rethink(ip)

A rethinker's tip: Don't pay your patent attorney to record assignments

Posted by J Matthew Buchanan at April 18, 2005 11:28 AM

…or at least don’t pay them as much as you used to.

Here’s a rethinker’s tip that can really save money on the patent prosecution process, especially for mid-sized companies with growing portfolios.

The Patent and Trademark Office’s Electronic Patent Assignment System (EPAS) is, I think, a real hidden gem.  It stands in stark contrast to the fledgling system for filing patent applications electronically in that its easy, user-friendly, and completely web-based.  Surprisingly, not many patent attorneys are using it.

EPAS provides a tool to efficiently handle a small component of prosecution – recordation of assignments.  Incorporate EPAS into your attorney’s workflow, and you’ll save money.

Consider the “old way” of recording a patent assignment:

The patent attorney would prepare an assignment (a form agreement), send it to the client for execution by the inventor(s) (with a form letter), receive and review the executed assignment, file the assignment with a recordation cover sheet, send the client a form letter informing them that the assignment had been submitted for recordal, receive and review the recordation information from the patent office (often months later), and send the client a form letter with the recordation information (usually returning the original assignment).

There’s probably about 1.25 to 1.5 hours billed to the client for that service.  What did the client get for its money?  A series of form letters and information-shifting from the patent office to the client.  The attorney did not really add any legal expertise.

Here’s the rethinker’s way of recording a patent assignment:

Train the client to use EPAS.

This really makes sense for mid-sized businesses with growing patent portfolios.  If a company files 30 applications in a year and does all of its own EPAS filings, this produces a savings of about 45 hours of attorney time.  If you apply an average billing rate of $225/hour, that’s a savings of $9000/year.  What could you do with an extra $9000?  You could probably file another patent application (or two).  I’m betting that would make the business folks happy.

Just think of the savings that could be realized for companies that file 100 or more applications each and every year.

But what if you don’t have the resources (or willingness) to handle EPAS filings?  Well, now its time to see if your patent attorney is a rethinker.  Ask if they can follow this process for recording assignments:

Prepare a form assignment that can be customized for each and every application; have a paralegal review executed assignments, submit assignments for recordation through EPAS, and forward the recordation information once received (typically the next business day).

Using this approach, the amount of time spent by the attorney’s firm for recording each assignment drops to about 0.8 to 1.0 hours of paralegal time.  With 30 applications per year, a savings of about $6000 should be easy to attain.

EPAS offers the side benefit of faster processing by the patent office, too.  The EPAS system consistently provides recordation information in about a day.

No matter the approach you adopt, EPAS will save money.  Wouldn’t it be nice if your patent attorney suggested the use of EPAS?