Patent prosecution quality-insourced versus outsourced patent prosecution

Abstract

With the current focus of multinational industrial R&D shifting India, there has been an increase in the number of inventions emanating from India over the past decade. However, the value chain development for the conversion of these inventions into patent applications and subsequently, granted patents, is still under development. Currently, most of the patent drafting, filing and prosecution work is outsourced. This ecosystem hinders long term IP planning and portfolio management for the organizations since in such an ecosystem, the inventions become de-linked from the business goals of the organization. This raises questions on the patent prosecution quality provided by the outsourcing firms and on the business impact that the patents can create. In this paper, we compare the patent prosecution quality offered by the outsourced prosecution model to that offered by the in-house prosecution model. Three parameters for the same are considered: probability of obtaining a patent grant, time in prosecution which is the lead time from the invention conception to the time to leverage monetary benefits from the invention, and the number of inefficiencies and latencies introduced in prosecution. Our research indicates in-sourced of patent prosecution to be superior over out[1]sourced patent prosecution on three parameters.