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Jean C. Baker quoted in article “Patents Pending: IP Attorneys Advise Clients on Longer Process”

Wisconsin Law Journal

Quarles & Brady patent attorney Jean C. Baker, who has 20 years experience, said that it’s particularly difficult for someone just starting out to have an accurate expectation of how long the process will take.

“We have attorneys here that filed applications years before they started seeing office actions,” she noted.

Baker also attributed the lengthier process to more complex applications, especially in the technology industry, and increased back and forth among patent examiners.

“They [examiners] are getting different things to look at than 10 years ago,” she said.

That may be why examiners appear to be less confident in granting applications and there always seems to be a lot of “double-checking.”

“There are more situations where people agree to something on the phone, then change their minds because they go up the chain and someone else disagrees with them,” Baker said.

In those cases, inventors often have to file a continuance or appeal the decision, which means an additional cost.

“That’s another filing fee, another office action and more lawyers’ fees,” Baker said. “You can easily add $3,000 to the process just because an examiner wanted to clarify something you had an interview about.”

Originally published in the Wisconsin Law Journal, October 26, 2009