News

Dennemeyer receives IP Innovation Award for Flat Fee Prosecution Service

Published on: 29 August 2014

Since 2010, the Acquisition International Magazine Intellectual Property Awards celebrate individuals and firms who are involved in driving the IP field and play a vital role in advancing innovation in the industry. This year, Dennemeyer has been granted three awards by Acquisition International: IP Management Firm of the Year (Germany), IP Portfolio Services Provider of the Year (Germany) and the IP Innovation Award for our pioneering Flat Fee Patent Prosecution Service.

Being recognized by the industry for our continuous work to improve servicing makes us feel proud of our efforts. Particularly receiving the Innovation Award for the new Flat Fee Prosecution service which allows attorneys to handle the entire lifecycle of patent applications in foreign countries for their clients, from filing to prosecution and grant, for a fixed fee per country empowers us to continue fine-tuning the service to meet our clients’ needs even better.

Responsible for establishing and managing the Flat Fee Prosecution service is our team in Frankfurt, led by Dr. Malte Köllner, Head of Foreign Filing at Dennemeyer & Associates. Dr. Köllner has vast experience in the field of intellectual property and has multiple times been acknowledged as one of the World’s Leading Lawyers and IP Strategists.

On the occasion of the award, we’ve addressed Dr. Köllner a few questions, to learn more about how the flat fee prosecution service works and how it benefits clients:

You have initiated the flat fee prosecution service that allows clients to achieve cost-effective foreign patent prosecution. How did you go about creating the new service and what are the practical benefits for clients?

One of the key elements is a tool that we have developed that allows information sharing between the attorneys working on members of the same patent family in different countries. With this tool, the use of information is more efficient. It enables the foreign associate to answer the majority of office actions without the need of additional feedback from the applicant or from the single point of contact - if there is one. Also, our approach eliminates translations of office actions. The new tool increases the overall productivity and enables leaner processes compared to the traditional approaches.

The benefits for the clients are superior quality at reduced costs. And the possibility to have the burdensome process of foreign prosecution reduced to the very essential without losing control.

The very essential is that clients want:

  • broad claims
  • granted
  • in a chosen country
  • for a fair price.

We communicate any claim amendments with clients and they are informed of what happens. And clients may choose to access the work sharing tools, put information related to strategy into the tools, specify the limitations they would prefer and control what happens in different countries.

Fig. 1: Foreign prosecution including our worksharing tools

 

What are the differences between the traditional foreign filing process and your flat fee prosecution approach?

The differences are in the way the flat fee prosecution procedure is organized (which we consider to be optimal as described above) and in the way we charge. We offer three pricing models:

  • the traditional billing by the hour,
  • stepwise flat fees, or
  • a total flat fee.

Clients can choose the way they want to be billed. If a client chooses the total flat fee until grant, then the price is quoted irrespective of the number of office actions that occur. If hourly billing or stepwise flat fees (charged based on the different steps involved in the process) are preferred, then what they finally pay depends on the number of office actions that occur. One type of billing is not necessarily better than the other; there are just three different options that suit different types of clients in their particular situation.

Can you exemplify cost reduction achievable by your improved approach on a specific market?

The cost reduction triggered by the new model falls into the range of 20-40% of the costs involved in foreign filing, as can be seen in the figure below.

Fig. 2: Cost reduction achieved by Dennemeyer flat fee prosecution

 

Read more about the flat fee prosecution service.

Read the interview given by Dr. Köllner for the online 2014 Intellectual Property Awards supplement by Acquisition International.

View the full list of awards received by Dennemeyer in 2014.