Comments on: Seven Ideas for Reducing Foreign Filing Costs http://www.ipwatchdog.com/2009/07/14/seven-ideas-for-reducing-foreign-filing-costs/id=4566/ Patents, Patent Applications, Patent Law Tue, 09 Feb 2010 15:16:23 +0000 http://wordpress.org/?v=2.9 hourly 1 By: ian http://www.ipwatchdog.com/2009/07/14/seven-ideas-for-reducing-foreign-filing-costs/id=4566/#comment-7540 ian Thu, 16 Jul 2009 15:15:57 +0000 http://www.ipwatchdog.com/?p=4566#comment-7540 A further very important and much over looked point - make sure your application is in a fit state for both the US and Europe. Europe requires a higher level of disclosure of how the invention is carried out. Leave it out and you face a lack of disclosure (Art 83) objection. To add insult to injury, Art 123(2) will insure that you can't remedy the problem. A further very important and much over looked point – make sure your application is in a fit state for both the US and Europe. Europe requires a higher level of disclosure of how the invention is carried out. Leave it out and you face a lack of disclosure (Art 83) objection. To add insult to injury, Art 123(2) will insure that you can’t remedy the problem.

]]> By: Paul F. Morgan http://www.ipwatchdog.com/2009/07/14/seven-ideas-for-reducing-foreign-filing-costs/id=4566/#comment-7534 Paul F. Morgan Wed, 15 Jul 2009 15:17:10 +0000 http://www.ipwatchdog.com/?p=4566#comment-7534 Rule 8. ? If not prohibited by a license that is exclusive, or otherwise, consider filing a "License of Right" for older European patents to save large amounts of money on their maintenance fees [with very low odds of anyone exercising it]. [In addition to conducting regular reviews for alternatively simply abandoning older foreign patents no longer of enough value to justify their high maintenence fees.] Also, some companies are, in fact, doing more outsourcing [rather than in-house] prep and prosecution, after considering fully factored costs [employee benefits, secretaries, office space, and other overhead, plus the effect on some individuals of less intense billing pressures in-house.] That outsourcing unfortunately can have some adverse effects on patent quality, including unfamiliarity of new outside counsel attorneys with the company technologies, inventors, products and prior art. Rule 8. ? If not prohibited by a license that is exclusive, or otherwise, consider filing a “License of Right” for older European patents to save large amounts of money on their maintenance fees [with very low odds of anyone exercising it]. [In addition to conducting regular reviews for alternatively simply abandoning older foreign patents no longer of enough value to justify their high maintenence fees.]

Also, some companies are, in fact, doing more outsourcing [rather than in-house] prep and prosecution, after considering fully factored costs [employee benefits, secretaries, office space, and other overhead, plus the effect on some individuals of less intense billing pressures in-house.] That outsourcing unfortunately can have some adverse effects on patent quality, including unfamiliarity of new outside counsel attorneys with the company technologies, inventors, products and prior art.

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