Dennemeyer advertising feature: A creative approach to patent preparation

05-12-2018

Steven Shape and Malte Köllner

Dennemeyer advertising feature: A creative approach to patent preparation

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Dennemeyer & Associates’ Frosecution solution assists with global patent filing, as Steven Shape and Malte Köllner of the company explain.

Increasing innovation and patenting activity at a global level suggests an ever-growing workload—a challenge for patent offices and patent practitioners. One response to this challenge is enhanced cooperation among the global patent offices, including systems promoting quality and efficiency.

Another response is a creative approach to patent preparation and filing initiatives, which has encouraged Dennemeyer to create a global patent filing process called Frosecution.  

Earlier this year, Dennemeyer hosted IP conferences across the US, where panellists discussed several ongoing initiatives aimed at improving the efficiency of their global patent filings. These discussions acknowledged that 2017 marked the tenth anniversary of the IP5 cooperation between the world’s five largest patent offices. However, the panellists recognised that patent practitioners and global patent offices must continue to adjust their practices to manage and absorb an ever-increasing backlog of patent applications and the growing cost of patent procurement. 

"One Dennemeyer office takes responsibility for the entire lifecycle of international patent applications, including filing and prosecution through to grant."

The panellists discussed how certain patent offices are seen as being either too slow or not well suited for certain industrial sectors subject to short innovation cycles. Examiners have to cope with the emergence of multidisciplinary, new and potentially disruptive technologies (eg, internet of things, artificial intelligence, connectivity, big data and blockchain technologies).

The cost of patent preparation, filing, grant and maintenance continues to escalate. In response to that, patent offices strive to adjust their procedures and enhance the quality of their examination processes to better meet growing expectations regarding predictability, cost-effectiveness and timeliness. The panellists speculated that, in Frosecution, Dennemeyer has achieved a practical, efficient and low-cost solution that patent offices around the world envy. 

Flat fee filing

In a comprehensive in-house study, the entire process of international patent filing and prosecution was analysed. The study recognised that the number of filings continues to increase globally, as do the tedious formalities common in foreign filings. As a result of this study, new optimised processes for international prosecution were developed. 

Dennemeyer’s Frosecution service entails a flat fee per country for the entire Patent Cooperation Treaty (PCT) national phase, from filing to grant, providing cost transparency and predictability. Clients benefit from Dennemeyer’s worldwide offices, extensive network of agents, and the full expertise of an experienced, dedicated patent attorney as a single point of contact.

Dennemeyer can achieve efficiencies by optimising the process of responding to office actions and international work-sharing within a well-established global network.

The prosecution service entails a flat fee for the entire national phase (typically a PCT national phase), from filing to final grant, including all service fees, official fees and translation costs. One Dennemeyer office takes responsibility for the entire lifecycle of international patent applications, including filing and prosecution through to grant.

Creating efficiencies

The fee structure is streamlined and the fixed fee price is highly competitive. The secret lies in efficiencies achieved by optimising administrative procedures.

Work-sharing

Dennemeyer’s Frosecution process streamlines the fee structure and global patent preparation, filing and prosecution using work-sharing tools and lean processes. These improved steps enable the fixed fee charged by Dennemeyer to be below average for traditional patent prosecution costs and help clients enjoy significant savings and budget predictability for their international prosecution work.

Foreign filing challenges

The costs associated with foreign filing tend to be quite high and unpredictable. For companies such as startups, with limited budgets for patents, certain strategies can be implemented to help manage the financial burden of foreign filing.

One strategy is delaying cost (generally for up to 30 months after the first priority filing date) and using the time gained to assess the probability of commercial success of the invention in particular countries before filing national-phase patent applications in those countries under the PCT framework.

A better approach is to focus not just on filing, but rather on the complete process, from filing through prosecution to grant. The question is: what is the best way to deliver both filing and the final result, ie, the granted patent, to applicants?

Steven Shape is managing partner at Dennemeyer & Associates. He is a registered patent attorney and an electrical engineer who has represented technology companies in complex IP litigation and foreign patent and trademark prosecution matters since 1982. He can be contacted at: sshape@dennemeyer-law.com

Malte Köllner is the head of Dennemeyer & Associates’ Frankfurt office. He is an expert in patent prosecution and leads Dennemeyer’s foreign filing practice. Köllner developed the flat fee prosecution programme for Dennemeyer. He can be contacted at: mkollner@dennemeyer-law.com

Dennemeyer & associates, patent preparation, filing initiatives, Frosecution, artificial intelligence, internet of things, blockchain technologies

WIPR