Degree of Control

The foreign patent offices are all over the map in terms of their ability to assist in the substantive patent work. Some agents are merely processing centers, and provide little more than translation of papers going back and forth between the foreign patent office and the local U.S. patent attorney. Others are very sophisticated patent attorneys in their own right, and can provide extremely valuable suggestions. One problem, of course, is that foreign associates that provide good substantive work also tend to be expensive. Moreover, they often charge according to a fixed fee schedule, so that in some cases they might charge $1500 for only ten minutes of paralegal work! This is, of course, extremely troubling for those who have to pay the bill, and in our office we try to utilize foreign associates that bill by the hour rather than according to a fee schedule.

My office generally does most of the analytical work ourselves, and then provides fairly detailed instructions to the foreign associates. The instructions usually include drafts of both amended claims and arguments. If the foreign associate disagrees, we then exchange correspondence until we arrive at something that is mutually acceptable. The disagreements are almost always over claim scope. We generally insist upon arguing for relatively broader claims, and the foreign associates insist that their patent offices simply won't allow such broad claims.