Intellectual Property Forum The Intellectual Property Forum

Please login or register.

Login with username, password and session length
Advanced search  

News:

We are looking for moderators.  Message the admin if interested.

Author Topic: how many patents to justify in-house?  (Read 797 times)

UVAgal4

  • Senior Member
  • ****
  • Posts: 336
    • View Profile
how many patents to justify in-house?
« on: 05-23-17 at 03:38 am »

Looking to switch to industry and I have identified some companies that have some applications, handled by outside firms, that I would be interested in handling in-house (drafting, prosecution, licensing, etc). Just wondering in general how many new applications per year would justify for a company to have an in-house person (of course, it dépends on complexity, number of extensions, etc. but just a rough estimate). 10 new applications per year?
Logged

Tobmapsatonmi

  • Lead Member
  • *****
  • Posts: 895
    • View Profile
Re: how many patents to justify in-house?
« Reply #1 on: 05-23-17 at 11:01 pm »

Hi, answer of course is the dreaded 'depends'.  But 10 is definitely in the right ballpark.   I've  seen 4 where they expected the new guy to be juggling lots of other stuff (heavy load of agreements, FTO analyses, etc) to 18-20 where they just wanted invention mining and pure prep/pros.
Logged

bluerogue

  • Senior Member
  • ****
  • Posts: 194
    • View Profile
Re: how many patents to justify in-house?
« Reply #2 on: 05-24-17 at 12:38 am »

Texas Instruments used to be 30 apps/year about 10 years ago when they still had a big department.  That seemed to be a consensus # from some of my friends who have gone in house elsewhere if all you're doing is prep/pros.  If you're doing other stuff, in addition to prep/pros that number goes down accordingly.
Logged
The views expressed are my own and do not represent those of the USPTO. I am also not your lawyer nor providing legal advice.

ChrisWhewell

  • Lead Member
  • *****
  • Posts: 856
    • View Profile
    • Searches, spec writing, prosecution & other deeds.
    • Email
Re: how many patents to justify in-house?
« Reply #3 on: 05-24-17 at 10:47 am »

Writing two dozen cases a year isn't that hard.  So, multiply 24 by the cost per case if isent out to a firm.  At $10k total per patent, thats a quarter mil which should be enough to provide the worker a decent salary while leaving some remaining for the co.
Logged
Chris Whewell
www.patentsearcher.com
Notice:   NOTHING IN THIS MESSAGE SHALL BE CONSTRUED AS LEGAL ADVICE.  NO REPRESENTATIONS OR WARRANTIES ARE MADE WITH RESPECT TO ANY OF THE INFORMATION CONTAINED IN THIS MESSAGE AND PARTICULARLY IN REFERENCE TO ITS ACCURACY OR SUITABILITY FOR ANY PURPOSE.

bluerogue

  • Senior Member
  • ****
  • Posts: 194
    • View Profile
Re: how many patents to justify in-house?
« Reply #4 on: 05-24-17 at 11:04 am »

Writing two dozen cases a year isn't that hard.  So, multiply 24 by the cost per case if isent out to a firm.  At $10k total per patent, thats a quarter mil which should be enough to provide the worker a decent salary while leaving some remaining for the co.

Isn't quite that easy.  It's prep and pros. You are responsible for responding to OAs of cases you write and other OAs for cases that are from lawyers on vacation, left the company, etc.  The general expectation is about 1 week per new case to draft an app.  The other 22 weeks are for vacation, sick, and responding to OAs and potentially some other minor stuff.  From what I remember, in house was around 200 total comp for a position like this.  Also, don't forget your overhead. It's more like you save the company 500k, and your comp+overhead = about 300-350.  That's the math from a company's perspective. 
Logged
The views expressed are my own and do not represent those of the USPTO. I am also not your lawyer nor providing legal advice.

ChrisWhewell

  • Lead Member
  • *****
  • Posts: 856
    • View Profile
    • Searches, spec writing, prosecution & other deeds.
    • Email
Re: how many patents to justify in-house?
« Reply #5 on: 05-30-17 at 02:09 pm »

ok, then lets not also neglect inventor education, sitting in on business division meetings, drafting / negotiating NDA's and CRADA', travel for M&A work, authorizing invoices.  I should have mentioned the pros work, but didn't think I needed to - justifying an in-house person can be justified using spec writing alone was my main point :)
Logged
Chris Whewell
www.patentsearcher.com
Notice:   NOTHING IN THIS MESSAGE SHALL BE CONSTRUED AS LEGAL ADVICE.  NO REPRESENTATIONS OR WARRANTIES ARE MADE WITH RESPECT TO ANY OF THE INFORMATION CONTAINED IN THIS MESSAGE AND PARTICULARLY IN REFERENCE TO ITS ACCURACY OR SUITABILITY FOR ANY PURPOSE.
 



Footer

www.intelproplaw.com

Terms of Use
Feel free to contact us:
Sorry, spam is killing us.

iKnight Technologies Inc.

www.intelproplaw.com

Page created in 0.105 seconds with 20 queries.