Six observations gleaned from patent activity by a company that rarely seeks patents

An article about how an actuary at Towers Watson obtained a patent for a statistical algorithm, in the NY Times, May 13, 2012 at BU7, raises several points about law department management.

Initially, the employee cleared with his boss that it would be worthwhile to obtain a patent, and then “worked with an outside patent firm to translate technical information into layman’s terms for the application.” The Towers Watson law department probably lacked patent experience and had to find and retain a specialty firm.

Later, the lawyer who started the patent application left the firm and someone at Towers Watson had to decide whether to stick with the firm or move the project with that lawyer (See my post of Aug. 14, 2005: transitioning matters; July 21, 2006: moving matters; and June 13, 2006: the decision to hire the firm or the partner.).

Third, during the firm’s review of prior art – patents already granted that might deny the idea’s patentability – the actuary had to check a dozen of them for similarity. Stated differently, even though the law department handles a matter, clients have significant input.

Finally, to decide whether to file a second application for accelerated review required a cost-benefit analysis, including competitive positioning (See my post of Feb. 19, 2009: invention review committees with 7 references.).

The first application took more than two-and-one-half years from filing to approval, and the second (the accelerated application) took a bit more than a year. This exemplifies how law departments need to explain to clients such delays and keep them abreast of developments.

Finally, the inventor was given a plaque and $2,000 when the patent actually issued. Such a corporate practice increases the work load of the legal department and increases its spending (See my post of Dec. 13, 2010: awards to compensation for inventors with 6 references.).

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