Explore the role of an in-house attorney in managing patents and protecting intellectual property in a global technology company.
Operating in more than 170 countries and serving its customers for more than 80 years, the technology company that is Ben Hoopes’ employer treats intellectual property protection as a key strategic function.
Hoopes is part of a large team helping manage the tens of thousands of patents and patent applications that the company uses to defend its position in the market for a wide array of products. These range from medical products and devices to point-of-sale devices, personal systems—such as desktop computers, workstations and laptops—and printers and 3D printing and digital manufacturing equipment.
Like many young men of his generation, what led Ben Hoopes to a bachelor’s degree in electrical engineering was the dream of going into space as an astronaut. But things didn’t work out that way. “I sprouted to six foot three and my eyes were bad, so I was automatically out for the space program,” he recalls. “But I thought that if I couldn’t fly a spaceship, at least I could design and build them. So, my initial path was towards aerospace engineering.”At university, this did not feel like quite the right fit for Hoopes, so he decided to move into electrical and computer engineering. However, growing up, as he watched friends and family in engineering lose their jobs at companies in his home of Boise, Idaho, he had reservations about the stability of a career in engineering.As an undergraduate, he was contemplating going to business school until an engineering professor told him about the possibility of a career as a patent lawyer. “I’d never heard of patent law,” he says. “But the more I looked into it, the more interesting it sounded.” When some students from the university’s law school gave a presentation on patent law to the engineering students, his mind was made up. After gaining his legal qualifications and working in private practice at a boutique IP firm, Hoopes was drawn to the corporate world. “When you’re a private attorney, you tend to advise your clients to avoid risk in all forms,” he explains. “For me, what was of interest was that in-house attorneys are tasked with balancing legal risks and business objectives. That was a big change.”After gaining his legal qualifications and working in private practice at a boutique IP firm, Hoopes was drawn to the corporate world. “When you’re a private attorney, you tend to advise your clients to avoid risk in all forms,” he explains. “For me, what was of interest was that in-house attorneys are tasked with balancing legal risks and business objectives. That was a big change.”
“We are looking at the technological landscape and building a patent portfolio with a view to being able to enforce patents—offensively or defensively—against competitors.” Ben Hoopes, Senior Patent Counsel
“We are looking at the technological landscape and building a patent portfolio with a view to being able to enforce patents—offensively or defensively—against competitors.”
Ben Hoopes, Senior Patent Counsel
While Hoopes clearly loves his job, there are frustrations. First, he and his colleagues are not able to control the patent prosecution process or which examiner gets assigned to which cases. “We submit our patent applications and they sit in a queue for often a number of years before getting assigned to an officer,” he says. “And there is a significant amount of variability in the way patents are examined. That’s a little frustrating.”A few years ago, as patent attorneys started thinking about how to navigate this uncertainty, open source databases of patent officers began to emerge. “We’re engineers so we like finding solutions to problems,” says Hoopes. “But those publicly available examiner trend databases would burn bright and not for very long. When solutions such as Examiner Ninja fell by the wayside and stopped working, we’d end up being forced either to rely on our familiarity with patent examiners to plot examination trajectory or to use a more rigid one-size-fits-all approach to prosecution.”Second, beyond the frustration of uncertainty, in-house attorneys also have to consider their overall budget for patent prosecution and balance that with business objectives.
“We need to wrap our heads quickly around what the trajectory is going to be for the examination of a particular asset and how that will fit into our objectives and budget.”
PatentAdvisor™ has helped Hoopes and his colleagues with both challenges. First, the tool injects far more predictability into the overall management of the patent portfolio for the company. Second, being able to understand early on that, for example, a case has been assigned to a challenging examiner enables informed decisions to be made on how to prosecute that case—decisions that also help control costs.For example, PatentAdvisor offers insights into the number of requests for continued examination, or RCEs, that particular examiners tend to require before allowing a case—something that is important for a company like the one Hoopes works for, which aims to minimize the number of RCEs permitted in a typical examination cycle.
Not only is there a direct cost to be managed (in terms of fees charged by the USPTO after the first RCE), but in a system where securing a patent is a long process, there is also a need to keep the time needed for the case to be allowed to a minimum.“If an examiner requires on average three RCEs before allowing a case and our own internal objective is to file at most a single RCE in an application, then we need to find a way to quickly get to a resolution, which may be an early appeal,” he explains.Patent attorneys also want to understand the relative likelihood that an examiner will reject an application on the basis of prior art (evidence that an invention is already known) or patentability (based on subject matter eligibility, validity, and industrial applicability of an invention).Can PatentAdvisor help with this? “Quite a lot,” says Hoopes. “For every examiner, PatentAdvisor tells us the frequency at which they have these different grounds for rejection at the different phases,” he says. “That’s very useful.”
While his company has only been using PatentAdvisor for a year, Hoopes is no stranger to the tool. As a newly minted attorney, he attended an early presentation of PatentAdvisor. “At the time it was difficult for patent attorneys to see the potential utility of something like PatentAdvisor. It was still very new.”Now, he says, he is constantly impressed to see the features being added to the tool and the improvement in functionality. “It’s definitely evolved,” he says.He cites one feature recently added that enables attorneys to see the issue-specific PTAB appeal records for different examiners, giving additional insight with which to plan patent prosecution more strategically.
“PatentAdvisor allows us to be more efficient in quickly getting to a final disposition for our cases. And it allows us to be more strategic in allocation of our own time and outside counsel resources.”
In addition, he says, the tool now allows users to benchmark companies, law firms and attorneys against each other based on the data that can be gleaned from PatentAdvisor Benchmarking Reports.This makes it possible to assess how different law firms are performing when measured against a similar set of examiners. “If one law firm is more efficient at getting to allowance within the same bucket of patent examiners than another firm, that’s a very interesting data point,” he says. “And we can see if some law firms are better suited for different technology areas than others.”
PatentAdvisor – A powerful patent prosecution toolHoopes sees data as becoming the norm in his industry. “We see more and more corporations and law firms turning to data to help make their practice more efficient,” he says. “So, moving forward, I believe use of a tool like PatentAdvisor will only increase.”
Would you like to learn more about improving prosecution outcomes and managing client expectations with LexisNexis PatentAdvisor? Get in touch with us.
