What does the patent application process cost? If I take a do-it- yourself (DIY) approach to drafting my patent application, will it save me money?
Invest in a competent attorney upfront and you will save time and money in the end
As discussed in Chapter 9, I recommend retaining a competent patent attorney to draft the application and respond to Office Actions rather than taking a DIY approach. This will ultimately save time and money. The documents involved are complicated and should be handled by a professional. If not handled by a professional, an inventor might create problems that prevent securing a patent on the invention, are expensive to fix, or are not possible to fix. Utilizing the services of patent counsel will mitigate these issues.
A patent attorney will discuss costs and fees during the initial consultation. The costs and fees associated with the preparation and filing of a patent application with the USPTO is contingent on various factors discussed in detail in Chapter 9. Costs are related to out-of-pocket costs of preparing, filing, or representing the client in the patent matter. For example, money paid to prepare a drawing set is a cost. Money paid to the government for receiving and processing the patent application is a cost. By contrast, a fee is typically associated with the time an attorney requires to represent, advise, and prepare applications for a client. The time required to perform these tasks is multiplied by the attorney’s billing rate, and that price is a fee.
Costs and fees vary significantly according to the complexity of the invention and the breadth of protection desired. Even if the invention appears to be simple and straight forward, it may be somewhat difficult to prepare because we are trying to illustrate an invention’s uniqueness in the patent application. That is harder to do for simple inventions. Therefore work required for a simple invention would be costlier than expected. (See Chapter 9 regarding the relative costs of provisional and nonprovisional patent applications.)
What exactly am I paying for when I hire a patent attorney?
Experience, experience, experience.
The primary benefits of hiring a patent attorney are experience, know-how, and strategies that the patent attorney has accumulated over the years and utilized to help others in the inventor’s situation. Competent patent counsel can guide you through the process, keep you focused on the task at hand, listen to your business situation, provide a next-step plan, and spot problematic issues that may need to be resolved beforehand. A patent attorney will organize the information regarding the invention, draft the patent application, and prosecute it before the USPTO.
When hiring a patent attorney, the costs and fees depend on the client’s needs as well as the solutions developed by the attorney. Some alternatives are more expensive than others. Although clients generally prefer the least expensive option, competent patent counsel should provide a number of potential resolutions along with their pros and cons to guide an inventor through the patent process and help them make an informed decision in the matter.
Instead of selecting a patent attorney according to cost, I generally recommend that the inventor select an attorney on the attorney’s ability to craft a strategy for securing patent protection. With their training and experience, attorneys should be able to identify the options of the greatest value for the client. As such, a potential client may want to ask about a particular aspect of the attorney’s strategy for protecting an invention such as a claiming strategy when interviewing a patent attorney.
In my practice, for example, I generally recommend that startups seek meaningful, medium-sized claims instead of broad patent protection (i.e., broad claims). Why? Because broad claims are expensive. The attorney must generally prepare multiple responses to multiple Office Actions. Narrow patent protection, on the other hand, requires less work from the attorney and is less expensive, but may offer minimal protection. Startups are generally less well-funded and cannot seek very broad patent protection. Startups are generally satisfied therefore if they can launch a product with meaningful, medium breadth protection that would dissuade competitors from entering their specific market. This would be a cost-effective way to seek patent protection in the short term. It is important when searching for a patent attorney to seek someone who can articulate a claiming strategy and a strategy for cost-effectively building out the client’s patent portfolio that fits the client’s needs and will deliver the most reasonable cost-value balance for their services.