Question for patent prosecutors (agents and attorneys) Forum

[Anonymous User]

I worked at an IP firm for a couple of years until last year. The work included some patent prosecution but nowhere near a full docket. I responded to many office actions and drafted a few applications. Otherwise I did a lot of other IP work (lit, opinions, TM, etc.). But I had to step away from the law for a year for personal reasons and upon my return, I was able to land a biglaw gig (non-partner track) in a secondary market a couple of weeks ago. Unlike my previous work, this will be almost exclusively prosecution work with some lit support - which is entirely fine with me.

I feel very lucky but also extremely rusty. I literally have done nothing law-related in a year. How do I get back into things in the two weeks before work starts? My schedule is entirely open. In particular, I am concerned about drafting amendments, arguments, and applications. Even legal research seems intimidating right now given that I've been completely out of practice.

Just in general, how have people who took an extended leave from law managed to get back into it?

[Abbie Doobie]

eh, it will come back quickly. don't think there is anything u really need to do. if you were dead set on doing something, you could always pull up some cases prosecuted by the firm you are going to and take a look at their oa responses and apps to get a feel for their style. just go to patft, search for cases by firm and then look up the image file wrappers of the cases in pair to review the responses.

[Bluem_11]

Everyone writes replies and apps a little differently. Given how long you've been out of practice all your apps have likely been published already. Go back and take a look at those maybe as well as any replies you may have written and try to put some templates together.

[Anonymous User]

eh, it will come back quickly. don't think there is anything u really need to do. if you were dead set on doing something, you could always pull up some cases prosecuted by the firm you are going to and take a look at their oa responses and apps to get a feel for their style. just go to patft, search for cases by firm and then look up the image file wrappers of the cases in pair to review the responses.

That's definitely the plan. I did something similar to prepare for the interview: like most firms of this caliber, only the firm name is listed on the patents but I was able to cross reference them with the clients of my interviewers to ID some of the latter's patents.

To prepare for the interview, I only read some of the patent. But now I plan to actually dig into their prosecution history before I start.

Other suggestions welcome.

[jhett]

Once you start, just ask for templates for applications and OA responses and use those as jumping-off points. Each partner prefers to do things differently, so it's easiest to work from example docs they give you rather than do it from scratch.

Read the Patently-O blog for the latest developments in patent law.

Lastly, it's fine if you are a bit rusty. The firm knows that it takes a bit for any person to get up to speed, and they probably won't dump a huge docket with immediate deadlines on you right at the beginning.

[elendinel]

If I were you, I'd just look at some cases you worked on before (if public) and see the kinds of things you put in your apps, the form of your amendments, etc.

You don't want to go overboard because the new firm may have a lot of differences in the way they do things, in comparison to your old firm, and you don't want to make things harder for yourself by memorizing the nitty-gritty of practices that your new firm may or may not take issue with. Just review the broad strokes and trust that your supervisors will give you specific guidance about how they do things when you start working. I second the Patently-O suggestion, and maybe also IP Watchdog.

[redtalun]

If you're going to be doing a lot of software that might run afoul of Alice, it would be very helpful to get up to speed on the current state of affairs regarding 101 eligibility and also review some OARs to see how your new firm approaches responding to 101s.