The Expensive Lifecycle of an Innovation Adam Wylie, IP Services Managing Director, IP Pragmatics Ltd

Abstract

Setting patent budgets is a notoriously difficult and imprecise activity, yet one that corporate IP departments have to do, typically at least on an annual basis. Firms of patent attorneys are increasingly asked by their clients to forecast patent spend, and provide budgets to their clients. Some forward thinking patent firms are proactively offering such forecasting as part of their basic client management offering.

This talk proposes to outline the major factors that affect the costs associated with filing, prosecuting and maintaining a patent through its (typically) 20 year life

It will consider the different cost factors that affect patent costs; these include but are not limited to:

1. Length of specification
2. Number of Claims
3. Translation requirements
4. Unity of Inventions

The talk will model the cost of pursing different filing strategies and different filing programs, e.g.

1. US only
2. US, EPO with limited validation (3 states), JP
3. US or UK priority application, PCT, US, EP (5 states) JP, KR, TW, CN
4. Top 20 GDP countries + all EP states

These different filing programs have particular relevance to industry specific sectors and this will be addressed. The different whole life costs of patents following these different filing strategies will be modeled.

The world's patent and trademark offices (PTO's) are in a constant state of flux in response to workload and changing and complex legal processes. Planning when the major costs associated with prosecution and grant will occur is difficult.

In the talk, the different timings trends of the world's major PTOs - US, EPO, JP, CN, (more countries can be added in if desired), will be compared. This is designed to illustrate the difficulties involved in setting patent budgets and offer some indicators and solutions.

The modeling of patent costs over the timeline will be carried out on the NetsPat system (www.netspat.com).

Speaker Biography

Adam joined IP Pragmatics in 2005 as a director. He started his career in sales and marketing with one of the USA's largest telecommunications companies rising to a national and key accounts position selling consultative services to Fortune 100 companies. Returning to the UK in 2000, he entered the Intellectual Property profession and worked for two private practice attorney firms in business development roles. At IP Pragmatics, he has overseen the redevelopment of NetsPat, the software as a service (SaaS) IP cost forecasting tool and the growth in IP Pragmatics other service activities. Adam holds a B.A from University College London.