Efficient patent portfolio management is important, yet can take many forms. On one hand, it can include the efficient use of time to expedite the issuance of pending patent applications within a portfolio. On the other hand, it can include the management of people both internally with an in-house patent team and externally with outside counsel in various jurisdictions. And it can also include the efficient management of annuities and maintenance fees. The combination of these can be challenging especially with a large and diverse portfolio, but a necessity for a properly managed portfolio.
Inefficient temporal patent prosecution can be a drag on resources. It wastes valuable in-house resources, it requires more work by outside counsel resulting in greater expenses, and it delays the grant of defensive, offensive, or monetizabile assets. In most situations, this is a waste that can be avoided if managed properly.
The U.S. patent system has several tools can be used to expedite issuance of a patent. These include leveraging first action interview requests[i], examiner interviews, prioritized examination[ii], and after final office action amendments. First action interview requests can be a useful way to effectively obtain an additional office action and an interview with the examiner early in the prosecution process. First action interview requests have been found to more quickly lead to allowance.[iii] Similarly, interviews at any time in the prosecution lifecycle have been shown to lead to earlier allowances.[iv]
Prioritized examination greatly reduces the prosecution term. In exchange for payment of a fee ($1,000 - $4,000 depending on the size of the application), an application is moved to the front of the examination queue. While the fee is steep, the expedited nature of the proceedings can be beneficial and more cost-effective over the entire prosecution lifecycle. In many cases the added savings of a quick allowance offset the additional fee required to enter the program.
In Europe, the issuance of the first office action can be a long wait. The filing of status inquiries and PACE requests can be used to expedite the issuance of the first office action.
For patents filed internationally, the International Search Report and Written Opinion can be used to revise the claims prior to examination in all jurisdictions. Because many examiners rely heavily on the International Search Report and Written Opinion when issuing a first office action, amending the claims in advance can move prosecution past the first office action into more substantive matters. Additionally, the various Patent Prosecution Highway (PPH) programs can be used to leverage a positive finding in one jurisdiction to other jurisdictions.[v] The PPH program, for instance, a positive search result from an International Search Report and Written Opinion can be used to produced allowed claims in some countries. As another example, the PPH program can used to leverage a allowance in one jurisdiction (e.g., Australia, which tends to be quick) to expedite prosecution in another.
Efficient patent portfolio management also includes the efficient use of internal and external human resources. The size and resource allocation of the in-house team should be evaluated to ensure resources are not too thin so quality suffers and not wasted on a bloated internal team. This balance can be tricky but is key to financial efficiency. In addition, outside counsel should be managed appropriately. The burn rate of an unmanaged attorney can be high. With high billing rates and little oversight attorneys have been known to over bill for work. Fixed fee prosecution can be used ensure that individual tasks are kept within preapproved budgets. In addition, efficient temporal management can be useful in keeping the overall burn rate low for an asset. In addition, attorneys that provide quality counsel at lower rates are not hard to find midsized markets, typically away from the coasts.
Finally, careful management of maintenance, renewal, and annuity fees can be important to efficiently managing active assets. These fees can be expensive[vi] and useless if an asset has no value. A review of patent value prior to paying maintenance fees is critical to ensuring that maintenance fees for valuable assets are paid. Several tools can be used to determine an assets value such as high-medium-low (HML) analysis. This analysis can be done in house or using one of several tools or third-party supplies. Regardless of the analysis used, it is important to regularly review asset quality prior to paying maintenance fees.
[ii] The USPTO resource for Prioritized Examination can be found online: https://www.uspto.gov/patent/initiatives/usptos-prioritized-patent-examination-program
[iii] Data has shown this program can more quickly lead to allowance with fewer office actions: http://www.kilpatricktownsend.com/~/media/Files/articles/2014/A%20Look%20At%20The%20Results%20Of%20USPTOs%20Interview%20Program.ashx
[v] The USPTO has an extensive resource regarding the PPH program, which can be found here: https://www.uspto.gov/patents-getting-started/international-protection/patent-prosecution-highway-pph-fast-track
[vi] In the U.S. maintenance fees can be as high as $7,500.