How Patent Prosecution Outsourcing Can Help Both Corporates And Law Firms

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Patent prosecution is the first step in legally securing your Intellectual Property. It is the process of drafting, filing, and negotiating with the U.S. Patent and Trademark Office (USPTO) to obtain patent protection for an idea, design, invention, or plant. It entails preparing all the paperwork and documentation as mandated by the USPTO to apply for patents. This work usually falls under the purview of patent lawyers who handle all the requirements from filing to dealing with office action communications during the course of the application progression. 

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The Process of Patent Prosecution 

Patent prosecution is a complicated and lengthy process that may take up to four years if the patent is granted. It begins by filling out the patent application, drafting claims and specifications according to the technical language acceptable at the USPTO, attaching patent drawings made per the strict specifications, and submitting the fee. Thereafter the application may take 1-2 years to reach the examiner. Once there, the examiner will study the claims and notify the applicant in case of any inadequacies. This will involve responding to the Office Action with suitable replies. 

At every stage of the patent prosecution process, several options and routes are available to protect the company’s interests. Only a qualified patent lawyer understands these and can simplify and expedite the long patent process for firms.  

Corporates and Patent Prosecution 

Businesses are where ideas and innovations are born. To stay competitive and protect their IP assets corporates frequently turn to patent prosecution. Most small and medium businesses lack the resources to maintain a permanent in-house legal team that will cater to the patent filing process. Training an employee in patent law to oversee the filing process can prove counterproductive. The complex legalities involved in patent prosecution are best left to experts. Besides, patent prosecution also involves the significant step of preparing a patent strategy to decide on crucial factors like the type of IP required for the invention, the value of the invention to the patent portfolio, and setting in motion a plan for the future.   

Given the complexities involved as well as the cost of setting up an in-house unit, it makes financial as well as strategic sense to outsource this time-consuming process. 

Law Firms and Patent Prosecution 

Most law firms have a battery of attorneys and lawyers who are experts in patent law. They are aware of the legal nuances as well as up-to-date with the changing laws. This makes them specialists in providing the patent protection needed by a company.  

However, patent prosecution is different. It is a highly technical process that focuses on the details of the invention. Filing a patent for such inventions requires the attorneys to possess specialized knowledge on the subject. A trait that may not necessarily be available to the firm. While it is possible to research the subject and equip yourself with the necessary information, this may require ample time that the client may not have. So, in order to expedite the cases requiring specialized technical information, outsourcing to firms with the necessary know-how is a suitable recourse.  

Advantages of Outsourcing Patent Prosecution 

Patent prosecution outsourcing is a cost-effective method of achieving technical expertise, better efficiency, and quality outcomes. Let us understand its various benefits in detail. 

  1. Access to trained IP specialists 
    As discussed above, technical aspects need trained personnel for error-free filing. By outsourcing to firms that specialize in a certain domain, companies and law firms can strengthen their application. 
  2. Comprehensive and Thorough Analysis 
    To understand the invention as well as research appropriate prior art references, an in-depth analysis is required. It is fairly easier for technical experts working in the same field to process this research rather than for someone new to the matter. IP specialists can perform a better analysis in a shorter time period, thereby accelerating the filing process. 
  3. Strategizing the IP Approach 
    Filing is just one part of the patent prosecution process. There are several objections and office actions raised during the examination process that the applicant needs to be prepared for. These official communications require swift action on the application. The in-depth analysis ensures that you are ready with answers and references to the concerns raised by the patent office.


Tasks such as patent drafting, filing, prosecution, and related matters are considered non-core tasks. So, while businesses focus on their core competence, they can free up more time and manpower by outsourcing patent prosecution. With portfolio management becoming a full-time task, it serves the interests of both law firms and corporates to let the experts handle the technical aspects involved in patent prosecution for a smooth patent grant. 

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