Manage Your Patent Portfolio by Managing Your Patent Lawyer:

Bill NaifehCost Controls, IP Management

Anyone who has filed a patent application knows that from the day the application is filed to the day it issues, you will receive a steady string of correspondence from your patent attorney.  There are reminders about filing deadlines, there are cover letters enclosing filed patent applications and amendments, there are cover letters enclosing correspondence from the patent office.  Some of the letters are extremely important.  Some of them are not.

When you file your first few patent applications, the stream of letters you receive can be an important teaching tool.  However, by the time you have a sizeable patent portfolio, the stream of letters can become unmanageable.  Furthermore, most patent firms bill for these letters.  So, when your portfolio grows to about 30 patent applications, you could be paying thousands each month just to have your law firm forward you correspondence from the patent office.

In future posts, I will discuss radical cost-reduction options, such as third-party docketing and notification services.  Such services can dramatically lower your patent portfolio costs.  The purpose of this post, however, is to provide suggestions to help reduce costs and frustration when you have a law firm manage your portfolio.  The suggestions are:

(1)       Limit Meaningless Correspondence with your Patent Lawyer.

If you have trouble understanding a letter from your patent lawyer, you are not alone.  A general counsel who used a large law firm to manage his patent portfolio once confided in me that he had no idea what the letters from his patent counsel meant.  Over time, however, his secretary was able to recognize the “form” of the letter  to determine whether the letter required a response or  could be ignored.

As an in-house counsel managing a sizable portfolio, I received numerous letters from outside patent counsel.  Because I am familiar with the patent deadlines, I knew what the letters were trying to convey.  However, many times, I could not understand the actual language of the letters.

Most patent firms use a database of form letters to notify their clients of various patent deadlines.  Most of the form letters were copied from the first law firm the patent lawyer worked at after he or she graduated from law school.  The letters were drafted years ago, but were occasionally updated as the regulations change.  Consequently, most are a patchwork of updates and really make very little sense when read anew.

In some law firms, the letters cannot be changed by the individual lawyer without “committee approval.”  So, most lawyers will not edit the letters themselves.  Client data is simply input into the correct fields of the form letters by paralegals before the letter is sent out.

If you do not understand letters from your patent attorney, insist that they explain the meaning of the letter to you.  Chances are they have not carefully read the letter themselves.  Furthermore, if the notification is not clear, you should not hesitate to tell your patent attorney that they should not bill you for the explanation.  After all, if they had written an intelligible letter to begin with, you would not be calling them now.

Understanding the importance (or lack thereof) of letters received from your patent lawyer will go a long way to reduce your frustration with the patent process.

(2)       Limit the amount of correspondence from your patent lawyer.

When you file an initial patent application, most patent lawyers will begin reminding you that you have one year to file foreign applications.  At six and nine months, they will also send you reminders of foreign deadlines.  Finally, they might even call you around the one year deadline to remind you of the deadline.

Each time they send you a reminder, they will bill you.  So, if you are not going to file foreign applications, then it is important to your patent lawyer know this early.  DO NOT PUT OFF RESPONDING because you will be sent more reminders (and will be billed for each one of them).

On the other hand, if they continue to send you reminders after you have responded – refuse to pay for the additional reminders on your invoices.

You may also choose to limit other correspondence typically provided by your patent lawyer.  For instance, do you really need your patent attorney to send you a “file-stamped” version of the patent application you just filed?  Do you really need an “official filing receipt” issued by the USPTO a few weeks later?  Chances are you may not.  If that is the case, then you can limit the type of correspondence sent to you by your patent lawyer.  When and if you need complete files later, you can always get copies from your lawyer (without the costs of having individual cover letters prepared for each correspondence).  Additionally, once the patent application is published, you can get the complete record from the USPTO.

(3)       Forget paper!

I work as a part time in-house patent attorney for a select group of companies.  Often when I take over a portfolio for a client, we are shown to a room with a filing cabinet and numerous stacks of unfilled paper correspondence from their outside patent counsel.  Most clients believe that if something is sent to them by their patent lawyer, it is important and they must keep it.  They do not know why they should keep it, but they feel they must keep it.  Some companies even hire “paralegals” to just to manage the paper flow.

As an in-house lawyer, I now instruct the outside lawyers to send all correspondence via email as pdf files.  Often we will set up a “patents” email account on the client’s server.  The client’s IT department can then set up rules which will forward any incoming email to the appropriate individuals within the company in addition to myself.  It is recommended that emails be forward to at least two or three individuals within the company.  That way, when there is turnover, the correspondence will not be forever “stuck” in some ex-employee’s email account on the company’s server.

When emails are received, they can be easily saved to an electronic “filing system.”  We have successfully used electronic filing systems for years.  In fact, except for ribbon copies of patents and assignments, there is little reason to keep paper copies of anything.

Another option is to use an on-line file storage service, such as  The attorney’s paralegal can file copies of the correspondence in virtual file cabinets of such services.  Updates can then be automatically sent to the client.  You can then have access to the files at anytime.

(4)       Control the content of the correspondence you receive from your patent lawyer.

As discussed previously, one way you can save time and money is to limit the type of correspondence you receive from your patent lawyer.  Another way to save money is to control the content of the correspondence you receive from your patent lawyer.

Is your patent lawyer sending you a separate cover letter every time you receive an office action from the patent office?  Rarely, if ever, do you have less than a month to respond.  So, rather than individually receiving letters throughout the month, why not insist that your lawyer provide you with a spreadsheet (sent to you monthly) with a list of all open items which: (1) need a decision from you, (2) require a response to the USPTO, and (3) is a work in progress.  In fact, this list could precede a regularly scheduled meeting or conference call with your attorney to discuss the portfolio.

It is also important for clients to have manageable and workable tools to allow them to manage their patent portfolios.  Often clients will attempt to get their hands around a portfolio by asking for a list of all outstanding matters.  In response, many law firms provide “docket reports” from their docket systems.  However, many of these reports are next to meaningless because there is  usually too much information and they are not in a usable format.

Many docket reports will list matters with open actions, but, many of the open actions might be “waiting on office action from the USPTO.”   Often this means that clients will have to wade through several pages of “waiting on office action” just to find the one item that requires a response from them. What clients need, however, is a report which lists and prioritizes their decisions or action items.

Often I received docket reports in a pdf or Microsoft WORD format.  While such reports look nice, in order to be able to manage and prioritize, an EXCEL spreadsheet is usually the best format.  So, insist that your law firm provide you with EXCEL reports from their docket systems and make sure that the EXCEL report can be easily sorted.

(5)       Insist on Meaningful Project Names or Numbers on Correspondence to You.

Many law firms use docket numbers or client and matter numbers to track various files and projects.  Some times these systems make sense.  Many times they do not.

Furthermore, for legal reasons, many patent applications are filed with confusing titles (or titles that are very similar to other patent applications).  In such cases, most clients will have internal “nick names” for various patent applications.  These internal names and/or project numbers can be provided to your patent lawyer with instructions that they send you reports using the nick names.  Most docketing systems allow for alternative naming.  So, this is simply a matter of reformatting the docketing reports.

If the reports you receive use meaningless project numbers or patent application names, instruct your law firm to use names or docket numbers that are useful to you.

(6)       Use a Third Party Service for Administrative Tasks such as Paying Patent Maintenance Fees.

Many services traditionally provided by law firms are simply administrative in nature.  An example of one service is the payment of patent maintenance fees.  Typically, these fees can be paid much more efficiently and inexpensively by a third party who does not have the overhead or the liability constraints of a law firm.

One such service is Docket Assurance, LLC ( which contracts directly with clients to pay patent maintenance fees.  Using a service like Docket Assurance for administrative functions will save clients money and allow law firms to focus on legal services.


Implementing the above suggestions will involve changing the status quo for your convenience – not the convenience of your lawyer.  However, any change involves risk.  Lawyers know this and are constantly worried about malpractice claims and rising malpractice insurance.  So, many lawyers are fearful about implementing changes which could result in unknown liability and malpractice claims against them.  That is why, you, as the client, should expect some push back.  However, if you are frustrated with the practices of your current lawyer, give these recommendations a try.

Once you have found a system that works for you and your outside counsel, memorialize the instructions in the form of written “client instructions.”  Personnel will change at the law firm and at your company.  Having a set of client instructions will minimize future confusion and frustration for both you and your lawyer.

Bill Naifeh (