[120620]patent agent

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  • 7/28/2019 [120620]Patent Agent

    1/2

    Three types of lawyers: admiralty, generalists, specialists (patents)

    Courses from PLI (or buy it from a friend)

    TAKE IT BEFORE MARCH! (2011 Act provision goes into effect)

    No one knows score, or past fails.

    How diverse is the clientele at the firm?

    Is it attributable to a single client (i.e. one Midtown firm does 85% Apple)?Key to law firm is billable hours

    Wratch up the hours and pay (its very difficult to get used to)

    Erik: good to join an engineering company first for a couple of years.

    Options are either law firm or in-house.

    Law school workload is like Intro to Engineering at Cornell: curved to a C-

    Training you to labor under immense volume of work.

    Prosecution

    Steven: worked with Prof. Terrell with graphene lubrication patent

    Columbia Jeff Searslaw firms

    Talked with Prof. Terrell over the phone three times over course.Lot of up-front work: read enough, talk intelligently.

    Read a lot of patents, not scientific papers (not as technical)

    Read references cited against you

    Copywrite/ Clearance

    Review of product

    Claims that exist

    Market infringibility

    Patentability

    Determining freedom to operate

    Looking at and analyzing tech specificationsReading other peoples patents

    ex) GE counsel

    Stage 1: Prosecution (~around 3 months)

    Stage 2: Copywrite/ Clearance

    Stage 3: Litigation/ Licensing (attorney)

    Eric:

    start with prosecution

    read other patents

    not as detailed

    Steven:

    draft application

    ask questions (interpreting) broaden coverage

    flag, probe him with questions

    novelty is unknown for inventors

    getting out something in infancy

  • 7/28/2019 [120620]Patent Agent

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    cradle to grave

    this professor did something elsewhere- mining

    Columbia Tech Ventures

    Students run searches

    What prior art found as relevantAssess whether patentable

    Brainstorm problems, add comments

    Competitors in the field

    Organization

    Deadlines, who, needs of group

    Client service: clients are the partners

    Lisa has six clients, Eric has six partners

    Do I want to be in a service profession?

    Manage both projectsIncremental earnings are low

    Prosecution only- Midwest, Minnesota, small firms.

    Lisa: biggest firm first, to experience wider range of prosecution

    Small patent boutique

    Prosecution- no waxing and waning schedule

    Litigation- document review (sucks you in when you are involved)

    Do document review first as a first year.

    If good process, good work, no explicit feedback

    PILOT program subject matter reviewer with USPTO

    Shadow Jeff? Inventor review

    Ineraction withProcess

    Economy is too uncertain. Risk management

    More options

    Patent literacy.