Approaches to Managing Patent Filing Costs

AuthorElizabeth Rodriguez - Sean Solberg
Anne Craig and Wesley D. Blakeslee1
Cost-effective patent prosecution is of critical importance for every university technology
transfer ofce (TTO). In these tight economic times, all processes and costs need to be
closely analyzed to identify strategies for meaningful reduction in operating costs. How-
ever, in the selection and management of patent counsel, these reductions in costs cannot
come at the expense of quality. Luckily, with creativity and careful assessment, TTOs can
reduce costs without compromising quality. This chapter offers two different programs
for engagement of patent practitioners to serve the needs of the university TTO.
In Part I, Anne Craig offers strategies, borne from experience, for shaping fee arrange-
ments with external patent counsel. In part II, Wesley Blakeslee shares his experience with
establishing an internal patent counsel group within the university setting.
I. Models for Fee Arrangements for Patent Filings
Every TTO understands that unreimbursed patent costs compose a staggering percentage
of the TTO overall budget. Yet the diversity and complexity of university innovations
complicate the task of controlling those costs. How can a TTO optimize the proper level
and scope of service with a realistic, often stringent, budget?
1. Anne Craig is the Director of Intellectual Property in the Ofce of Technology Development of Harvard
University. Wesley D. Blakeslee is the Executive Director of the Technology Transfer Ofce of Johns Hopkins Uni-
versity. This chapter reects the personal views and thoughts of Craig and Blaskeslee and is not to be construed
as representing in any way the views or advice of Harvard University or Johns Hopkins University, respectively.
The content is solely for purposes of discussion and illustration and is not to be considered legal advice.
Chapter 12
Approaches to Managing
Patent Filing Costs

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