how many patents to justify in-house?

Started by UVAgal4, 05-23-17 at 11:38 AM

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UVAgal4

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?

Tobmapsatonmi

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.
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bluerogue

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.
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

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.
Chris Whewell

www.patentsearcher.com

bluerogue

Quote from: ChrisWhewell on 05-24-17 at 06:47 PM
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. 
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

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 :)
Chris Whewell

www.patentsearcher.com



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