Make patents internally takes on buy patent services externally – back and forth go the views

This is an oscillating best practice, with supporters of in-house patent groups as well as supporters of “send the work out.” On one side are those IP lawyers who see ample value when they prepare and prosecute patents in the United States (See my post of Nov. 13, 2005: Motorola formed internal group to prepare patent apps; Jan. 16, 2006: about 30 applications per year by in-house lawyers; Feb. 14, 2007: SAP Canada filed 1,700 patents in 2005; April 22, 2009: Cisco’s guidelines for patent preparation and prosecution; July 21, 2009: query about data on numbers of patent applications by in-house lawyers; Aug. 17, 2010: H-P taking back the procurement of patents; and Oct. 14, 2010: average of 23 patent apps per year per in-house attorney.).

A chorus of posts take the opposite view: lawyers within companies should not spend their time drafting patent applications and responding to office actions (See my post of May 18, 2010: Electrolux maximizes the value of its portfolio rather than its size; Aug. 17, 2010: Xerox farms out prep and prosc; Sept. 28, 2010: in-house patent attorneys should take on more strategic roles; Dec. 4, 2006: patent prep is less strategic; May 23, 2007: strategically invaluable, yet prosecution often a tactical commodity; Dec. 14, 2005: in 2001 Viacom chose from among 20 law firms to handle its patent prosecution work; and Jan. 4, 2009: IP specialist firms selected for patent prosecution.).

On the whole, mindful of the pros and cons, I side with those departments that look to law firms, on fixed costs (although usually with tiers for difficulty), for most of their patent procurement services.

We welcome comments

Your email address will not be published. Required fields are marked *