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   starting an in house patent department
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   Author  Topic: starting an in house patent department  (Read 688 times)
starting an in house patent department
« on: Apr 23rd, 2006, 11:23pm »
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I am about to start managing internally the IP of a company which aims to file ~ 10 patent applications a year while it already has a portfolio ~40 patents.
Currently all the IP related work of this company is handled externally.
I am interested to hear opinions regarding what is the best and most efficient mode of handling the workload of such a company?  In other words, what is the recommended balance between tasks handled internally and externally?
I would be happy to learn also of articles which deal with this issue.
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Re: starting an in house patent department
« Reply #1 on: Jul 23rd, 2006, 10:53pm »
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Josh, to begin with we have an internal in-house patent department.  
however, before you get an impression that we draft patent, we basically work as formalities. We instruct agents, in the UK or their respective patent agents in India, Japan, GCC et al, to file for us.
Currently we are comfortable with this set up. However, we sit with the patent agents before the filing of claims and duly instruct them at various stages of the filing.
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Bill Richards
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Re: starting an in house patent department
« Reply #2 on: Jul 24th, 2006, 4:19am »
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Until recently, I was in-house IP counsel for a large R&D organization.  We had a manager who was mostly involved in strategic issues, two attorneys who did a mix of TM, CR, licensing, client counseling, etc. with minimal prep & pros.  The bulk of their apps were sent outside.  One other attorney did mostly prep & pros.  And, there was one attorney who did a mix.  Contact me off-line if you'd like to know more.
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William B. Richards, P.E.
The Richards Law Firm
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