Friend or foe? The effects of patent attorney use on filing strategy vis-a-vis the effects of firm experience

In the intellectual property (IP) and management literature, the question of how external patent attorneys impact patent filings has been understudied. The purpose of this paper is to advance this area of research by examining how the use of external patent attorneys influences the patent filing strategies of firms and what impact firms’ level of experience with the exclusive use of in-house resources has on filing strategies. This study, thus, provides insights into the strategic dimension behind patent filing, a process which is affected by patent attorneys’ work and decision-making processes.

The econometric analysis is based on a patent database of 922,553 patents which is combined with an EPO patent database covering applications from 1990 to 2010. The authors test the hypotheses for this study using patent indicators addressing the impact of in-house firm experience vs the use of external patent attorneys on firm’s filing strategy.

This research finds empirical evidence that external patent attorneys’ work has an effect on patent scope, international scope, and patenting speed. Moreover, it can be shown that external patent attorneys have a positive impact on most filing dimensions, such as patent scope, international scope and the Patent Cooperation Treaty option, whereas the level of in-house firm experience has a negative impact on most filing dimensions. This implies that external patent attorneys seem to pursue a “maximization approach” while experienced firms seem to pursue a more differentiated approach to filing patents, for instance, drafting narrower and more focused patents.

The study suggests that effective filing strategies require an integrated approach between diverse IP stakeholders. More particularly, filing strategies should be communicated and aligned between all actors, including external patent attorneys in order to achieve the targeted patenting output.

The current study develops a patent filing typology, which accounts for patent attorneys’ decision options. In providing insights into patent attorneys’ work and their impacts on intellectual property rights management, the study is a useful complement to prior research, which has predominantly focused on applicants or examiners.