Patentability Assessments: In-House vs. Outsourced – Which is More Effective?

The process of patentability assessment plays an important role in determining whether an innovation can be protected under patent law. It defines the overall patent strategy success or failure. There are some companies who claim to spend as much as 50% of their patent application preparation budgets only on the patentability assessment and priori art search. As businesses define their IP strategy, they face a significant decision: Should they manage patentability assessments and patent drafting internally by themselves, or is it more advantageous for them to outsource these tasks to specialized patent service providers? This choice can have significant implications for a company’s innovation strategy and overall success of the patenting activity.

The Case for In-House Patentability Assessments

For many companies, keeping patentability assessments in-house offers distinct advantages. They have a direct control over the assessment process which allows those firms to tailor their approach to their specific needs and strategic goals. In-house teams are generally well-versed in the company’s technology and market landscape. They can provide a nuanced evaluation that has a higher chance to align closely with corporate objectives as opposed to an external service provider.

Consider a technology firm that develops cutting-edge solutions in-house. Their internal team who is deeply familiar with the intricacies of their innovations can leverage their intimate knowledge to conduct patent searches and assess patentability with a degree of specificity that external providers might not match quickly. This alignment with the company’s strategic goals often results in a more relevant and precise evaluation.

However, the in-house approach is not without its challenges. Conducting thorough patentability assessments demands substantial resources, including skilled personnel and access to up-to-date databases. Smaller companies or those with limited budgets find these costs and resource allocation required to build and maintain an effective internal team quite daunting. Moreover, the potential for bias exists—internal teams might inadvertently overestimate the patentability of their inventions due to their close involvement with the technology, but the reality is something else.

Staying current with evolving patent laws and regulations adds another layer of complexity. This requires continuous investment in training and resources. Most innovation companies do not have these skills. They often believe that they can write patent drafts and do the searches as it appears to them a regular search or writing work, but that’s very dangerous. A patent draft is a techno-legal document and even slight nuances in the application draft can lead to severe damages that are irreversible. Once you have submitted it with the patent office, there is no chance to reverse it. It’s permanent. We have seen most inventors find themselves in a bad situation whenever they did not avail expert outsourced services.

The Benefits of Outsourcing Patentability Assessments

Outsourcing patentability assessments to specialized patent service providers such as Professional Patent Drawings (PPD) offers its own set of advantages. These firms bring a wealth of expertise and advanced tools to the table. This results in highly detailed and accurate assessments. They are experienced in conducting comprehensive patent searches and evaluations which is invaluable. Particularly, for complex or high-stakes assessments, it’s always recommended to utilize external expert agencies. They may appear t add some extra costs in beginning, but it saves huge amount of money that would otherwise be spend due to lack of expertise down the lane. Imagine a slight trivial mistake can cause you a rejection which requirements a re-submission and amendment costing you extra few thousand dollars later.  This is just about one office action rejection, there are many more challenging situations where even spending extra money later cannot revoke the damages occurred.

Imagine a biotech company exploring a landscape filled with intricate and rapidly evolving technologies. By outsourcing their patentability assessments, they gain access to experts who are adept at sifting through vast amounts of data and identifying key factors that may impact patentability. This external perspective can also help mitigate any inherent biases, providing a more objective evaluation of the invention’s novelty and potential for protection.

Efficiency is another key benefit of outsourcing. Specialized firms can often conduct assessments more swiftly. This gives internal teams enough time to focus on their core business activities. However, this approach does come with its considerations. Outsourcing involves costs that can be higher upfront compared to maintaining an in-house team, but like mentioned above, it saves you thousands of dollars and irreversible damages that might happen later. We noted that in almost 90% cases, companies who do not use outsourced expert agencies have to suffer later. Some damages are reversible and costs a few thousand dollars and others are irreversible. Effective communication and integration with the external provider are critical to ensure that the assessment aligns with the company’s expectations.

As companies seek to determine how to get a patent on an idea, they must carefully weigh their options. Utilizing patent search and patentability search services effectively can provide valuable insights, whether through internal efforts or external expertise. The goal is to ensure that the patentability assessment process supports the company’s innovation strategy and maximizes the potential for securing valuable intellectual property.

By thoughtfully evaluating both approaches, businesses can make informed decisions that align with their goals and resources and pave the way for successful patent filings and a strong intellectual property portfolio.Top of Form

You can contact us if you are looking for a cost-effective patentability assessment, patent drawings, or patent application preparation in the United States, European Union, or any other country. Our two decades of experience can provide you necessary guidance and a successful IP strategic direction.