Patent Attorney Mark Houghton, talks about his specialist Patent practice, Patent Outsourcing Limited, which provides European Patent prosecution services, mainly to US clients, and he also talks about specific current European patent issues of interest, particularly the European Patent Office’s ‘Early Certainty’ initiative and its impact on clients with larger portfolios.
What makes Patent Outsourcing different from other firms?
Patent Outsourcing Limited is highly focused toward the corporate client requiring European patent prosecution of a patent portfolio. We currently support US, EU and UK clients who have a clear strategy to implement; it is our task to implement that in Europe. We get to know the objectives, key contact and subject matter in order to give minimum overhead in the relationship whilst actively flagging issues as they may arise. Agreed processes and procedures keep routine procedures and reporting efficient and cost effective so that key issues gain greater visibility; for example, we use your case references not our own in communications, as a trivial but illustrative example.
What does a history of working in-house bring to your work?
Having personally started out in research and development in an Anglo Dutch multinational, and along the way having been inventor on 66 patent families, I have some feel for the needs of the internal ‘customer’ of in-house IP services. This, along with professional accolades, such as being a Chartered Scientist and academic credentials, PhD etc., helps establish credibility with inventors. Similarly, having been in-house counsel with responsibility for intellectual property in an international ‘PLC’ company, the pressures of business and financial constraints are no stranger to me. This makes it easier for my colleagues and I, to deliver what clients need and so deliver focused services. Having an intrinsic awareness of internal company responsibilities and decision-making possibilities helps us ask the right questions. But then there are more pragmatic experiences from simply having worked in a factory. Deciding what patent amendments may be required is much easier when, for example, you realise that the product being talked about is shipped around in one tonne open topped sacks, rather than in consumer ready blister packs, or vice versa.
Have you any topical information about the Patent European scene?
Pragmatism is our focus at Patent Outsourcing Limited. What has had a concrete effect in European patent prosecution in the last year, and will ripple through at least until 2020, is the “Early Certainty” programme at the European Patent Office. I will leave the speculation and the political intrigue of the Unitary Patent and the Unified Patent Court process to others. If you are dealing with more than a handful of patent applications before the European patent office you may well have noticed a big upsurge in the number of summons to Oral Proceedings. You may also have seen a trend towards reduced deadlines and perhaps even cases which have been lying dormant for five or more years suddenly coming back to life. These are all consequences of a welcome, but certainly impactful initiative at the European Patent Office. The underlying concept, expressed in various ways, is that the examination process should be taking no longer than a year. Given that historically we are talking about five or six years this is a sea change. Waiting for prosecution in other jurisdictions to be resolved is therefore less of an option, similarly, there are no prizes for taking the maximum amount of time in preparing a response, that timescale being up to 6 months. Efficiency from European Counsel is essential both in terms of time and selectivity in resolving issues. The corollary of this is that there has been, and is likely to be, an ongoing increase in the filing of divisional applications (c.f. Continuations) along with the filing of appeals. The separation and move of the Board of Appeals at the European Patent Office is in my view likely to result in the backlog of unresolved cases being shifted to the forum of Appeal, where we are talking about several years before cases may be resolved. Again, as a simple illustration of our approach; a five or six-fold increase in Oral Proceedings could have seen the ‘air miles’ of our attorney’s soar, but instead we have moved the focus to use the option for Oral Proceedings by videoconference and have not seen any negative consequence from this.
About Mark Houghton
Mark is CEO of Patent Outsourcing Limited an attorney firm based around former in-house counsel who aim to act as the European arm of corporate patent departments outside Europe. Process-based patent prosecution delivers efficiency and effectiveness but with the responsiveness and personal contact you expect from in-house counsel. Mark and his team have experience in physics, electronics, chemical and mechanical subject matter and specific team members also cover further specialist areas such as computer implemented inventions and biotech.
About Patent Outsourcing Limited
Patent Outsourcing Limited is a leading firm of UK Chartered and European Patent Attorneys handling several thousand active patent applications before the EPO. The firm is focused around attorneys with experience in industry and a proactive paralegal support team to manage process and maximize attorney value and minimize billing on trivial actions.
