In the second installation of the two-part series, we explain how the most effective and efficient way for companies to manage high-volume patent prosecution is to break down the Office Action response into four main patent prosecution steps. In this model, each team member is responsible for delivering the work best suited to their skills. As a result, companies can economize the high-volume patent prosecution process, while maintaining quality.
The stakes are high when business success depends on the patent portfolio’s strength. For corporations filing responses to more than 500 Office Actions a year, any inefficiencies in a high-volume patent prosecution process are magnified, along with increased costs and quality concerns. What is the solution?
“All things will be produced in superior quantity and quality, and with greater ease, when each man works at a single occupation, in accordance with his natural gifts, and at the right moment, without meddling with anything else.” —Plato
Plato may be a surprising hero to our conundrum, but his wisdom holds the answer for streamlining high-volume patent prosecution.
As we explained in a previous blog post, the traditional methods of outsourcing high-volume patent prosecution to multiple law firms has a number of risks and costs, sacrificing quality and visibility into the patent lifecycle. Alternatively, having internal corporate counsel manage hundreds of Office Actions (OA) isn’t a sustainable model either. Instead, corporations can achieve an efficient and fine-tuned patent prosecution process by breaking down Office Actions into a series of four steps that can be managed separately until the point when results can be merged for the final draft.
To economize the Office Action process, each of these steps can be completed as separate assembly lines and then merged to achieve the final output. This patent prosecution model delivers quality Office Action responses and ensures that attorney’s time (and hence costs) are well spent. This is possible because each sub-process has different requirements, such as legal or technical expertise, along with specific tools such as software and databases required.
For example, the attorney’s time and expertise of patent laws and legal knowledge is required primarily in the last step. A well-trained OA response drafter can handle the third step and step two can be done by a technical expert who may or may not be the same as the drafter. With this model, attorneys can handle more Office Action responses and give more attention to the overall Office Action response strategy. Let’s look more closely at each step.
Step 1: Preparing the Office Action template
This task can be done primarily by paralegal staff. Currently there are many tools available that can automate this step, from retrieving the Office Action and finding cited prior art to preparing the Office Action shell templates. Paralegals trained on these tools and processes can handle this step effectively, and at a lower cost, than an attorney.
Step 2 and Step 3: Technical understanding and drafting the Office Action response
These steps, though separate, should be done in conjunction. The first part of this stage requires a technical expert who has technical understanding of the patent applications and references cited in the Office Action, as well as a basic understanding of patent laws.
While an attorney has the expertise in patent laws, claim amendment, writing well-structured and precise arguments, each attorney may not have the same level of comfort and expertise handling different technical domains. Especially in today’s world with rapidly developing technologies, such as in high-tech, it can be difficult to remain current with emerging technologies. Given the requirements of these highly specialized fields, the technical experts should handle the technical aspects of the Office Actions. This also allows corporations to make better use of attorney’s time by allowing attorneys to focus on the legal aspects.
For example, a successful model for handling high-volume prosecution might include two or three attorneys working with a team of 20-30 technical experts and OA response drafters. We refer to this as the attorney-drafter model.
In the attorney-drafter prosecution model, the team of technical experts and OA response drafters can work in close association with the attorneys on tasks such as:
- Analyzing the technical aspects of the patent application and the cited references.
- Identifying differences between the claims and cited references.
- Providing suggestions to the attorneys and clients regarding various possible strategies for preparing the OA response.
With the right experts preparing the technical analysis and OA response draft, attorneys can focus on the legal aspects of the OA response instead of reading and analyzing the patent application and cited references. This model ensures quality work with the appropriate experts in each role, while preserving the higher costs of attorneys’ time.
Step 4: Final legal check and filing
In the attorney-drafter model, the attorney can spend most of his/her time reviewing the draft for legal requirements, patent office requirements, and best practices for drafting claims and amendments. Once the attorney has reviewed and approved the draft, the paralegal team can file the OA response at with the patent office.
It’s important to note that this model assumes that the technical experts are strong writers, well-trained to write claims and draft the OA response. Otherwise the attorney will need to rewrite the drafts and any time saved will be lost.
Investment required for the attorney/drafter model
The attorney-drafter model is designed for large-scale patent prosecution. Companies need to invest time and effort training teams in this model. Because patent prosecution involves in-depth understanding of the technology, as well as prosecution preferences, it generally takes two to three months to complete the initial knowledge transfer from client to prosecution team. In addition, knowledge management tools that maximize efficiency are designed for high-volume environments.
For large corporations filing responses to more than 500 Office Actions in a year, the time spent training teams and transitioning to a streamlined process is well worth the investment. This model can deliver cost-savings of over 1 million USD or more, depending on the volume.
Advantages of the attorney-drafter model
One of the most significant time and cost savings of this model is the increased efficiency for attorney time. This process requires much less attorney time in the OA response than in the traditional model when the attorney must perform the technical analysis and prepare the OA response.
For example, in a traditional model, an attorney takes X number of hours to write the complete OA response, including time for technical analysis. However, if the technical analysis is handled by the team of technical experts and the OA response drafters, the attorney’s time spent on each OA response is reduced to X minus Y hours, where Y hours is the time required for technical analysis. When the team of technical experts and OA response drafters spend these Y hours or even slightly more at costs much lower than those charged by the attorney, corporations can achieve significant cost savings.
The attorney-drafter model also provides an opportunity for patent drafters to implement knowledge management tools in the process of preparing the OA response. This not only automates the various steps of the OA response preparation, but also eliminates human errors. The knowledge management elements, such as the Examiner Statistics, information of target product, client preferences, and prosecution history across jurisdictions, all further improve efficiency and quality.
Finally, this model replaces the traditional system of spreading work between multiple law firms, allowing companies to consolidate work to fewer law firms. As described in our previous blog post, consolidating to fewer law firms results in greater visibility into the patent lifecycle. It enables attorneys to have more control on the overall patent portfolio. This improves the quality of individual OA responses and aligns the patent prosecution strategies with patent licensing strategies.
By breaking the OA response into these four steps, companies can economize the patent prosecution process, allowing attorneys to remain focused on the overall patent strategies critical to business success.
Just as Plato says, “All things will be produced in superior quantity and quality, and with greater ease, when each man works at a single occupation, in accordance with his natural gifts, and at the right moment, without meddling with anything else.”
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