Addressing patent creation backlogs
Chawton Innovation Services
October 2009
The cause of a backlog in a patent creation entity can vary greatly. In his latest white paper—Addressing challenges with backlog in a patent creation entity (reproduced below)—Donal O’Connell presents possible solutions for these challenges.
Introduction
This paper explores the issue of the backlog of work within the context of a patent creation entity. Any such backlog of work in a patent creation context needs to be properly examined and analyzed as a first step, as the root cause can vary greatly from one patent creation entity to another.
A backlog may occur at different stages in the patenting process. It may or may not be linked to a particular technology area, or it may be due to the skills and competencies, or lack of skills and competencies of some patent attorneys. It may be related to one particular group of inventors, or it may actually relate back to the legal requirements in some specific country for dealing with inventors and handling their inventions, or it may even be due to what is happening within a particular patent office.
Backlog with invention reports
A backlog with the handling of invention reports coming from the inventor community into the intellectual property (IP) Department can be gauged by answering these basic questions.
- How many inventions per month are you receiving?
- How many inventions can your IP department handle per month?
- What is the current number of inventions unhandled?
For example, you may start the year with 350 invention reports. You may estimate that you will receive 80 inventions per month based on the previous year's numbers. You may calculate that the average number of inventions being dealt with per month is 110. These are the numbers you need to understand and in simple terms if you have more inventions coming in than you can deal with on average per month, you have a backlog problem with invention reports.
There are some solutions which you can deploy to help you address this challenge.
1. Outsource prior art searching
For every US patent application filed today, fewer than half will issue as patents, down 30 per cent from less than a decade ago. It is therefore increasingly important to conduct prior art searching on your invention disclosures.
You may wish to approach external patent agencies, and they may charge anywhere between GBP400 and GBP1000 per case, although these numbers need to be sanity checked in the current economic climate. This can be expensive solution.
You may wish to use IP services providers in places such as India. They may or may not be Attorneys, but they are capable of doing good quality searches providing they have someone who is familiar with the technology. This is a more cost effective option.
A key issue to bear in mind with the cost of searching is where in the world the inventions are coming from. You may have to pay a reservation award for inventions coming from countries such as Finland, Germany, Denmark and Sweden where you cannot find prior art. Therefore searching for prior art can be cost effective, if only to avoid paying the reservation award. For complex cases the best alternative may be to just reserve the rights and pay the reservation fee but it does depend on the volume of such cases.
2. Get research and development input/let them self police
Even if you pay the reservation award and have the rights there will still be cases that you want to protect and file patent applications, but how do you find them.
One approach you may wish to use is to disclose your filing targets to this specific group of inventors and ask them to categorize the invention reports into three levels: A) high importance B) nice to have, C) probably not worth protecting. This works well for very advanced technologies where your specific inventors are world experts and you do not really have others in the company who can properly assess these inventions.
A prior art search is then done on category A cases and if these are considered patentable, you should go ahead and protect them. If filing target numbers allow, you then move onto category B inventions. For cases in category B and C which you do not want, you make a 'reject' decision (for inventors coming from the US and UK) citing lower commercial importance. It is possible that you defensively disclose these lower categorized inventions, saving patent filings only for the high scoring disclosures. However, if they come from a jurisdiction where a reservation award must be paid, you should pay the fee.
Both strategies require help either externally from patent agencies or IP services provides or internally from your own research and development experts. For complex chemical and pharma cases, option two may be the best.
I would therefore advise that the IP Department needs to understand who the key R&D Managers are, of those persons submitting ideas, and get their involvement in the process as decisions need to be respected. This self policing patent board or patent committee can then help reduce invention report backlogs as you focus on the cases they feel are most importance and you effectively drop the rest.
Provide R&D with access to patent searching databases so that they can access patent data and start to understand how novel/relevant their disclosures are. Take steps to create an IP savvy workforce.
3. Re-allocate work among your patent attorneys
You can simply re-divide the backlog work across your patent attorneys. This can work but you may find that it takes a lot longer and in the meantime you end up with your resources handling older cases, whereas it may be more important for them to look after at the newer cases, particularly if the technology is fast moving.
4. Focus on quality rather than quantity
Refocus your efforts on quality rather than quantity of invention disclosures, create metrics to measure quality disclosures and set quality rather than quantity targets. Reward inventors, not for the number of their disclosures but for the quality. Ensure R&D is considering the potential commercial strength and not just the technical strength of the disclosure and involve marketing and commercial groups in the rating or scoring.
Backlog at the patent board or patent committee stage
If there are backlog problems here, I can only assume it has something to do with the Business Managers, Technology Managers and technical experts, and their participation at such meetings being erratic. If so, can you get new members involved or at least have a number of people nominated so even if only a subset are in attendance, it is ok to proceed, and make decisions.
Some of the key questions to ask here are as follows …
- How often are patent board and patent committee meetings held?
- How many invention reports are reviewed at each meeting?
- How well attended are such meetings, and are properly informed decisions being taken there?
- How complete/user-friendly is the data presented at these meetings (often the data is confusing or incomplete and decisions are delayed)
- How are the invention disclosures prioritized: are they rated or scored?
- Are the teams aware of the implications/importance of this stage of the process for the business?
Backlog with drafting or first filings
Any backlogs or delays in this stage of the patenting process can be due to one of three issues.
1) External patent agencies
If the backlog is due to your external patent agencies, then either get them to improve their performance or change them.
2) Internal attorneys
Why is there a delay here? Is it due to overwork or rather, too much work for the available resource? If it varies from one internal Patent Attorney to another, then it may be due to skills and competency issues or the nature of the technology being handled by each patent attorney.
One option is to outsource some of the work to external patent agencies or IP services providers depending on the specific tasks causing the delays.
3) Responsiveness of your inventors
Incentivize the inventors so they are only rewarded once the application is filed and also try to elicit R&D involvement so that individual targets have some IP element included. This works best if R&D (or project teams) are in some way involved in budgeting for, or owning the costs for, their own IP.
Office Actions
If the backlog problem relates to Office Actions then any remedies here will depend upon whether the cases are handled internally within the company or externally by external patent agencies
There should not be difficulties with external patent agencies as they should be handling the cases promptly.
If the issue is with internal Patent Attorneys, then I assume it can only be a skills and competencies issue or a workload issue. If it is a workload issue, then your options are either to outsource some of the work or renew the portfolio by trimming for example. Trimming however depends very much upon the maturity of the portfolio.
Having a backlog in Office Actions is clearly a financial concern as it is more expensive to answer these late. Some advantages are also missed by being late.
Summary
To properly address problems with backlog or delays in a patent creation entity, the first step is to thoroughly evaluate and analyse the problem. Where in the process do you have the backlog, for example with inventions, patent board decision making, drafting or first filing or office actions. Secondly, you need to identify whether the backlog situation varies by technology, by Patent Attorney, by inventor group or by location. Thirdly, you need to understand the trend data. Is the problem static, getting better or getting worse. Once this is all known, then corrective actions need to be taken.
You may find that the backlog was caused when resource levels fell at some stage in the past or that the there has been an increase in the number of invention reports received.
You may have very rigid processes in place, and it may be that you need to bend your processes a little to allow for faster invention report handling. You may for example decide that not all inventions deserve to reach your patent board or patent committee stage as discussed above.
In order to address backlog with your patent creation entity, you may need to re-visit your working relationship with R&D Management and your inventor community and get them more involved in the process, perhaps moving from PUSH mode to PULL mode.
You will never reach a stage where there is no time delay between the stages in your patenting process and you have no cases in the pipeline. Patent Attorneys do need some time to reflect and contemplate on inventions, prepare properly for patent board or patent committee reviews, draft the claims correctly, file the cases with the Patent Offices and respond to office actions. I do not think it is a big problem if the cases sit a little bit longer in the pipeline, as a lot of issues are solved as time passes by and filings can be done more precisely, provided that is that somebody else did not file first.
I do realize that there are some issues with first to file in the world and first to invent in the US, where you have to show that you are constantly moving along in the patenting process. I understand that importance for being first in say the pharma industry, where a lot of money is often tied to a single patent. Rumours are the first-to-file provision may fall as the US patent system is overhauled, but then again strong interests defend it, so we will see.
When your backlog challenge has been addressed, it is most important not to just forget the problem and move onto the next issue. Metrics should be defined, agreed and implemented and regular data reports created so that you know precisely the efficiency and effectiveness of your patent creation entity every month going forward and so that you can react quickly if things go amiss again in the future.
About the author
Donal O'Connell is the Owner and Managing Director of Chawton Innovation Services Limited
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