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

July 16, 2019

About Derwent

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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 outcomesby turning patent information and analysisinto insights accessible to business

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

Derwent Services

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-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

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Brad LawrenceCantor, Colburn

Jeff WatersCantor, Colburn

Gene QuinnIPWatchdog, Inc.

Donato PasquarielloEricsson

Richard KolarDerwent

Description

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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.

EricssonPatent Prosecution Sourcing Models

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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

EricssonPatent Prosecution Sourcing Models

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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

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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 KolarRichard.Kolar@clarivate.com

https://clarivate.com/products/ip-administrative-services/