1、How to Modernize International Patent Filing and Prosecution 6 simple steps to centralize operations,control costs,and achieve strategic oversight IP Guide2Questels end-to-end international patent filing and cost-control solution supports IP teams to centralize operations,achieve strategic oversight

2、,and control IP spend.Discover how we saved one client500,000500,000annually in international patent filing and prosecution costs on page 16.Increasing digitalization and modernization of legal operations have disrupted traditional ways of managing international patent filing and prosecution.By seiz

3、ing on the opportunities offered by new technologies,including integrated global services,IP leaders can save valuable time,budget,and resources.The old ways of managing international patent filing and prosecution are becoming increasingly outdated in todays fast-paced,tech-driven work environments.

4、As legal operations become ever more digitalized and modernized,IP teams that still rely on traditional networks and last-generation email processes risk expending precious time and internal resources managing routine but time-consuming administrative tasks,from docketing to invoice management.By ce

5、ntralizing the patent filing process through one trusted IP support specialist,such as Questel,multinationals can save time,build consistency,minimize risk,optimize in-house resources,achieve strategic oversightand realize immediate and significant cost savings.Ready to Rethink Your International Pa

6、tent Filing and Prosecution Process?This IP Guide discusses six simple steps you can take to modernize and digitalize the international patent filing and prosecution process,including:-1.Why now is the right time to rethink your current processes and suppliers;-2.Where to draw the line between legal

7、 and purely administrative tasks;-3.How to set and achieve your operational objectives without disrupting day-to-day operations;-4.Common obstacles to change and how to overcome them;-5.What outcomes,including cost savings,to expect when switching processes or suppliers;and-6.How to start your journ

8、ey to modernize international patent filing and prosecution with Questel today.Copyright 2024 Questel All rights reserved 3STEP 1:Assess the Need and Opportunities for ChangePatent drafting,translations,filing,prosecution,docketing,and annuities were once the sole responsibility of in-house IP profe

9、ssionals and their external legal advisors.However,over the past four decades,the administrative parts of these high-value but time-consuming tasks have been increasingly carved out and commoditized,thanks to specialist,technology-driven service providers.Nowadays,it is commonplace for IP department

10、s and their law firm advisors to outsource many routine and administrative IP matters to specialist providers.Yet,most providers focus purely on high-volume or discrete tasks,such as annuities or translations,meaning that in-house teams must use multiple suppliers for international patent filing,add

11、ing unnecessary time and complexity to the process.As a result,many in-house teams are yet to consider the possibility of outsourcing many of the steps required for international patent filing despite the opportunities to cut costs and boost efficiency.Even if they have,existing processes and relati

12、onships may appear too engrained or risky to change,especially if there is no clear alternative model to adopt.Copyright 2024 Questel All rights reserved 4Introducing Questels Comprehensive SolutionQuestels alternative model applies dedicated tools,robust processes,and centralized solutions to lever

13、age the administrative processes of international patent filing to reduce costs,improve efficiency,and free up internal resources.Traditionally,companies manage foreign filings either(1)directly with an in-house team in communication with various overseas law firms or(2)via an external local patent

14、law firm partner(or a blend of the two).The first model requires companies to invest in attorney resources and administrative expertise to manage such work in-house,including processing and overseeing all translations,correspondence,and invoicing that such an approach entails.The second requires the

15、m to pay two law firms to be involved in all activities related to foreign filings,including often paying hourly legal fees for simple administrative tasks.We support our solution with a multi-pronged IP cost management approach to enable clients to achieve their specific cost control requirements,c

16、omprising the following key initiatives:-Structured/Standardized Fee Schedule to provide cost consistency across various jurisdictions.-Automated Invoice Review Management to simplify the in-house invoice process.-Invoice Audit and Compliance Monitoring to ensure accuracy and ongoing adherence to fe

17、e schedules.-Data Reporting and Benchmarking to improve budget management and track IP-related expenditures.Discover Our Alternative ApproachQuestels comprehensive solution offers companies a one-stop-shop for foreign filing that replaces the need to pay external law firm partners to act as a hub fo

18、r national filings and translations and reduces the need to manage some or all work in-house.Copyright 2024 Questel All rights reserved 5STEP 2:Find the Right Balance Between Legal and Administrative TasksYou may be surprised to discover the wide range of patent filing and prosecution tasks you coul

19、d manage more efficiently and cost-effectively by partnering with an IP administration specialist,such as Questel.While the laws and specific implementation mechanisms differ,most patent filing routes comprise a familiar set of administrative processes.Take,for example,Patent Cooperation Treaty(PCT)

20、National Phase Entry(Figure 1)and Paris Convention filing(Figure 2).Here,the following administrative tasks can be streamlined and optimized:Figure 1:PCT National Phase Entry as an administrative task.-Application subject matter set in stone once filed;-Key dates for protection are fixed;-Act of nat

21、ional phase filings is entirely administrative;-“By filing one international patent application under the PCT,applicants can simultaneously seek protection for an invention in a large number of countries.”(WIPO)PCT International Application-Entering the national phase is a task ready for commoditiza

22、tion;-Filling out forms,paying fees,and submitting signed documents are all purely administrative;-Translations handled with filing;-Amendments can be made and filed,but the amendments are constrained by the original text;-Why pay legal fees for this formality?National Phase Filing-Amendments can be

23、 made;-Substantive prosecution(optimized legal spend);-Minor revisions and amendments combined with substantive prosecution responses(best practice);-Leave the real work to the experts;-Other post-filing admin tasks already outsourced;e.g.,annuities,form generation,etc.Post FilingCopyright 2024 Ques

24、tel All rights reserved 6-Application subject matter set in stone once non-provisional is filed;-Key dates for protection are fixed;-Localization of application is possible,although at what cost?-With final version of application,filing internationally is entirely administrative.Priority Application

25、-Entering the national phase is a task ready for commoditization;-Filling out forms,paying fees,and submitting signed documents are all purely administrative;-Translations handled with filing;-Localization must be done before filing.Questel can coordinate and manage this.Filing-Amendments can be mad

26、e;-Substantive prosecution(optimized legal spend);-Minor revisions and amendments combined with substantive prosecution responses(best practice);-Leave the real work to the experts;-Other post-filing admin tasks already outsourced;e.g.,annuities,form generation,etc.Post FilingFigure 2:Paris Conventi

27、on filing as an administrative task.Copyright 2024 Questel All rights reserved 7How Does This Look in Practice?Questels comprehensive translation,filing,and cost management solution enables clients and legal teams to focus on added-value legal advice,while Questel provides cost-effective technical a

28、nd administrative support.Depending on your specific needs,you can centralize the whole translation and filing process with us or choose only specific services.We provide our IP cost management services as part of our filing bundle to ensure you realize the benefits of whichever approach you take(se

29、e Figure 3,below).Legal workAgents focus on added-value legal advice:Drafting,PCT,national prosecution:Client“new”set up with QuestelAdministrative and technical workQuestel provides cost-effective technical and administrative support:Foreign agentsLocal agentsCorporationOne point of contactSearch s

30、ervicesRenewal servicesTranslation servicesFiling(incl.validation)formalitiesCost ManagementFee Schedule,ComplianceFigure 3:How Questels solution works in practice.Copyright 2024 Questel All rights reserved 8Our filing services reduce the time burden on in-house teams,eliminate local attorney fees,a

31、pply a uniform filing process for all jurisdictions,and save money on foreign attorney filing fees.You can also choose to maintain relationships with existing attorneys while benefiting from our invoice audit and compliance monitoring service,if you prefer(see Figure 4,below).Filing by Questel Agent

32、Prosecution by Client AgentQuestel Filing ServicesClientInstructs via:-Portal-Email-Bulk-IPMSQuestelPre-files:-Review file-Prepare documents-Translate,as applicable-Instruct agentsQuestel agent Files:-Uniform filing process across all jurisdictionsQuestelPost-files:-Report filing-Transfer applicatio

33、n to client agent for prosecutionFigure 4:Questel filing process with preferred agents.Copyright 2024 Questel All rights reserved 9STEP 3:Set Your Operational ObjectivesCost savings may provide the original impetus for change,but modernizing and digitalizing your international patent filing and pros

34、ecution process can help you meet additional operational needs.From maximizing internal resources to building consistency across business entities,rethinking your international filing processes can help prepare your organization and IP to thrive in the years to come.Here are six operational objectiv

35、es to consider when selecting solutions and service providers:-Better Use of Internal Resources:By outsourcing menial but essential IP admin tasks,you can free up internal teams to concentrate on higher-value tasks.-Build and Empower In-House IP Teams:A reliable,proactive,and quality-driven external

36、 IP admin partner will enable you to bring strategic work and knowledge back in-house.-Centralize and Bring Consistency Across Organizations:By choosing a single partner,you can consolidate the entire international patent filing and prosecution process to achieve consistency,oversight,and cost contr

37、ol.-Modernize/Digitalize Existing Processes and Tools:Your chosen partner should not only support you with tech-driven solutions that reduce email correspondence,manual data entry,and duplication of effort but also enable you to centralize and automate IP docketing data and workflows in your preferr

38、ed IP management system.-Create Immediate and Significant Cost Savings:Through economies of scale,transparent service charges,and proactive cost control,your chosen solution should deliver immediate and significant cost savings for your business.-Set Yourself Up for Future Success:Modernize and digi

39、talize your processes today,and you will be ready to integrate and optimize future developments in technology and service delivery.Copyright 2024 Questel All rights reserved 10Why Select an End-to-End Partner for Foreign Filing and Prosecution?Switching processes,suppliers,and technology should brin

40、g measurable outcomes,including but not limited to cost savings.By choosing a single partner,you can centralize the entire international patent filing and prosecution process,saving you time and budget and delivering customer service,process,and risk mitigation benefits:Customer service-Single proje

41、ct manager per client supported by patent admin team;-SLAs for response time,orderconfirmations,filing reports;-Feedback is reviewed monthlyfor continuous improvement.Robust process-Flexible and adaptable internal client workflow;-Repeatability,consistency,efficiency;-Purpose-built docket with 20+da

42、tapoints per filing.Risk mitigation-Three-eye policy for each filinginstruction;-Continuous docket monitoring(by automation and team members);-Data verification and controlled processto verify filingandpayment acceptance.Copyright 2024 Questel All rights reserved 11-96%client retention rate for Ques

43、tels centralized model;-30%cost saving,typically,on translation and foreign filings.-No.1 foreign filer in the world;-50,000+foreign filings/year;-15 of the top 25 PCT filers use Questel;-10%of US priority filings by us;-50%of top US PCT filers use us;-80%of clients are Fortune 500.-No.1 patent tran

44、slator globally;-100,000+patents translated/year;-1 billion+words translated over the last three years alone;-WIPO translator provider;-ISO certified.Reasons to Partner With QuestelQuestel is a global leader in patent translation and foreign filing and a partner to the worlds top applicants and IP l

45、aw firms.Copyright 2024 Questel All rights reserved 12STEP 4:Overcome Common Obstacles to ChangeChanging processes,suppliers,and technology can seem a challenging prospect to busy in-house teams.Thats why its so vital to work with a partner who can facilitate and support you through the transition a

46、nd onboarding process.We commonly see three main obstacles to change when working with clients:-Complexity:Global operations are complex,so its only natural to be risk-averse when changing the tools or suppliers you use to administer your valuable and sensitive IP rights.By taking the time upfront t

47、o select the right solution and service provider for your needs,you can be confident of a smooth and secure transition that enhances,rather than risks,your ability to efficiently manage your IP portfolio.-Fear of Change:Clients may be dissatisfied with existing relationships/technology yet still rel

48、y on them to manage their day-to-day work.While it may feel tempting to put up with a familiar but far-from-ideal situation rather than risking the unknown of a new start,sticking to old-fashioned tools,processes,and suppliers will only damage productivity and performance in the longer term.-Time Co

49、ncerns:Busy IP departments and law firms may justifiably feel they dont have the time or resources to rethink or upgrade their international filing and prosecution processes.Antiquated and administration-heavy tools,processes,and suppliers can ravage available resources,leaving little time or appeti

50、te to onboard a new solution.However,this situation will never change if the root cause of administrative overload is not addressed.Copyright 2024 Questel All rights reserved 13Questels ApproachQuestel works with organizations like yours to help them overcome these and other challenges.We will suppo

51、rt you in assessing your current operations,identifying potential hurdles in advance,and providing details on how to manage them effectively:-Complexity:With a long history of servicing demanding global patent departments,we understand the challenges of international patent management and will desig

52、n a process for you that works to reduce this complexity while minimizing risk.-Fear of Change:This fear is valid in an industry where the loss of a patent right can have significant consequences.We can support you in administering the transition period in stages to reduce hesitation.-Time Concerns:

53、The onboarding process is critical for managing this specific challenge.By including a discovery phase of your internal processes,you can ensure that your chosen service provider fits in with minimal or no disruption to your day-to-day operations.Copyright 2024 Questel All rights reserved 14STEP 5:E

54、nsuring the Right Outcomes for Your OrganizationFrom opportunities to make better use of internal resources to immediate and significant cost savings,global companies can realize substantial benefits by focusing on efficient resource allocation and proactive cost management.Here are some of the key

55、outcomes and benefits we provide to our international filing and prosecution clients:-1.Substantial Cost Savings and Greater Cost Control:Questels cost containment initiatives for international patent filing and prosecution have resulted in 20-30%cost savings for some clients without negatively impa

56、cting portfolio quality or existing agent relationships.-2.Consistency Through Centralization:Whether you consolidate the entire international patent filing process with Questel or specific services,such as patent translation,we help clients realize measurable consistency gains.Whichever partner you

57、 choose,make sure they help you to:-Achieve consistent quality,rates,and service levels;-Improve transparency,visibility,and tracking of expenditure;-Reclaim decision-making control and oversight;-Benefit from economies of scale;and-Make significant cost savings.We routinely save our large,multinati

58、onal clients 20%+in annual patent translation fees while maintaining patent translation quality at the same level.A Smooth,Secure Process“Questel talked to me about foreign filings,how they could help me implement a worldwide flat fee schedule,and how they could audit once those fee schedules were i

59、n place.These were tasks I wasnt equipped to do myself,so I signed up!General Counsel,IP OperationsCopyright 2024 Questel All rights reserved 15-3.Operational Efficiencies:Our clients have realized major efficiency gains(and savings)by opting for Questels comprehensive translation,filing,and cost ma

60、nagement solution.By modernizing and digitalizing the entire workflow,internal teams can spend less time on administrative tasks,with team efficiency improved,in some cases,by a multiple of four.Choose a Flexible Partner Who Will Design a Solution for YouWhile modernizing and digitalizing your inter

61、national filing and prosecution process will enable you to review and rethink your current workflows,you shouldnt have to adopt an off-the-shelf solution without room for customization.The right partner should service your specific requirementsincluding integrating your preferred workflows,invoice f

62、ormats/timings,and existing agent network securely into its processeswhile still providing a single point of contact for translations and filing instructions.Look out for an IP administrative specialist with change management experience,a dedicated client support team,and demonstrable experience coo

63、rdinating international filing services to simplify and unlock added value for organizations.Questel provides a complete range of IP services via a single point of contact in your time zone to streamline processes,optimize delivery,and improve quality and efficiency.Thanks to our size and range of s

64、ervices,we can onboard large corporations and IP volumes,offer and integrate complementary services to our delivery model,and tailor-make solutions just for you.Contact us to find out moreContact us to find out more Ease of OnboardingOnboarding was easy,with the introduction phase of the new process

65、 pretty smooth.The Questel team is highly skilled and very well structured to configure the transfer and provide ongoing support.Copyright 2024 Questel All rights reserved 16A Case Study in Process Optimization and Cost ControlDiscover how Questels IP Cost Management solution enabled one client to s

66、ave 500,000 in foreign patent filing and prosecution fees.Global technology group Heraeus previously used external patent law firms to manage most of the international filing process for its sophisticated global patent portfolio.As bringing responsibility for foreign filing management back in-house

67、was not a viable option for the company,it began to seek a different model that would enable it to control costs without increasing headcount or the demands on its internal team.Solution:Efficient Resource Allocation and Proactive Cost ManagementQuestel tailored our comprehensive international filin

68、g services and proactive IP cost management solution for prosecution to enable Heraeus to achieve its objectives of efficient resource allocation and proactive cost management.We created a one-stop-shop for formal filing so internal teams could focus on additional substantive work and supported cost

69、-effective delivery through a multi-pronged cost management approach:100%in-house steering&foreign filing via QuestelExternal attorneySupport only on demandClient(Hereaus)Translation&CoordinationFormal FilingLocal patent officePatent prosecution until grantHandoverForeign representative Legal requir

70、ementForeign patent offices 1234Questel manages all subsequent filingsCopyright 2024 Questel All rights reserved 17-Structured/standardized Fee Schedule to provide cost consistency across various jurisdictions,while seamlessly integrating with Heraeuss existing law firm relationships.-Automated Invo

71、ice Review Management to simplify the in-house invoice process,so that IP Counsel only need to review half the number of invoices as before.-Invoice Audit and Compliance Monitoring to ensure accuracy and ongoing adherence to fee schedules.-Data Reporting and Benchmarking to improve budget management

72、 and deliver a comprehensive understanding of IP-related expenditures.Result:Significant Cost and Time SavingsHeraeus was able to save 500,000 in annual foreign patent prosecution costs,including translations,by outsourcing its international patent filing program to Questel.This included saving 200,

73、000 a year by successfully transitioning from full external representation without increasing headcount.A Model for the Future That Was Over a Decade in the MakingThe Heraeus-Questel collaboration offers companies a glimpse into an effective alternative to costly and resource-heavy approaches to int

74、ernational filing and prosecution that Questel has fine-tuned for over a decade.Through strategic planning and the application of innovative solutions,Heraeus not only realized significant cost savings but also improved its operational efficiency when managing international patent filings.Find out m

75、ore:Discover more about Heraeuss journey to cost transparency by:Reading the case study in full,orWatching our joint presentation at IP Service World 2023.Copyright 2024 Questel All rights reserved 18STEP 6:Schedule a Call with a Subject Matter ExpertFind out how Questels integrated IP Cost Manageme

76、nt and International Patent Filing&Prosecution solution could also save you time and money.Here are some of the key outcomes and benefits we provide to our international filing and prosecution clients:-Read more about our IP Cost Management and International Patent Filing Support services.-Speak to

77、a Questel Subject Matter Expert about how to achieve substantial cost reductions for your own organization while maintaining superior patent quality.Questel is an end-to-end IP solutions provider to more than 20,000 clients and 1.5 million users across 30 countries.Alongside our comprehensive softwa

78、re suite for searching,analyzing,and managing inventions,patents,designs,trademarks,and domain names,Questel also provides services supporting the IP lifecycle,including searching,watching,international filing,translation,renewals,and recordals.These solutions,when combined with our IP cost management platform,deliver clients an average savings of 30-60%across the entire prosecution Copyright 2024 Questel All rights reserved