Patent activity has continued to grow exponentially over the last 20 years despite enduring two recessions, but this time it’s different. Organizations are honing in on conserving cash and patent budgets are no exception. According to Cipher, with over $40 billion spent each year on patents, it’s no surprise that organizations are having to seriously reduce this spend.
As a patent attorney helping startups for over 20 years, I see the challenges IP teams are confronted with in the face of severe scrutiny and budget cuts. I also suggest proven tools to improve easy submissions of quality of patent disclosures, and how such tools will help assess your patent submissions and streamline work by patent attorneys.
How To reduce patent expenses
General counsels can help medical device companies reduce patent costs in a variety of ways:
- Conducting a patentability search: Before filing a patent application, general counsels can conduct a patentability search to identify any prior art that may impact the patentability of the invention. This can help to identify any potential issues early on and can save on the costs of preparing and filing a patent application that is unlikely to be granted.
- Drafting a narrowly focused patent application: General counsels can help to draft a narrowly focused patent application that clearly and accurately describes the invention and its novelty. This can help to avoid claims that are overly broad and can save on the costs of preparing and filing the application.
- Prioritizing the most important patents: General counsels can help medical device companies prioritize which patents are the most important for the business and focus on obtaining protection for those patents first. This can help to reduce costs by avoiding the filing of unnecessary patent applications.
- Exploring alternative forms of IP protection: General counsels can help medical device companies to explore alternative forms of IP protection, such as trade secrets, trademarks, and copyrights, which may be more cost-effective than patents.
- Managing patent portfolio: General counsels can help medical device companies to manage their patent portfolio by regularly monitoring the status of pending and issued patents, identifying potential infringement, and taking action to enforce or license the patents as necessary.
- Negotiating license agreements: General counsels can help medical device companies to negotiate license agreements with other companies to commercialize their technology, which can generate revenue and offset the costs of obtaining patents.
It’s worth noting that General counsels can also help medical device companies to navigate the complex and ever-changing legal landscape surrounding patents, to ensure that their patent strategy is aligned with their business goals and to minimize the risk of costly legal disputes.
Streamline the invention disclosure (ID) process and provide high quality iDs to Outside counsel
Automation can be applied to the invention disclosure process to streamline the workflow and improve the quality of disclosures. This can be done by using natural language processing (NLP) and machine learning (ML) techniques to analyze and extract relevant information from disclosure documents, such as claims and drawings.
Additionally, automated disclosure tools can be used to standardize the format and structure of disclosures, making them easier for patent attorneys to review and process. By using automation to improve the quality and efficiency of disclosures, the cost of the patent process can be reduced.
For example, PowerPatent provides a high quality invention disclosure capture tool that guides inventors to create great disclosures that can easily be converted into full utility applications.
When the outside counsel receives the disclosure, she can convert the disclosures into patent applications in a fraction of the normal time. This frees outside counsel to focus on improving and broadening the coverage of the resulting patent while reducing overall cost. It’s a win-win for your company and outside counsel.
Benefits of working with patent attorneys who use computer-aided patent drafting tools
There are many benefits to working with patent attorneys who use computer assisted patent drafting tools (CAPDT) such as those provided by PowerPatent. Such tools offer an efficient patent workflow for lawyers and inventors with the following advantages:
- Increased efficiency: The CAPDT can automate many tasks in patent drafting such as numbering and formatting. This can help to save time and increase efficiency.
- Accuracy: CAPDT can improve accuracy and consistency in the drafting process of patent applications, reducing the chance of errors and omissions.
- Better organization: CAPDT is a tool that allows you to organize and manage all components of your patent application. This makes it easier for attorneys to find and refer to relevant information.
- Improved communication: Some CAPDT tools allow for collaboration and communication. This can make it easier for attorneys to share information with clients and collaborate with other members of the team.
- Better searchability: CAPDT makes it easier to search for and locate relevant information in the patent applications. This can help save time and improve quality.
- Improved visualization: Some CAPDT tools allow you to visualize the invention and its workings. This can be an effective tool to communicate and describe the invention and make it more appealing to licensees and investors.
- Better compatibility: CAPDT makes it easier to create and maintain patent applications in various formats and languages. This can be advantageous if the application will be filed in more than one country.
- Better compliance: CAPDT helps to ensure compliance to the laws and regulations relating to patent drafting. This can reduce the chance of the patent application being rejected or invalidated.
Important to remember that CAPDT tools are not meant to replace the expertise of an attorney. Therefore, the attorney should be skilled in their use to get the best results.
use boutique patent law firm specialists to cut cost
Using boutique patent law firms that specialize in specific areas of technology can help to cut costs. These firms typically have a smaller team of attorneys who are highly specialized and experienced in their field, and are able to provide more targeted and efficient services than larger, generalist firms.
Additionally, boutique firms often have lower overhead costs and can charge lower fees than larger firms. This can be beneficial for companies and individuals looking to obtain patents in a specific area of technology and who want to keep costs low.
It’s also worth noting that boutique firms are also more flexible to negotiate fees and billable hours with clients and as they are not constrained by large firm’s internal policies, they can offer more creative billing options which can help to reduce costs and align the interests of the client and the firm.
trim international patent costs by focusing on a select group of countries
Trimming international patent costs by focusing on a select group of countries is a strategy that companies and individuals can use to reduce expenses while still protecting their intellectual property in key markets. This can be done by carefully researching the markets where the invention or technology is likely to be most successful, and then filing patents in those countries.
When you file international, a significant part of the cost is the translation cost from English original text. The cost of patent translation can vary greatly depending on factors such as the length of the patent, the complexity of the technical language used, and the language pair being translated (e.g. English to Chinese vs. English to Spanish).
On average, the per word cost for patent translation can range from $0.15 to $0.50 per word. It is important to note that this is just an estimate and the final cost will be determined by the translation agency or individual translator.
For example, a company that is primarily focused on selling its products or services in North America and Europe may choose to only file patents in those regions, rather than filing in every country around the world. This can help to save money on patent application fees, translation costs, and attorney fees.
It’s also important to note that some countries have a more streamlined process to obtain a patent which is cheaper and faster than others. Therefore, choosing countries with a more cost-effective patent application process can also help to reduce costs.
Additionally, it’s important to consider the strength and enforceability of the patent in the chosen countries. Consulting a patent lawyer and assessing the potential return on investment on the patent application in each country can help to make an informed decision about where to file.
file direct national filings to save PCT cost
Filing direct national patent applications, rather than using the Patent Cooperation Treaty (PCT) system, can be a way to save costs. The PCT is an international filing system that allows applicants to file a single application that can then be designated to multiple countries. While this can be convenient, it also comes with additional costs, such as the PCT filing fee, the cost of hiring an international search authority, and the cost of translating the application into multiple languages.
On the other hand, filing direct national patent applications means that the applicant files a separate application in each country where they wish to seek protection. This can be less expensive as it eliminates the need to pay the PCT filing fee and the cost of an international search. Additionally, some countries also have lower fees for national patent applications than for PCT applications.
However, it’s important to keep in mind that filing direct national applications requires the applicant to navigate the patent laws and regulations of each individual country. It also requires additional costs of hiring local patent attorney in each country.
Therefore, it is important to consider the benefits and drawbacks of the approach and to consult with a patent lawyer before deciding which filing strategy to use.
Look Outside the box to meet reduced Patent Budgets
While technically not a cost-saving suggestion, the general counsel can flip the question and turn the legal department into a profit-center to avoid cost downsizing issues. Instead of reducing your patent applications to meet the budget, you may want to leverage the assets you already have. As case in point, Xerox’s portfolio of patents has become a profit center and become the passport to lucrative new opportunities for its general counsel.
Xerox, the name implies, is a company known for its leading edge document technologies. Aside from providing a wide range of Xerox supplies, the company also offers a variety of IT outsourcing and business process management services.
Xerox has been recognized as a top notch enterprise for several years now, and is currently in the running for being one of the top 100 most innovative companies in the world.
As far as the patent industry goes, the Xerox name is synonymous with the name of its parent company, Xerox Corporation. The company has several subsidiaries, including Affiliated Computer Services, XMPie, and the Palo Alto Research Center. Its research and development budget is estimated to be around $1.5 billion per year.
One of the company’s more nifty patented inventions was the Emulsion Aggregation toner. Using this technology, Xerox is able to manufacture high quality laser toner. In fact, the company has received a few prestigious accolades, including the Wall Street Journal’s Technology Innovation award.
What’s more, the company recently centralized its patent assets into a single 266-person business unit. It has also made the laudable decision to reinvest a small percentage of its annual revenues into research and development. And the company has the tat, a number of patents aimed at protecting its products. To this end, Xerox has also launched a patent troll which will seek out and license out other companies’ patents in an effort to boost the bottom line.
For a company whose patent portfolio is largely confined to a small number of product lines, the company’s patent troll is a win-win situation. Not only will the company’s innovation be protected, it will also be rewarded with a bounty of patent royalty payments. This is akin to the company securing an exclusive license to DSL technology. That’s a fancy way of saying the company is able to rake in millions of dollars in licensing fees.
It’s a surprisingly complex business to manage, but the rewards of doing so are well worth the effort.
