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Maximizing Your Patent Prosecution Dollars: A Few Simple Considerations

By Benjamin Hershkowitz

According to the statistics released by the USPTO (available online at www.uspto.gov/web/offices/ac/ido/oeip/taf/reports.htm), approximately 326,508 utility patent applications were filed in 2001 in the United States and 166,045 utility patents were granted. The cost associated with the preparation and prosecution of patent applications last year was a multi-billion dollar business. In this era of cost controls, it is rare to find a patent prosecution department that is not subject to budgetary constraints. In-house patent counsel, as the gatekeepers for prosecution, need to select and work with outside patent counsel to maximize the return on their patent prosecution investment. Often, this is accomplished by in-house counsel searching for the lowest-cost provider to prepare and file a patent application. The logic behind using such providers is to maximize the number of patent filings for the money spent. However, this approach may provide neither the best return on investment nor the best results.

A company's objective in filing patent applications is to secure patents that provide the broadest available protection. The reasons to obtain patents are multifold and may include protection of the company's products and services by excluding others from a particular market space, setting up a licensing program, meeting cross-licensing obligations for number of patents obtained, or creating a defensive tool in the event the company is sued for patent infringement. Regardless of the reason, the focus should be on obtaining the most coverage possible through well-drafted patent applications for your limited budget.

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