A number of articles have been published recently discussing “tricks” to save costs in your intellectual property portfolio by ensuring that your patent attorney takes the lowest cost option. The more cynical writers imply that patent attorneys deliberately ramp up their fees by not employing those “tricks”.
Anything which saves costs is worthwhile, especially when you’re involved in the costly process of establishing a business in export markets. But, these so called “tricks” are not so secret.
In fact, they are just our standard operating procedures built into our systems and attorney training. Thus when we do develop a drafting and filing strategy the “tricks” form a natural part of it. We don’t see much point in making a song and dance about these “tricks”.
So, in the interests of a fuller disclosure, here are some of the more common issues attorneys consider when minimising your costs.
There is no consistency amongst countries for the layout of a patent specification.
The format we use is largely the most accepted, but care still needs to be taken as below:
Take Europe as an example. Europe charges excess fees for every page in the specification after the 36th. There are also quite specific provisions about the font size and margins allowable for the patent specification. But, many patent applications enter Europe via the PCT process, which has different requirements for font size and margins. Therefore, simply filing a PCT format specification into Europe could potentially attract fees for containing more than 36 pages. But, adjusting font size and margins can produce a significant reduction in page numbers; this can reduce the total page count below 36 to reduce or eliminate excess fees.
2. Claims - general
Typically, prior to filing in a specific country, the patent application has gone through the PCT process and we have already got the claims into a shape that satisfies the PCT examiner. As discussed in previous articles, this not only helps our clients decide if the likely scope of patent protection is worth it, it also reduces on-going prosecution costs.
Nevertheless as individual countries have differing requirements; it is standard to review the claims on an individual basis before filing into a particular country – unless instructions come in urgently. This lets you adapt a specific patent application to account for country specific issues.
Things we consider include patentable subject matter, claim structure, claim numbers, and claim type. But what you should remember is that leaving this to the last minute will ramp up costs through leaving insufficient time to do a proper review and amendments.
3. Number of claims
Many countries charge significant fees if your application includes more than a set number of claims.
However, the amount of these fees, and the time at which they are calculated, varies from country to country. For instance, Australia only charges the fees once your application is accepted whereas Europe charges the fees at filing of the application in Europe. Therefore, if you know the process to secure protection in the countries relevant to your business, you can make an informed decision on how many claims your application should include.
However, simply reducing the number of claims in an application is not always worthwhile. The claims are the business end of a patent and define the scope of protection you will obtain for an invention. Therefore, if your application does not include a claim for a particular feature, then you may not capture a potentially infringing product. This is particularly relevant as many countries determine the liability for patent infringement from the date on which a particular claim is published. That may be problematic if you don’t include a claim to reduce your initial costs, yet that claim needs to be introduced later to secure a granted patent and capture a competitor’s product. Therefore, you may want to balance the competing factors of having all potential claims published to capture and deter competitors, yet minimise your filing costs.
This is just one reason why you and your attorney need to understand which are the most important features of the product or process. One option is to knowingly incur the additional official excess claim fees but craft specific claims to capture a potential infringing product. Then, you’re in a better position to negotiate with your competitor and will maximise the deterrent value of your pending patent. This is why you and your attorney need to understand the competitive landscape. In my opinion, paying the additional Euro 235 on official fees to specifically capture a competitor’s product is good value for money, compared to the cost of several years delay and lost damages for patent infringement.
I can say that I haven’t filed a European application with more than 15 claims due to the significant official fees that are incurred for doing so. But, the point is, that we’ve considered this, in light of relevant commercial factors for our clients.
4. Claim structure
Many jurisdictions allow you to structure claims in a way that will potentially reduce your fees without affecting the scope of your protection. For instance, Europe allows claims to include alternatives or “preferred embodiments”. This does not however reduce the scope of the claim to the specifics listed, provided that you do this in the right way. What is possible is that claims for a preferred or alternative feature of an invention can be combined into a claim. An example of suitable wording is:
‘A widget for doing something really cool, including feature X, and wherein X is preferably selected from the list of W, Y, Z.’
Here what may have been three claims have been combined into a single claim. Applying this strategy across all of the claims in your application can potentially reduce the total number of claims significantly. Therefore you can save costs without affecting the scope of your protection.
Ideally we prefer not to do this (and still keep under the claim limit) as it can lead to messy prosecution and infringement arguments. But, if you consider the issue then you can make an informed decision.
5. Patent prosecution highways
There have been recent developments and systems to reduce double handling by patent offices and provide costs savings to applicants. One of the more prominent developments are systems where examination by one patent office forms the basis for examination by another office. These are called ‘Patent Prosecution Highways’.
In fact, many of the major patent offices around the world are now offering collaborative examination procedures. These provide a significant opportunity for applicants to streamline their patent portfolios. As a result, these Patent Prosecution Highways are an excellent opportunity.
However, to utilise these Prosecution highways you need to be aware of the different applications in a portfolio. In addition, the claims of the respective applications need to be strategically aligned. This is easier said than done. Therefore, it is worthwhile having someone up to speed with all of the rights in a given patent family.
6. Project managers
A large part of my practice involves managing applications for my clients in several countries at once. Therefore, we’re familiar with all of the documents raised by the various examiners and reasons for making specific changes. We can also quickly adapt across a portfolio to any changes that may be necessary.
This approach also provides a strong understanding of the reasons for any changes which need to be made to a patent application. This can include a deep understanding of businesses’ goals, structure, objectives, competitors, and path to market. The good thing about this approach is that there is no need to constantly teach a new lawyer in a foreign country about these issues. They are seamlessly incorporated into any new work. I prefer to think about this role as a project manager. We don’t do the work in a specific country, but we do know the best people to get it done, at the right price, and on time.
There is also significant value in having one person up to speed with your entire portfolio. That enables you to efficiently react to any changes necessary and to apply those changes across the rest of the portfolio. This is particularly beneficial where you have several related applications in different counties and need to amend the claims to address a new cited document or want to target a competitor.
Of course you can handle that function in house but that brings with it its own problems. You will need to develop a robust reminder system to monitor deadlines and renewals. Without those systems you’re setting yourself up to fail and putting your rights at risk. Why would you take that risk if intellectual property rights are an important aspect of your business strategy?
In addition, taking on the responsibility for managing overseas lawyers will be a significant distraction. It will require staff to learn a new skill set and take them away from their primary role. That extra stress and distraction is an opportunity cost for your team. It is a better option to keep your team focused on their core roles and bring in external expertise when needed.
The above tactics are all useful in balancing costs while still obtaining cost effective protection for your intellectual property rights. However, the intellectual property landscape is evolving quickly. There are constant changes to the laws in different countries, and those can affect which avenue is best suited to your business. You are best to work with someone who is up to date with those changes and can help you develop the most relevant IP Strategy based on current law.
Regardless, there are lots of options to help you maximise the value of your intellectual property spend.