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Transcript of Patent Prosecution Sourcing Models 7/16/2019 ¢  Derwent Services 3-Primary...

  • Patent Prosecution Sourcing Models - Best Practices for Driving Quality Patents on Strategy and Budget

    July 16, 2019

  • About Derwent


    We support the innovation lifecycle with expertise, authoritative patent search and analytics solutions

    We reduce the cost of securing and monetizing patent rights through an integrated IP solutions ecosystem

    We help drive better commercial outcomes by turning patent information and analysis into insights accessible to business

    Innovate with Intelligence Derwent connects exclusive curated patent data, authoritative research applications, and expert patent services to support the commercial success of the world’s innovators.

  • Derwent Services


    -Primary Docketing

    -Secondary Docketing

    -Backlog Docketing

    -Document Preparation

    -IDS Management

    -Patent Proofreading

    -Portfolio Intake & Transfers

    -Data Validation

    -Backlog Processing

    -Novelty/Prior Art

    -Freedom to Operate

    -Validity & Invalidity

    -Office actions

    -Patent applications

    -Multi data check points

    Docketing Solutions

    Paralegal Support

    Special Projects

    Patent Research

    Prep and Prosecution

    Solutions that help support patent prosecution and workflows

  • Speakers


    Brad Lawrence Cantor, Colburn

    Jeff Waters Cantor, Colburn

    Gene Quinn IPWatchdog, Inc.

    Donato Pasquariello Ericsson

    Richard Kolar Derwent

  • Description


    Maintaining patent quality is more important than ever, as the Federal Circuit continues to expect greater detail in patent applications and care to ensure the heart of the invention is represented in the claims.

    Rising costs to maintain patents worldwide continue to force law firms and corporations to seek sources and methods of keeping costs down without allowing quality to suffer.

    Sometimes it makes sense to outsource certain work to outside firms that can provide more competitive pricing, while insourcing other work of greater strategic importance and value. Navigating these waters is not easy but assigning team members based on the value of the contribution that can be made to the project saves money without affecting quality.

    Today we will talk about the various patent prosecution sourcing models available today, their strengths and weaknesses, and how a thoughtful, coordinated approach to preparation and prosecution of patent applications can stretch budgets without reducing quality.

  • Ericsson Patent Prosecution Sourcing Models


    Leading the way and Ericsson’s 5G leadership

    Ericsson is the top contributor to all cellular standards in the mobile telecom ecosystem.

    • Since 1999, Ericsson has made approximately 50,000 contributions to 3GPP to develop 2G, 3G, 4G and 5G. That’s 15,000 more than any other single company

    • We have over 100 signed licensing deals, demonstrating fair treatment of our customers.

    • With more than 49,000 granted patents, our portfolio is one of the strongest in the industry.

    • In March 2017, we articulated our 5G licensing conditions for handsets

  • Ericsson Patent Prosecution Sourcing Models


    This is Ericsson and Intellectual Property Rights

    • We are running on patent outsourcing program where we outsource patent portfolios

    • Our patent portfolios have a global coverage

    • Suppliers need to adapt their ways-of-working to be able to handle an outsourced patent portfolio

    “The ideal supplier for our outsourcing program provides a one-stop prosecution boutique that can prosecute patent applications globally.”

    Donato Pasquariello

  • Cantor Colburn Patent Prosecution Sourcing Models


    Prosecution Management Models

    • Client receives PTO correspondence and manages docket, sends desired work to firm on action/action basis.

    • Firm receives PTO correspondence and manages docket, provides notifications and drafts to client based upon client guidelines.

    • Similar choice for managing foreign prosecution.

    Prosecution Billing Models

    • Traditional hourly billing • Fixed fee arrangements:

    • Flat fee per action • Flat fee per round of prosecution • Flat fee for lifecycle of prosecution • Foreign or US only

    • Best practice is to ensure align billing model with IP strategy of client

  • © 2019 Clarivate Analytics

    Richard Kolar