Dan Cislo gave me the initial consultation, having found his firm via LA County Bar Assoc. From the start he helped me to understand the patent strategy, and me being a small biz, he helped me financially by giving a generous monthly payment plan. Now I am all caught up, and have a slight surplus in the account there. He interned at the US Supreme Court way back when. Dan handed me off to Wook Pak in the firm. Wook does a great job helping me to understand the ins/outs of the patent process, from timing to procedures to diagrams to claims to wording, to communication with USPTO examiners. He talked to the examiner, and clarified the objections so that I could come up with ideas to get around them. That got both initial patents for two products passed. The firm has a lot of attorneys with different expertise. Cislo & Thomas has associates who keep up with timing to give me reminders to keep up with deadlines for filing maintenance fees for several patents they got issued in USA, Europe, and Russia. I have been with them for over 10 years, and it is because of their non-attorney associates for the most part that we have not missed a deadline.
Why choose a big firm over a small one with only a couple of attorneys ? Why pay more per hour ? At a small firm which costs less per hour, there is not enough $ to pay for enough man/woman power to keep up with a multitude of deadlines or to send you reminders. You risk missing deadlines and losing patent rights. Small firms have attorneys spread out with not just patent duties, but also office maintenance and patent deadline duties. It means your attorney may not have time to call up the examiner to find out how to get around objections, and that in turn can mean the patent never issues. Large firms give attorneys time to focus on patent issues and to keep up with trends that indicate how to write claims to get them passed. At small firms you are at a risk that attorneys do not have time to keep up with all necessary patent issues or trends.
Wook had the time to help me understand the CIP process in order to file a second set of patents that broadened the scope of the first provisional patent applications that I wrote without professional help and of the subsequent first set of patent applications Wook wrote. Wook and the firm communicated with foreign attorneys to help understand the process there. Good luck keeping up with foreign filing matter and deadline issues if one chooses a small firm.
In addition, writing claims so that they get around prior art and are approved by examiners takes years of experience. There are special terms and phrases that are not obvious. USPTO examiners are busy with big loads to look at, and it means they want to correspond with experienced attorneys. Examiners, I can imagine, do not want to spend their limited time teaching self-filing inventors how to write claims. Wook does not have to spend time managing the large firm, and it gives him freedom and time to become an expert at studying/writing claims and approval trends held by examiners. I could not have come up with ways to get around examiner objections to the first round of patents or to write claims for the broader second round of CIP's without Wook's expertise at claim writing. read more
