A conventional in-house IP attorney may struggle to prepare 14 US utility apps, prepare 73 responses and still perform another 300 hrs of “other” IP work. With a salary of $120K, the total cost to the company (salary, overhead and filing fees) for the attorney to prep and file the 15 apps is about $200k. I propose an in-house model where the attorney may easily prep an additional 32 apps (without burning out), wherein the total cost to the company is about $300k. That means an additional 32 apps for $100k.

In a nutshell, an attorney (or agent) can review the disclosure material, interview the inventor, prepare the claims, wherein a tech writer can then spend anywhere from 25-50 hours preparing the body of the application for $1000. The attorney would then review/modify/revise the application as needed. The total attorney time would be about 12 hours. For another $100, another tech writer can review the application to make sure it is readable and makes sense. With this model, the attorney (or agent) does not get bogged down with the drafting, but the required attorney (or agent) skill is maximized in claim drafting and specification revision.

By outsourcing only the preparation of the body of the spec, the cost of the preparation and filing of a US patent application can be $2630. That is $1090 for USPTO filing fee (large entity), $40 for USPTO assignment registration fee, $400 for formal drawings (estimated outsourced draftsman fee), $1000 for a tech writer, and $100 for tech writer review.

As for the associate, let’s say the in-house salary is $120k with an additional $60k in overhead for the company (to cover taxes, unemployment, retirement, etc.). That brings the cost of the associate to $180k.

So the associate is not worked to death (decrease turnover), let’s presume a 46 week year - starting with 52 weeks, and subtracting: two weeks of holidays (10 days), three weeks of vacation and one week of sick leave. Now, let’s presume a 7.5 hour work day at 85% efficiency (let’s face it, there will be down time and wasted time at meetings). That leaves 1466 working hours in a year. Not heavy, but pretty good for a $120k salary.

Now let’s presume that for the in-house position (for the sake of discussion), the attorney’s responsibility is divided up into 40% preparation (to draft apps), 40% prosecution (preparing responses) and 20% other (other IP issues, beating the bushes to drum up invention disclosures). With this breakdown (and with the model I propose), in a year the attorney should easily be able to prepare 46 apps, 73 responses and still have about 300 hours of other IP duties. With $2630 fees associated with each app, and $180k for the attorney, the grand total is about $300k for the company.

Now, compare the model I propose with a typical conventional in-house position having the same 40% prep, 40% pros and 20% other breakdown. In the conventional scheme, the attorney may spend 40 hours per app. As such, the attorney may only be required to prep about 15 cases in a year. In this case, there is only $1530 of fees associated with each app (no tech writer or reviewer fees). The grand total for 15 apps and $18k for the attorney is about $200k for the company.

A problem with the conventional model is that the attorney may not draft the allotted 15 cases in the year. Further, if the company wants more than 15 applications, it is likely looking at $8k-$12K (including fees) for each application to be outsourced. For an extra 32 applications, that will cost the company an extra $256k-$384k. Still further, the in-house will have to find time to review the outsourced material.

This general model is not new. Many law firms already train associates and agents using a similar model. One of the major differences that I propose is the low cost of the tech writer ($1000 fixed-fee) as opposed to the cost of the training atty/agent, which may be $100-$200/hr. Further, the model I propose does not train the tech writer in claim drafting or prosecution. This is where the conventional training of law firms ends up increasing costs. Once a person is trained in drafting claims and/or prosecuting, then they are more marketable and their billing rate increases. With my proposed model, the tech writers remain tech writers and the costs remain low.