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Patent Prosecution Deliverable / Fixed Fee Framework

With sample contributions from over 60 companies across multiple industries, we are proud to announce the CLOC Patent Prosecution Deliverable / Fixed Fee Framework. This framework is the result of strong collaboration across the legal ecosystem including numerous corporate legal operations teams, in-house counsel, law firms, alternative service providers, and IP technology vendors.

What is the Patent Prosecution Deliverable / Fixed Fee Framework?
The tool aims to establish a common language and framework for in-house legal departments to use when defining scope for patent prosecution work with outside counsel, particularly if establishing fixed fee categories. The framework introduces the concept of deliverables and categories that corresponds to commonly encountered activity in patent prosecution work. These deliverables can be either core or optional. Hence, the framework provides a comprehensive list of core deliverables and optional deliverables with a list of corresponding, recommended UTBMS codes. These deliverables and respective UTBMS codes are categorized by major patent prosecution phases and grouped by commonalities.

The deliverable framework serves as point of reference for the engagement discussion between in-house legal departments and outside counsel, particularly useful if establishing fixed fee categories. Core and optional categories of work enable flexible and creative engagement terms, minimizing time spent defining the statement of work; this allows organizations to more readily customize service solutions, and promotes a focus on the business goals of an engagement.

Definitions
Phases Phases of a patent application
Categories Types of tasks related to a patent application
Core Deliverables Work product that are presumed within scope of the phase category of tasks related to preparing, filing and prosecuting a patent application.
Add-on Deliverables Optional deliverables of tasks related to a patent application
UTBMS Codes Suggested mapping of the Framework to UTBMS codes. UTBMS is an industry standard for e-billing codes. The Framework is intended for other related business processes but can be integrated with a UTBMS implementation.
Resources and Tools
Thank you to the members of the legal ecosystem, who participated in the creation of this tool led by: Mary O’Carroll, Google

Core Patent Prosecution Deliverable / Fixed Fee Framework Team
  • Mary O’Carroll, Google LLC
  • Jim Hannigan, Fenwick & West
  • Rajiv Patel, Fenwick & West
  • David Jorda, Fish and Richardson
  • Cathy Nguyen, Google LLC
  • Doug Luftman, Lecorpio
  • Randi Karpinia, Motorola Solutions
  • George Simion, NetApp
  • David Ishimaru, Yahoo