European patent attorney costs

[Sevrz]

Our company has filed a patent with the EPO. The patent file is managed by our US patent attorney, who then instructs the European attorney. We are exploring whether it would be more cost effective to drop the US attorney and simply deal directly with the European attorney. We have the resources in-house to do the administrative stuff like docketing, paying annuities, etc., and really just need a lawyer to draft replies to office actions and deal with other substantive matters.

What would you recommend - one lawyer or both? Cost savings are a priority. However, I was told that European patent attorney charge a lot more than US attorneys and that therefore it makes financial sense to have a US attorney do as much of the legal work as possible. Is this the case?

I appreciate your comments.

[JimIvey]

Well, it depends....  (as does everything in this business).

Administratively, yes, it's more cost-effective to manage the foreign firms directly without using your US firm.

However, oftentimes, the rejections from the foreign patent office will mirror nearly exactly the parent's (US case's) rejections.  You might not recognize that fact if (i) you're not intimately familiar with the substance of rejections of the same application around the world or (ii) haven't spent some time trying to understand the particular language used by various patent offices and how it relates to US patent law.  Most of the world has very similar patent laws/rules, but phrase it differently.  It helps to be fluent in at least one patent system to match the "challenged," or just non-American, English to issues in related cases.

The end result of all that is that, sometimes, I can just send a copy of what I've already filed in the US to a foreign associate, in soft copy, and ask them to adapt it to their laws/rules.  That can sometimes more than compensate for the administrative savings you might see in bringing things in house.

There's also the logistical issue of cross-citing rejections and cited art among all the jurisdictions that have a duty of candor like that in the US (which is pretty much everywhere now -- wasn't always that way).  That's a big job and not one you want to mess up.

Regards.

[bartmans]

It also works that way the other way around:
my clients ask me (as a European patent attorney) to guide their application for filing an prosecution in 'overseas' countries, such as China, Japan, Australia, Canada and of course also the USA.

That is done mainly for the benefits that JimIvey has mentioned: that many patent offices have the same sort of rejections and that you can use facts and arguments from responses in one country in responses for another country.

Only when you manage the patent portfolio from your own firm (and basically use your US attorney as a representative - read serving-hatch - for filing the responses you have written) it could be financially worthwhile to correspond directly with foreign agents.

[10YearReg]

I agree with J-I's point.

The key question is - who's preparing replies to the Office Actions?

If you are doing that in-house, and then having the U.S. attorney touch it up for filing, then by all means go direct to the EPO and cut out the U.S. attorney.

As a related issue, please be advised that things you say in prosecution overseas can affect U.S. cases.  Specifically, there have been cases where admissions in other offices have been used for claim construction purposes in the U.S..  Mixing attorneys increased the chance of this happening.

JimIvey wrote:
"There's also the logistical issue of cross-citing rejections and cited art among all the jurisdictions that have a duty of candor like that in the US (which is pretty much everywhere now . . . ."

Where, other than the U.S. is there an obligation to cite anything?

I think Israel has that requirement.  I can't think of any other country that requires anything more than submitting the ISR.

[JimIvey]

Where, other than the U.S. is there an obligation to cite anything?

India, I believe. 

I think Europe and China have similar requirements.

I asked around a while back and it seemed more were like the US than not on this issue.

The only place where I knew (on counsel's advice) that candor was not required was Japan, and that was a long time ago.  They may have changed by now.  At the time, I believe Japan relied on 3rd-party opposition to serve the general function of a duty of candor.

Regards.

[10YearReg]

Jim - just an FYI - my understanding is that there is no current disclosure requirements in either the EPO or China.  I have about 20-30 cases in each country.  EPO requires nothing if you come in out of the PCT - they have the ISR, and same for China.

If that's not true, my associates "have a lot of 'splainin to do!"

[Alexia Minnie]

Once a patent is granted, European patent renewal fees are no longer payable, but renewal fees are payable to the national authorities in each of the designated states.

[Laurence]

Jim - just an FYI - my understanding is that there is no current disclosure requirements in either the EPO or China.  I have about 20-30 cases in each country.  EPO requires nothing if you come in out of the PCT - they have the ISR, and same for China.

If that's not true, my associates "have a lot of 'splainin to do!"

Actually, Article 36 of the Chinese patent law does impose a disclosure requirement at the time of requesting substantive examination.  Bearing in mind that under Chinese patent practice, a literal interpretation of the law is typically applied, if prior art material to the invention arises after filing a request for substantive examination, it is arguable as to whether you need to then submit the prior art.

There is also a requirement to file known prior art upon specific direction from the Chinese Patent Office, however, this hardly ever happens.

[vman11]

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Re: European patent attorney costs
« Reply #4 on: 12-24-08 at 05:31 pm »
   
Quote from: 10YearReg on 12-24-08 at 03:07 pm
Where, other than the U.S. is there an obligation to cite anything?

India, I believe.

I think Europe and China have similar requirements.

I asked around a while back and it seemed more were like the US than not on this issue.

The only place where I knew (on counsel's advice) that candor was not required was Japan, and that was a long time ago.  They may have changed by now.  At the time, I believe Japan relied on 3rd-party opposition to serve the general function of a duty of candor.

Regards.

Jim,

I was informed (this is first hand) by a member of the Board of Appeals in the Korean Patent Office quite recently that Japan does have a rule requiring duty of disclosure 'like the US'. I do not know the bounds of this requirement, he could have very well erred too.

Korea does not have a duty to disclose in case you were wondering. Australia I understand used to have a requirement to disclose, but doesn't any more is my understanding.

[vman11]

I don't represent these guys, know them, or know that this information is accurate. Nonetheless, for all its worth:

http://www.keisenassociates.com/IP%20News%20Flash-%20IDS.htm

[JimIvey]

Thanks for the updates.  My typical practice is to periodically ask foreign counsel if they need that sort of information.  That's the most direct way to determine if the law in their jurisdiction has changed recently.  Like I've said many times, it's hard enough to learn the patent laws of just one jurisdiction (2 if you count the PCT).

Regards.