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Case Study: Patent
Application
Drafting |
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Case Study: Office
Action
Responses |
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| case studies |
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Patent Application
Drafting |
Office Action Responses |
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Patent Application Drafting |
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The Challenge: 700 Patent Applications in Six Weeks
In August 2007, the USPTO announced radical
changes in the rules that apply to the filing of
patent applications in the United States. These new
Continuation Rules, considered by many to be the most
significant change in the patent system in many years,
were to severely constrain the ability of applicants
to develop patents on multiple inventions that reside
in the same patent family. They were scheduled to
become effective on November 1, 2007 and apply
retroactively to all pending patent applications.
GTC Law Group, a leading Boston-based law firm
specializing in IP strategy and business transactions,
was faced with the challenge of filing a large number
of continuation or continuation-in-part (CIP)
applications on behalf of their clients by October 31,
2007. With about six weeks until the deadline, GTC had
a very short period of time to build entirely new
patent families that were previously being reserved
for later execution. The firm needed to find an
immediate solution that could complete the
applications quickly without compromising GTC’s high
standards of quality.
IPEngine’s Solution: Trained Staff Ready,
Round-the-Clock Delivery
Intrigued by the opportunity to augment its staff
immediately with trained patent specialists at
cost-effective rates, GTC contracted with IPEngine to
support filing about 700 pending patent applications
over the six-week period. GTC and IPEngine worked
together to define a disciplined client engagement
process, standardized work processes, and work product
specifications and templates that were customized to
fit seamlessly into GTC’s existing patent workflow.
To support the project, IPEngine dedicated a team of
patent specialists with the right domain expertise and
a project leader, all based in New Delhi, India. They
also established a secure and high-capacity
data-exchange infrastructure for document storage and
transfer between IPEngine and GTC. The defined
processes allowed for a 24-hour workday, which
maximized output during the short window of
opportunity.
Benefits to Law Firm: Deadlines and Quality Levels
Met Cost Effectively
By working with IPEngine, GTC met the aggressive
deadline with 700 patent filings at the high level of
quality that they and their clients demand. The
rigorous processes that IPEngine established with GTC
for this specific engagement also institutionalized
the GTC approach – even though the new rules were
ultimately blocked by a federal court with a temporary
injunction. Going forward, GTC now has a ready staff
to cost effectively manage its spikes in patent
application workflow.
“With IPEngine’s expert patent specialist team, we
were able to respond effectively to this onerous
regulatory deadline,” said Charles Cella, founding
partner of GTC Law Group. “IPEngine produced
high-quality deliverables using a process-focused
approach. Rather than having to rely on a collection
of ad hoc resources, we were able to work with a
dedicated team through a single, professional contact.
We were able to respond well to all of our clients’
needs, with our partners free to focus their time on
strategic work.” |
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Office Action Responses |
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The Challenge: Prompt Reaction to Growing Flow of
Office Actions |
A New England-based IP law firm experienced tremendous
growth in 2004 through 2007, drafting and filing
hundreds of patent applications for an expanding
roster of clients. As the USPTO began to take action
on those applications, patent prosecution tasks began
to challenge the already fully utilized patent
specialists in the firm. This law firm needed to find
an immediate solution that would expand its patent
specialist capacity so it could respond to these
Office Actions expertly, on time and cost effectively.
With the firm’s partners focused on strategic client
work, the firm did not wish to initiate an aggressive
staffing effort – nor did it favor undertaking
additional load on the firm’s ongoing economics.
IPEngine’s Solution: Expert Patent Specialist Team
Ready to Go
The law firm contracted with IPEngine to help it
respond to its significant volume of Office Actions,
representing dozens per month. IPEngine dedicated a
patent specialist team with the right domain expertise
and a project leader, all based in New Delhi, India at
a significant cost discount from an internal resource
at the law firm. They jointly developed detailed
specifications for deliverables, combining the law
firm’s best practices with IPEngine’s disciplined and
rigorous processes.
A critical first step was for IPEngine and the firm to
formalize how the firm’s lawyers provided direction
for first draft office action responses. Then, as part
of the program, IPEngine reviewed the office actions
and cited prior art; summarized reasons for adverse
actions; summarized proposed approaches to response;
and, in response to direction from the firm’s lawyers,
drafted office action responses.
Benefits to Law Firm: Leverage to Grow, With
High-Quality, Cost-Effective Office Actions
By working with IPEngine, the law firm was able to
respond handily to the flow of Office Actions. The
work that IPEngine performed allowed the firm’s
lawyers in the US to focus on the higher value-add
work in the Office Action response. The
standardization of processes resulted in quick
turnaround of consistently high-quality deliverables
by IPEngine, enabling the firm to meet the USPTO
deadlines. As a cost-effective extension to the law
firm’s patent specialist staff, IPEngine provided the
leverage that allowed the firm to serve its clients
well without having to tackle the expensive and
distracting obstacles to growth, including recruiting,
training and retention of qualified staff. |
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