While patent filings may be down, appeals are up. Law.com offers an explanation:
According to the NLJ, patent challenges at the Patent and Trademark Office are up 70 percent this fiscal year, which began last October. The reason for the increase, say some IP lawyers, are stingier approval rates of patents at the PTO. This fiscal year only 44 percent of patents have been approved, compared to 66 percent five years ago. It’s no accident, according to lawyers who say that the agency’s inclination is to curtail the growth of patents.
The article also aserts that this appellate work offers a lucrative alternative alternative for patent lawyers and highlights an unusual alternative billing practice–charging by the page:
…appeals can run from $6,000 to $20,000. Craig Opperman of Reed Smith says that his firm charges $600 per page of an appeal brief.
This trend underscores the importance of being nimble in private practice. As work patterns change, it is important to take note and to adjust your marketing. In other words, instead of fighting for a slice of a shrinking pie, try some other desserts.
At the same time, it is not clear how charging by the page eliminates the uncertainty that comes with hourly billing or how it creates any incentives for counsel to be more efficient (two driving factors for in-house counsel who are looking for billing alternatives). True alternatives offer in-house counsel a fixed price (albeit with some contingencies built in).