Outsourcing Patent Prosecution

Patent prosecution involves the cumbersome process of responding to office actions issued by the Patent Office. This involves the time consuming effort of having to review the prior art and drafting suitable responses to be filed within the prescribed deadline. Not only is this type of work substantially burdensome, it is not financially rewarding. The average cost of preparing and filing such responses, is less than $4000. The downfall of the U.S. market has not lightened the situation and U.S. attorneys are ethically forced to take on these unfulfilling cases.

The outsourcing of patent prosecution work to countries like India have allowed U.S. attorneys to concentrate of more satisfying aspects of patent work such as drafting and litigation and make a couple of thousand dollars on patent prosecution for hardly any work on their part. Highly trained engineers and attorneys located in India are immensely capable of drafting convincing responses to such office actions and have reduced the burden on the U.S. attorneys considerably. Many are of the view that the quality of the work produced in such countries is of a lower standard. However, like any other business, the value of the product is dependent on the company.

The choice of a specialist outsourcing company makes all the difference. For example, Unicita Consulting located in Bangalore, India specializes in patent prosecution. Employees of Unicita hold degrees from U.S. schools and universities. The patent engineers and attorneys in this company have attended seminars and conferences in the U.S. such as the “Patent Prosecution Boot Camp” by American Intellectual Property Law Association (AIPLA), “Drafting Winning Patents” by the Patent Resources Group, Alexandria, VA and “Complying with U.S. Export Controls” by U.S. Bureau of Industry and Security. Due to their specialty and training, Unicita produces a valued product for a minimal fee.

Outsourcing of patent office actions responses in this regard is mutually beneficial to all parties concerned. The U.S. firm frees up the in-house attorneys to focus on litigation and sourcing new clients, while the Indian firm provides a quality product ready to be submitted to the patent office. This method of business is vastly increasing amongst U.S. law firms as there are no disadvantages. As all information relating to the application is available on the U.S.PTO website on Public PAIR, the outsourcing of patent office action responses will involve any confidentiality issues. In any case, most legal outsourcing companies in India do not deal with the end client directly but correspond only with the U.S. law firm concerned. The outsourcing of patent office action responses thereby reduces costs and increases productivity and efficiency of the international assembly of IP professionals.