April/May 2010 / Intellectual Property
Cost-Cutting Strategies for U.S. Patent Prosecution
The cost of obtaining a patent, according to the authors, has risen because of two factors. The first is higher billing rates, the legacy of a nearly two-decade period of intense competition for qualified IP associates. The second is the increased difficulty of overcoming obviousness objections by patent examiners as the result of a 2007 Supreme Court decision, KSR International Co. v. Teleflex, and subsequent Patent and Trademark Office guidelines.
The KSR decision essentially created a new hurdle for U.S. patent attorneys, and in their efforts to get past it they tend to run up both billable hours and patent office fees.
To economize, the authors say, IP counsel need to tailor their arguments to the revised guidelines. They detail several examples, including explaining how a reference to prior art actually “teaches away” from the claimed invention, or arguing that the invention addresses a “long-felt but unresolved need.”
They also suggest various procedural moves that can speed the process and save on filing fees – for example, presenting rebuttals and amending claims early, after a PTO “First Action” instead of waiting for the final action.
Finally, the authors suggest various kinds of alternative fee arrangements with outside patent counsel, perhaps in exchange for a guaranteed work flow to the law firm. These include fixed fees, discounts and ceilings on billed hours.
