When it comes to patent applications, it’s never wise to be penny-wise and pound-foolish. Doing so could erode the quality of their applications while increasing the long-term costs of enforcement.
It is a well-known fact that cutting back on patent prosecution costs and time is not always the best strategy for those looking to safeguard their intellectual property. This is because when an application’s pendency increases, so does its cost of prosecution.
Therefore, it is more effective to focus on increasing the productivity of those involved in patent processes rather than cutting their budgets. Doing so allows them to get the most out of their resources and safeguard their valuable intellectual property in the long run. AI assistance is one way to control costs and still have a great IP portfolio.
Cost cutting strategies
1. Capping Spending Alone Is Counter-Productive
Intellectual property generation can be a key differentiator that distinguishes companies with the potential to dominate an industry over time. Furthermore, companies with high concentrations of IP can build strategic moats and gain an economic edge that can be leveraged for long-term business success. Companies with strong IP portfolio that dominate the patent factor has historically outperformed the US All Stocks universe on a risk-adjusted basis, averaging 72.5% 1-year base rate over this analysis period. These excess returns are due to strong selection effects from Brinson sector attribution; with Technology, Health Care, and Industrials being the three sectors heavily weighted by patents.
Capping spending is a cost-cutting strategy that may prove foolish. Companies could potentially reduce the quality of a patent application by restricting how much money and time they invest in patent prosecution. If significant budget restrictions impact the quality, it’s possible that the pendency for your patent application will extend longer than anticipated, leading to additional expenses down the line. In essence, any short-term savings you make now will come at a greater long-term expense to prosecute it.
Businesses would do well to revisit the fundamentals of patent prosecution. Businesses can save both time and money by dedicating more effort to creating the patent application. While expediting drafting a patent application may be cheaper in the short run, any savings might be outweighed by potential issues that arise later on. An Examiner could become confused if a patent application is not written correctly. They may not be able to comprehend and appreciate the full scope of an invention. If the Examiner is uncertain about the invention’s scope, there could be numerous objections or rejections that annoy the applicant and delay the approval of their application. If there are a large number of rejections or objections, this could indicate that applicants must spend additional money and time to hire an attorney to help them resolve these problems.
Businesses that invest wisely in technology can avoid these issues. Businesses that allow their attorney more time for preparation and filing of the patent application will get a high-quality application that communicates clearly the invention to the Examiner, leading to fewer objections or rejections during the prosecution of patent applications. Furthermore, this reduces focus on substantive issues rather than non-substantive ones, making the Examiner happier overall – leading to an increased likelihood that they grant your patent application allowance.
When a patent portfolio is in its early stages, it’s easy to underestimate how much money will be needed annually to safeguard that portfolio.
On the long term, overbudgeting and excess spending can have detrimental results. Cost-cutting strategies may be wise in the short term but costly in the long run; thus, it’s essential to remain focused on protecting a robust portfolio at all costs.
For instance, a business may opt to invest in additional patents as part of its R&D effort. Doing so could give them an edge by creating new, creative products and designs which may become popular in the future.
Therefore, companies with this capability may enjoy a distinct competitive edge, particularly in the pharmaceutical sector where new drugs are expected to be developed at an exponentially increasing rate over the coming years.
Furthermore, companies may choose to utilize this opportunity by licensing the patents for a fraction of their value to other businesses. Doing so allows them to monetize their intellectual property in the future, which could be beneficial for their long-term financial well-being.
3. Focus on Support Systems that improve IP Quality and the Savings Will Come
Making time to craft a high-quality patent application is an investment that will yield rewards in the future. Furthermore, it makes your application stronger and increases the likelihood of receiving an issued patent.
AI tools can help patent attorneys improve the quality of patent applications, which can have long-term cost savings for clients.
AI tools can assist patent attorneys in various stages of the patent application process, such as prior art searches, patent drafting, and prosecution. By using AI-powered search tools, patent attorneys can quickly and efficiently identify relevant prior art, which can improve the quality of the patent application and help to avoid patent infringement issues later on.
In addition, AI-powered patent drafting tools can help patent attorneys create more detailed and accurate patent applications by providing suggestions for wording and formatting. This can help to reduce the likelihood of errors and omissions in the patent application, which can ultimately save time and money in the patent prosecution process.
AI tools can also assist patent attorneys with prosecution by identifying potential issues with the application and suggesting strategies for addressing those issues. This can help to reduce the likelihood of rejections and objections from patent examiners, which can also help to reduce the overall cost of the patent application process.
Overall, by leveraging AI tools to improve the quality of patent applications, patent attorneys can help to reduce costs for their clients in the long term by increasing the chances of obtaining strong, defensible patents.
4. Shorten Prosecution with AI Support Tools
Businesses can take advantage of the Manual of Patent Examining Procedure (MPEP) whose guidelines lay out an approach that Examiners must use when reviewing patent applications. For instance, under MPEP it is required that an Examiner issue Office Actions covering all pertinent matters; businesses should request another Office Action if this requirement isn’t fulfilled. A completed Office Action provides a thorough record and allows prosecutors to better address rejections resulting from previous rejections.
Businesses can utilize this technique to reduce their prosecution expenses in the long run. AI tools enable patent attorneys to craft a comprehensive Response that addresses each rejection in an Office Action. While the time required for writing an Office Action response depends on the issues (i.e. rejections or objections) raised during that process, responses can be written quickly if the reference patents can be quickly analyzed for ways to traverse the rejection, such as inoperability when combined. Moreover, the AI can pull together a first draft for attorney review based on similar rejections and responses thereto. This reduces time spent prosecuting an application and lowers overall costs associated with that process. A thorough response done with AI assistance may help eliminate rejections and objections and reduce prosecution expenses.
If a case is stagnating, applicants may take steps such as amending the claims further, abandoning their patent application, or appealing the case before the USPTO Board of Patent Appeals and Interference. These measures may result in higher costs over time due to unnecessary appeals and responses, as well as not having a clear understanding of the Examiner’s position. Interviewing Examiners is therefore an efficient business decision. Examiner Interviews offer applicants and/or their attorneys a chance to discuss the patent application in detail. This interview gives the applicant the chance to explain both their invention and how the claims will be enforced. It also gives the Examiner a chance to hear arguments that support the patentability and validity of claims. They will have an interactive conversation with the Applicant, helping her clarify his interpretation of their scope. Furthermore, this gives the Applicant better tools with which to plan and execute a strategy for expediting their patent allowance application. The AI can also predict success, and if not, it can advise the attorney on the odds of appeal.
5. Monitoring Deadlines
Patent portfolio maintenance is a significant expense for many organizations, and while cost-cutting may seem like an easy target during times of economic stress, companies should ensure they are saving in the long run.
For instance, missing a deadline to file for a patent can add an extensive amount of time and money to the overall process. Furthermore, missing a deadline increases the risk that you will forfeit the patent altogether.
Furthermore, it can have a direct effect on the business as a whole. An unexpected loss of intellectual property and diminished market share are just two examples.
To avoid these issues, utilize a docketing system to regularly monitor your patent applications and renewals. Whether managing multiple patents or one client’s portfolio, an efficient docketing program will make the process more efficient and reduce your likelihood of missing deadlines.
Maintaining a large patent portfolio can be expensive, particularly when technology and market trends shift quickly. That is why so many leading IP organizations regularly reduce their portfolios by around 10% annually.
By adopting the correct cost-saving strategies, you can save a substantial amount of money while maximizing the advantages that your portfolio has to offer. This can be accomplished through active management of your current patent portfolio, eliminating high-risk areas, and utilizing new technologies to boost revenue and growth.
6. Save Money By Trimming the Portfolio
Analyzing your patent portfolio and realigning it with your business strategy can help keep costs low and maximize the value of your patents. It may even be beneficial to generate capital from these patents in your portfolio.
Another effective way to save money is by expediting the time between filing a patent application and its disposition through grant, abandonment, or expiry. This is particularly pertinent for international applications filed under the PCT system that typically involve multiple interactions with the patent office in one year.
Furthermore, you can often reduce the cost of maintaining your patent portfolio by forgoing maintenance fees required in certain foreign jurisdictions. Doing so could save you a substantial amount of money – especially if you have older foreign patents in your portfolio.
Finally, AI can help inventors provide high-quality invention disclosures that can rapidly be converted into patent applications. It is also essential to take into account the cumulative effect of actions across your portfolio since the cumulative savings on patent drafting can quickly add up to significant savings.
In sum, savings can be achieved by employing strategies such as drafting a comprehensive patent application in advance, confirming whether an Office Action is complete, and filing detailed Responses. These steps have a significant effect on the efficiency of your intellectual property program and how long it takes to prosecute each patent application.
Conducting examiner interviews can be a helpful step in the patent prosecution process. These conversations, typically conducted over the phone, can often influence examiners to reconsider patent rejections. It is essential that you select an experienced patent attorney to conduct these interviews.
It is recommended that you hire a patent attorney with extensive experience conducting these interviews so that both of you are on the same page. During the interview, be sure to discuss the subject matter with the examiner and be clear about your objectives.
The goal is to determine if a patent is still beneficial to the company and/or market in general. If it no longer supports your company’s business objectives, then it would be wise to dispose of it. Doing so frees up funds that could otherwise go towards protecting new technology or reallocating them for other projects.