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Frustrated In-House Patent Counsel?

September 01, 2020

Posted in Uncategorized

Frustrated In-House Patent Counsel — Howell, MI — The Patent Baron

Are you struggling to manage a patent portfolio? I know – I’ve been there, done that.

I can say that because I have a unique experience. I’ve been both inside and outside patent counsel. I started as a patent attorney at one of the largest IP boutiques in the country based in Washington, DC. I prosecuted patent applications and worked with outside counsel for multinational corporations. Later, I brought my experience to help Amway with its growing wireless charging patent portfolio. Now I am Of Counsel with Remenick PLLC in Washington, DC (

When I was at Amway, I grew and managed its portfolio of over 1,200 patents and patent applications worldwide. Amway had been filing applications in many countries, often based on their presence in those countries. However, that strategy led to a growing problem.

File Everywhere? – With Exponential Costs!

Those choices were made logically but quickly it became apparent that a bigger problem was coming home to roost. Filing patent applications globally has initial expenses, but those expenses grow exponentially in a short time. As you probably know, there are costs down the road that vary but add up – and quickly! Plus, those costs don’t often give the desired result – a granted patent, at least not in the short term.

Snowball Effect

As you can see and have probably experienced, the costs of ongoing applications plus new applications can and did in my case escalate rapidly. This is an unsustainable situation. What seemed like a good decision 2 years ago suddenly felt less so. Every in-house patent counsel (or general counsel tasked with patents) has a budget. New technologies coming from your R&D certainly warrant review and consideration for patent applications. You don’t want to tie up a large portion of your patent budget on patents that have little value today (or tomorrow). I dealt with these issues on a daily basis at Amway. It is not always easy to decide to abandon or curtail a patent application – particularly if it is a pet project of someone in R&D, for example. However, my knowledge of the big picture was critical in explaining the situation with softening statements.

Getting the Big Picture and the Long-Range View

How to solve this problem? One part of the solution involves working closely with the internal business units, their management, and their engineers and scientists to understand the big picture. What seemed like a great innovation 2 years ago now seems to be not where patent investment should be made. In some countries, those applications were abandoned and in others, where competitors were or appeared likely, or for large markets, those applications were continued (but in other cases, those too were abandoned).

It may seem like abandoning an application is a failure – but mortgaging the future patent budget by throwing good money after bad is even more of a failure. That’s one of the many things I learned as an in-house patent counsel – and I can help you as well.

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