Friday, May 8, 2020

Does my outside patent counsel care about me?

As in-house counsel, your priorities are to develop a high quality patent portfolio for your company while staying within the company's IP budget.

By contrast, the priority of outside counsel is more closely tied to basic economics. A law firm desires to maximize its profits, but higher quality work at a lower price may reduce profits.

As in-house counsel, it is important to take actions to ensure that your outside counsel is taking care to do high quality work.  This is especially the case with fixed-fee billing where there are higher incentives for law firms to cut corners.

One way to get higher quality work from your outside counsel is to carefully review all of their patent applications and office action responses.  But, this is quite time consuming and it is their job not yours to do that.

Fortunately, there are easier ways to make sure that your outside counsel provides high quality work, and in this blog post we provide some tips.

Use automated patent proofreading

Many issued patents have errors in the claims (even after certificates of correction). Your patents are valuable, and outside counsel is expensive. Issued patents should not have errors.

It is tedious work to remove errors from patents claims, but automated patent proofreading tools like Patent Bots make it much easier to do so. You can use Patent Bots proofreading to see in seconds whether or not your patent drafts have errors in them.

You can also require outside counsel to use automated patent proofreading tools and provide you with a proofreading report for each patent application and office action response.

Outside counsel billing rates are hundreds of dollars an hour. Demanding use of a tool that costs $34/month to obtain higher quality patents is an eminently reasonable request.  Automated proofreading also makes outside counsel more efficient so that they can spend more time adding substantive value.

Use patent examiner statistics

Knowing your patent examiner will allow you to get stronger patents and also get them faster. Patent examiner statistics allow your outside counsel to:
  • avoid unnecessary amendments to obtain broader patents,
  • make better decisions regarding if and when to appeal,
  • predict appeal outcomes, and
  • make better decisions regarding abandonment of applications, especially for applications in business method and other difficult art units.
Patent Bots provides some patent examiner statistics for free and paid statistics are inexpensive.  These statistics allow you and your outside counsel to make better strategic decisions during prosecution.

Impose guidelines for prosecution strategy

Keeping an eye on prosecution strategy will also help you get better outcomes. There are a few easy things you can do:
  • Require examiner interviews for almost every office action (unless you have an examiner like this one whose grant rate goes down with an interview).  Interviews allow examiners and attorneys to overcome misunderstandings in written arguments and reach agreements more quickly.
  • Don't allow extensions for office action responses and certainly require outside counsel to pay extension fees when there are extensions.
  • Review claim amendments to make sure they are worthwhile. Examiners will indicate that very narrow claims are allowable, and some outside counsel are too eager to accept such narrow claims.
  • Keep an eye on the number of RCEs being filed.  Too many RCEs may indicate limited novelty, and it may be better to abandon than to throw good money after bad.
By doing these things, you can greatly increase the quality of work done by your outside patent counsel and get better results for your company.

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