Legal Question in Intellectual Property in California

Out-sourcing for patent application help

I want to find out if patent preparation can be out-sourced. The work of prior art search, preparing patent application, diagrams etc. can be out-sourced. The objective is to do 80 % of the work in an out-sourced modelat 20 % of the cost.

Is it a viable option ? Do patent lawyers do this as their standard practice ?


Asked on 5/17/06, 8:58 pm

1 Answer from Attorneys

Jeff Lambert Attorney at Law

Re: Out-sourcing for patent application help

The answer to your question depends upon your intended use of the term "out source." A patent attorney will typically subscribe to an electronic data repository from which a search of relevant prior art may be conducted. Additionally, he/she may engage the services of a diagram artist to prepare related drawings. Technically, this could be viewed as "out-sourcing." However, the analysis of the prior art search results, the preparation of the patent application, and review of the drawings for accuracy are all usually reviewed by the patent attorney with the client before any first application is submitted to the U.S. Patent Office. The client is paying good money to the patent attorney in exchange for the legal expertise the attorney hopefully brings to this analysis phase. By way of analogy, on a much simpler scale, there are instances where lay persons file their own federal trademark applications. While the process is fairly intuitive from a procedural standpoint, an experienced trademark attorney is usually able to provide greater value to the process based on his/her knowledge of trademark law, which may ultimately prove crucial. Many lay people that file their own trademark applications often miss some of the more subtle or esoteric issues that can later have a significant impact on their ability to obtain and/or enforce that trademark as against an opposing user/applicant. A skilled trademark attorney is usually able to spot these issues on a pre-filing basis, and can usually counsel the client in a way that may avoid many of the potential pitfalls that the client often would not see on their own. (E.g. proper performance and analysis of pre-filing trademark availability searches, proper classification of associated goods and services use or intended use, etc.)

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Answered on 5/17/06, 9:25 pm

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