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Managing Patent Portfolio Costs

May 8, 2020

Prosecuting and maintaining a patent portfolio costs many organizations millions of dollars. These costs should be continuously managed and controlled. However, many organizations allow these tasks to slip when times are good. Under the current circumstances, it is worth revisiting some ideas that go beyond the basics of implementing and practicing a good patent management system.

Following a rigorous and tailored patent management system provides the greatest patent-related cost savings for any organization. By pursuing and maintaining only those patents that fit within the corporate strategies, tremendous resources are saved. If you have not already implemented such a system, now is the time.There might be strategies that go beyond your current management system that can add further cost savings. If you (or your outside counsel) have not already, now might be the time to consider the following:

  • There are several updated and very fine patent portfolio analysis tools available. The LexisNexis PatentSight solution demonstrates functionality and ability to help companies plan, manage and cut costs. Using PatentSight or similar tools can provide very quick cost savings, often more than enough to pay for the tool and improve the company's bottom line.
  • In Japan, search, examination, appeal and maintenance fees all vary as a function of the number of claims. In the Russian Federation, the examination fee is set according to the total number of independent claims in an application. In the Republic of Korea, both the fees for requesting an examination and renewal fees are determined by the total number of claims. This is also the case for renewal fees in Indonesia (total number of claims) and Vietnam (number of independent claims). Consolidating claims to create a single claim and considering multiple dependent claims where allowed may be appropriate. Always consider deleting unnecessary claims. Also, law firms often charge for handling additional claims, so these charges can also be avoided.
  • Sometimes it is up to you to ensure all foreign associates are e-filing when there are cost savings for doing so. Do not assume this is being done automatically by your foreign associates.
  • Translation costs:
    • Choose the right translator, whether it is a law firm or third-party specialist.
    • Ensure counsel is eliminating excess verbiage.
    • Focus on jurisdictions that accept English language or Spanish language.
    • Utilize the Patent Prosecution Highway when possible.
  • The ASEAN Patent Examination Co-operation (ASPEC) is a regional patent work-sharing program among Brunei Darussalam, Cambodia, Indonesia, Lao PDR, Malaysia, the Philippines, Singapore, Thailand and Vietnam. These countries share search and examination results and operate in English. Ensure you are taking advantage of these treaties and programs.
  • Select your search and examination authorities - when filing a PCT application in the U.S. receiving office, an applicant can choose the ISA from Australia, Israel, Japan, Korea, Russia, Singapore, the United States or the EPO. The EPO offers a EUR 190 discount on the search fee if the ISR comes from Australia, Japan, Korea, Russia, the United States or China and a EUR 1100 discount is offered if the ISR comes from Austria, Finland, Spain, Sweden, the Nordic Patent Institute, Turkey or the Visegard Patent Institute (the Czech Republic, Hungary, the Republic of Poland and the Slovak Republic). The Russian Federation discounts search fees by 50 percent when the ISA is the Russian Federation and 20 percent for certain other ISAs.

Certain countries allow for granting of patents that correspond to granted patents in other jurisdictions. Malaysia will issue a patent based on a granted patent from Australia, the EPO, Japan, Korea, the United Kingdom and the United States. Under certain circumstances Thailand provides for granting patent applications based on corresponding foreign patents. Israel does the same for Austria, Australia, the United States, Germany, Denmark, the United Kingdom, the Russian Federation, Japan, the EPO, Norway, Canada and Sweden.

Consider these tactics when looking to cut costs in your patenting strategies. A thoughtful implementation of your strategies can save significant resources for other purposes, with little to no increase in risk or material loss of breadth of protection.

For assistance in executing the above-mentioned tactics or for additional ideas, please reach out to us, we are here to help.

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Name Title Direct Dial Vcard
Braginsky, Philip Partner and Co-Chair of Intellectual Property Group and Pharmaceutical and Biologics Practice and China Practice Partner and Co-Chair of Intellectual Property Group and Pharmaceutical and Biologics Practice and China Practice 212.216.8065 VCard
Shravah, Aasheesh Counsel Counsel 212.216.1132 VCard

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