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Patent Audits - Issues from One Company'a Audit
Consider a $4 billion company we audited recently. The president had no idea of 78 recent patent applications that 20% had been rejected 4 or more times and 5% had been rejected more than 6 times.
Whether his attorneys or the Patent Office examiners were right is har to tell, but it was costing him fortune. He had no idea that 10% of their applications had been abandoned prior to an examiner reviewing them. This happened simply by his attorneys (in house and outside) failing to respond to Patent Office information requests, not due to rejections.
Had we started the audit sooner these would not have gone abandoned.
Applications identified as being critical to a new engineering development were abandoned this way. As several of these applications were over 100 pages, the considerable legal expenses spent preparing these applications was lost.
The president also had no idea that of 24 patent applications related to a new product, only two had been granted and the others had been rejected multiple times or abandoned.
However, competitors had been granted virtually every patent application they applied for in the same field. The result is a new product line that is in jeopardy.
How would you respond if you found out that more than eight different attorneys in 3 different law firms were used to prepare and respond to the Patent Office for the same patent application? Yes we have also found this as well. Of course this is not a "best practice" for any company to follow.
The audit revealed that the claims of two applications were originally written to protect a new product line. However, the claims were extensively modified after being rejected by the examiners multiple times. The patents that were granted no longer protected any product the company made or would ever make. Getting these two patents was not a success; it had been as waste of effort.
Is it time for you to get a patent audit? Of course you can put it off, but doesn’t it seem reasonable that at least once a decade you might be curious about the investment you have made in patents?
There are two best ways to learn more about this service:
To order an audit:
We look forward to assisting you with your patent work.
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