine). It’s about speed. Perhaps you can have “cheap, fast and good,” instead of just two of the three.
Over the past couple of months (after having them sign a confidentiality agreement), I have sent LawScribe a number of searches (both trademarks and patents). Each time, I have been impressed with the quality of work and the quick turn around. Based on my experience, I’m now at the point where I propose the Indian option to most of my clients when they ask me to perform a search. Surprisingly, every patent client I’ve proposed it to as an option (same price, same quality, but weeks faster) has chosen the India route. Perhaps our (lawyers’) belief that clients don’t want outsourcing is unjustified.
Sure, I know that some of my clients will not consider it as an option. For those clients, I don’t propose it…we’ll keep doing our searching the old fashioned way. But for everyone else…because of the quick turn around, it is something to discuss with them.
So, in summary, I have to (eat crow and) admit that outsourcing can be a tool that a “farm-sourcer” uses to deliver faster service.
[Update: "Applicants and registered patent practitioners are reminded that the export of subject matter abroad pursuant to a license from the United States Patent and Trademark Office (USPTO), such as a foreign filing license, is limited to purposes related to the filing of foreign patent applications. Applicants who are considering exporting subject matter abroad for the preparation of patent applications to be filed in the United States should contact the Bureau of Industry and Security (BIS) at the Department of Commerce for the appropriate clearances." See: Scope of Foreign Filing Licenses, Notice [PDF] (23Jul2008).]
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Foreign clients — Billing and Collecting
June 10, 2008 on 2:03 pm | In International, The-Practice-of-Law | Comments OffExcellent article for practitioners (and their bookkeepers) doing work for foreign clients — ABA Law Practice Magazine on Dollars to Dinars: Billing and Collecting in a Global Market
The world is flat. Thomas Friedman made the case for it in his best-seller of that title, and every day the news brings more evidence that the global marketplace is a reality. If you’re thinking of taking advantage of the new playing field by seeking work from foreign clients, here are issues to consider in getting paid for that work.
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Mediawiki as a Patent Law Firm’s Knowledge Management System
May 29, 2008 on 8:18 am | In The-Practice-of-Law, Web/Tech | 5 CommentsThe Law has a number of maxims. For instance, “in court, never ask a question you don’t already know the answer to.” One of my favorites is “never do work someone else has already done for you.”
I’ve followed that (later) one to the letter…compiling hundreds of “nutshells,” “summaries,” and “cheat-sheets” stored in a folder on my file server; dozens of draft e-mails for easy “cut-and-paste” usage; MindManager mind maps; a three-ring binder on my desk called “The Deskbook”; and countless other knowledge collecting “buckets.” My own personal knowledge management system (hopefully Jack Vinson would approve).
The problem with such a hodge-podge knowledge collection system is that it isn’t easy to share. Sure, if someone in my office were to ask me a question, I could likely point them directly to where I previously summarized the answer (or forward it to them by email)…but I had a hard time (1) getting others in my Firm to ask for help and (2) training them where to look for the information I had previously compiled.
In reworking our network at our office, I came upon a solution….
Due to a hardware failure, we recently added a new server. Having a friend that was a huge fan of “ClarkConnect,” I decided to give it a try. I had my IT guy (independent contractor) take an old, out of service computer the Firm had lying around (along with an extra network card pirated from another computer) and install ClarkConnect on it.
ClarkConnect is a Linux based server/gateway. Traffic from our Internet connection goes through the ClarkConnect box before going out to our network (switch/hub). The ClarkConnect box (for $85/year):
Provides core server applications
- mail, web, VPN, backup, file and print services…
Protects network and data
- antivirus, antispam, firewall, intrusion prevention…
Enforces Internet usage policies
- content filter, peer-to-peer filter, bandwidth manager…
Simplifies management and monitoring
- system monitoring, software updates, mail backup…
One of the most important of those features is the VPN ability which allows anyone in the office to securely access files on the server from home via the Internet. No more emailing files to yourself. No more thumb drives.
One of the other benefits to running our ClarkConnect box is that, being built on Linux, it is really easy to install other “modules” and programs. That gave me an idea…why couldn’t I install Mediawiki (the software program that Wikipedia uses) on the box? After a little bit of checking, I found that it was not only possible, but they had even created step-by-step instructions regarding how to do it. After a few minutes…I had the wiki running.
One note, while it is “step-by-step,” it is pretty geeky. For a second “module” that I wanted installed on our box (ProjectPier project collaboration software (an open source clone of BaseCamp, based upon ActiveCollab)), I merely paid the ClarkConnect guys hourly to install it on my box remotely. This (paying them to install) is highly recommended if you don’t want to spend the time figuring it all out. I’ll save my review of ProjectPier for another day.
Back to the wiki… We intentionally decided to shut off the web server on our ClarkConnect box, meaning that the wiki is not publicly available (you can’t access it from the Internet, but could access it if you connect via the VPN).
Now that the wiki is up and running, every time I pull out an old nutshell (etc.), I spend an extra 2 minutes copying the information over to a wiki page. I even found a Microsoft Word script that converts .doc files into the appropriate formatting. Over the last few months I have added, literally, hundreds of pages. For instance, our Trademarks sub-page looks like this:
The wiki experiment is going pretty well so far. While about 95% of the content has been uploaded by me, the others in my Firm (after coming to learn that it is a great resource) are starting to add/edit it too. Every time someone asks me a question and I answer it…the answer gets dumped onto the wiki (if it wasn’t already there). Those questions can be legal based, procedure based, office policy based, etc. All knowledge gets archived to the wiki. The wiki will be invaluable for helping new staff get up to speed (I’ve been having my staff create wiki summaries of “how to do X” and “how to do Y”).
Every person in your law office has valuable knowledge, knowledge that if you don’t capture it…when they leave, the knowledge leaves with them. Collect it! Share it!
Your clients aren’t paying you to reinvent the wheel….
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How much does a patent cost?
February 29, 2008 on 8:48 am | In Idaho, The-Practice-of-Law, USPTO | 3 CommentsAccording to Alan Kasper, the First Vice President of the American Intellectual Property Law Association (AIPLA), more than I expected. In recent testimony before Congress, Mr. Kasper noted that:
…the preparation and filing of an original application of minimal complexity (10 page specification, 10 claims) on average by a firm having my firm’s size is $8,548.00. Similar costs exist for relatively complex biotechnology/chemical cases ($15,398.00), relatively complex mechanical cases ($11,482.00) and relatively complex electrical/computer cases ($13,684). The average cost for filing an Amendment in a case of minimal complexity is $2,244.00, in a relatively complex biotechnology/chemical case is ($4,448.00), in a relatively complex electrical/computer case is ($3,910.00) and in a relatively complex mechanical case is ($3,506.00). (Pages I-78, I-79 and I-80 of the Survey). The government fees related to such filings are the same (unless the Applicant is a small entity) — $1,030.00. The cost for filing an RCE is $810.00 plus a service charge, which in the case of my firm, is $350.00. The cost for filing of a continuation application is $1,030.00 plus a service charge, which in the case of my firm is $585.00.
Those numbers shock me. I guess that is the disadvantage (to me) of practicing (1) in a small firm and (2) in Boise, Idaho.
[hat tip: Chicago Patent Attorney Peter Zura]
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Flowcharts on IP for Clients…
February 17, 2008 on 11:40 pm | In Copyrights, The-Practice-of-Law | Comments OffAdd this to my to do list! Law Department Management blog on “Uses of flow charts and short summaries, including to explain choices to clients.”
Reminds me of: Erik J. Heels’ “Drawing that Explains Copyright Law,” or Bromberg-Sunstein’s “Flowchart for determining when U.S. copyrights in fixed works expire.”
Know of any others out there? Have any you use that you’d be willing to share? Let me know.
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