Milking it

Posted by Stephen M. Nipper at July 5, 2005 12:51 AM


I recently received a phone call from an examining attorney for one of the trademark applications one of my clients had filed. Typically, getting a phone call from an examining attorney (trademark) or examiner (patent) is a good sign. They don't call (usually) to give you bad news, but to take care of matters which can be resolved via a phone call. In example, an examiner might call you to say "all of the claims are allowable, but there is a typo in claim 2, do you mind if I enter an examiner's amendment fixing it?" The alternative is that the examining attorney/examiner will have to send you a formal office action, thereby requiring a formal response ($$).

Back to the phone call. After discussing the trivial change needed to obtain allowance, I thanked the examining attorney for the call, noting that I appreciated it because it saved my client money (because he didn't have to pay me to prepare a formal Response to enter a trivial change). The examining attorney was if she'd never heard of such a thing before.

She lamented that she was sick and tired of attorneys who would be mad if she called asking for permission to enter an examining attorney's amendment, attorneys demanding a formal office action (rather than dealing with simple procedural matters over the phone.) She then relayed a story...a story of an attorney who once called her to read (really slow) aloud the Response he had mailed a couple of days earlier. The same Response that she had sitting on her desk in front of her (well...eventually she'd have it in front of her). "I know how to read," she said.

Why do some attorneys do this?

Minimum billable hour requirements. Aren't they dandy?

Image source.

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I really like the guys over Rethink(ip). One of their recent posts called "Milking It" is mandatory reading for anyone who has ever wondered if the current emphasis on billable hours in law firms is really a good thing for...

Trackbacked from Milkable Hours on Between Lawyers.


david Says:

July 5, 2005 05:13 PM

Well, I think sometimes it does not make sense to simply respond over the telephone just because that would be easier for the examiner.

I make examiner's mail out restriction notices because they save me time in receiving the information from an examiner and then writing up a letter to the client (no general e-mail for the client). The client responds better to a written request, and there is a dealine. This is an overall less expensive solution for the client as there is no unnecessary attorney involvment.

Aaron Says:

July 30, 2005 03:43 PM

In the case of an ITU, requesting the formal Office Action also can also serve to give the client a longer period of time to begin actual use. Just one reason why this might be done.

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