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1 November 2013Patents

Fixed patent prosecution fees are the future

The number of foreign patent filings continues to increase globally. And so do the tedious formalities of patent prosecution. Nevertheless, foreign filing is a necessity for IP departments of innovative companies, in order to keep freedom to operate in the major markets, to protect their own product range and service portfolio or to generate revenues from licence fees.

Why optimise prosecution?

Finding high quality and reliable partners which meet your firm’s local benchmark is not always as easy as you wish. Countries, cultures and (patent) attorneys are different, and so are the work results.

The more countries you involve, the more time- and resource-intensive foreign patent prosecution gets. There are some service companies around who can support you, for example, with filing in numerous exotic countries, if you reach the national phase of a Patent Cooperation Treaty (PCT) application.

However, the main work to coordinate all the activities with myriad agents and follow-ups in all these jurisdictions often keeps your workforce blocked away from creating additional value within your core competencies.

"All attorneys working on a case should share the same working tools, procedures and communication channels. This enables them to avoid ineffeciencies."

Another important issue is costs, which can not only be quite high, but are usually pretty unpredictable. The graphic below illustrates how much the cost of a US patent can vary. All this does not make budgeting easier at all.

So what can you do to have clear cost control over your prosecution budget while ensuring consistent, high quality work across jurisdictions, all combined with minimum efforts to coordinate the whole multi-country process?

In order to reduce costs and optimise prosecution, one of the possible solutions is outsourcing to a well-known global player in IP law, who takes care of the whole prosecution phase from filing to grant for a very competitive fixed fee per country. Preferably, such a provider should also offer a single point of contact for you.

Figure 1 illustrates an example of the costs of a US patent until grant for e.g., a European applicant. The costs are traditionally unpredictable and on average above the price that a provider offering a flat service fee can offer—and stick to.

Is a flat-fee prosecution service possible?

How can a law firm be so price-competitive? The secret lies in above-average efficiencies which are achieved by optimising administrative workflows, the process of answering office actions and international work-sharing within a well established global network of attorneys. This is difficult to achieve without several decades of experience and numerous offices around the world.

One of the absolutely necessary ingredients is highly efficient work-sharing within the patent family. All attorneys working on a case should share the same working tools, procedures and communication channels. This enables them to avoid inefficiencies. A second important ingredient is lean processes. The major prosecution processes will be decentralised to the local attorneys, while further optimisations are enabled by the work-sharing tools.

The advantages of using such a prosecution service can be manyfold: the unitary fee will help avoid unpredictable costs during the prosecution phase. By using a single contact point, companies will get rid of tedious formalities and lower the administrative burden. In turn, they will be able to concentrate on their core competencies to create value.

The future of foreign filing is increased efficiency, better and fixed prices, higher quality and extensive outsourcing. Dennemeyer & Associates is an international IP law firm, providing a new flat-fee prosecution service and numerous other legal services for patent and trademark prosecution.

Malte Köllner is a German patent and trademark attorney and heads the Dennemeyer & Associates office in Frankfurt a. Main. He can be contacted at mkoellner@dennemeyer-law.com

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