Filing patent applications: how to optimize your operational workflows and overcome budgetary constraints

• English

The number of patent filings is continuously increasing, so are translations, administrative and prosecution costs associated with tedious formalities and unpredictable office actions. In 2016, over 3 million patent applications were filed worldwide, according to the World Intellectual Property Organization (World Intellectual Property Indicators 2017 - Patents).

On the other hand, many clients  of Dennemeyer & Associates – be it corporate IP departments or patent law firms – have clear objectives in terms of optimizing their filing and prosecution workflows. Often, patent applicants are also under pressure to obtain the best and broadest protection, in a timely manner and at the lowest possible cost. In recent times, national and regional patent offices have focused their efforts on the development of work-sharing tools to reduce unnecessary duplication of work and improve the efficiency of the global patent system. However, much remains to be done to help applicants overcome administrative impediments arising from the filing and prosecution stages.

Indeed, other means may be considered by patent applicants to reduce filing and prosecution costs – mainly resulting from translations, legalization and notarization of documents and high hourly rates of patent attorneys. Here is how Dennemeyer & Associates can intervene and offer cost-effective filing options without compromising on quality, especially when it comes to:

• Entering the national and regional phases of PCT applications;
• Filing patent applications at national and regional levels under the Paris Convention.

Benefit 1
Opt for a centralized and flexible approach, tailored to specific needs

Premier Service: streamlined filing and prosecution procedures
Working with a trusted and technically qualified patent attorney is paramount. Under the Premier Service, Dennemeyer handles filings and coordinates prosecution procedures in a centralized manner and multiple jurisdictions simultaneously. After fulfilling any filing requirements, securing the relevant formalities and paying the prescribed official fees, one of our patent attorneys will act as a single point of contact, thereby streamlining the communication workflows.

Benefit 2
Reduce the administrative burden by using standardized workflows

Our operational processes are implemented following the rules of conduct and quality standards governing the practice of patent attorneys. The bibliographical and patent application data provided in any filing instruction is reduced to the strict minimum (e.g., application number, designated jurisdictions). The operational process of the filing service aims at limiting the frequency of communications and minimizing paperwork burden. In a nutshell, our process is:

• Automated in our IP Management System (DIAMS iQ);
• Documented in our Quality Management System (ISO 9001:2015 certified);
• Integrated with other services and departments (e.g. annuities, recordal of changes).

Benefit 3
Ensure greater predictability over costs and technical expertise

We can work-share technical expertise, which may notably help patent applicants reduce escalating local agent fees and heavy administrative burden through direct reliance on our local offices in some of the most frequently designated jurisdictions (e.g., the United States of America, the European Patent Office, Germany, Japan, New Zealand, Australia, Russia, the Eurasian Patent Office, Brazil and South Africa).

At the filing stage, we strive to define a filing fee structure common for each of the jurisdictions mentioned above, thereby offering patent applicants reasonable pricing and greater budget predictability. When it comes to proceedings before the European Patent Office, we can extend our scope of action to the validation procedure of any granted European patents and pay the incumbent annuities.

Read more about our approach to Paris Convention filings and national/regional phase entries of PCT applications by downloading the white paper below.