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Jan 19, 2021 11:15:00 AM

How to Keep Patent Costs Down and to Get Better Patents

by Matt Osenga

Patent notebook

One thing that inventors often do not realize is that simply getting a patent on a product or service does not mean that the inventor will make money. Even if you get a patent for your invention, this does not mean that you will be able to successfully commercialize or market the invention. There are numerous inventions that have been patented that have never seen the light of day. Spend a bit of time going through patents at the PTO website, or Google Patents, and you will see that this is true.

There are many reasons that these patents do not result in marketable products, including a lack of funding or ability to take the invention to market, a lack of understanding of the market, the availability of cheaper alternative products, or simply that nobody is interested in what the inventor has invented. Some companies also file patent applications simply to block competitors or to obtain another patent in a competitive IP marketplace even though they do not plan to create the product claimed in the patent.

The cost of obtaining patent protection is likely to be a small part of the overall cost of commercializing and marketing the invention. If funding is not available to obtain a patent, chances are that it will be difficult to secure funding to market the invention. Below are some strategies for reducing patent costs and obtaining better patent protection.

Prior Art Search

If an inventor plans to develop and market a product, it is important that a clearance search be performed prior to doing so. This will help determine whether the product or service the inventor seeks to market may run into infringement issues with patents owned by third parties. In trying to save costs, it would be better to know that the product can be developed and commercialized without running into these other patents. Otherwise, a great deal of time and money could be spent to develop the product and file a patent application that the inventor can not even practice without risking accusations of infringement.

A search also provides the benefit of determining whether it is worthwhile to file a patent application and what type of protection may be available. Most inventors are not skilled at searching the PTO databases or foreign patent resources. It is not cost-effective to have an attorney perform such a search. A company that specializes in such searches can perform such searches efficiently and can save a great deal of time and money down the road. Depending on the complexity of the invention and search, the cost is generally less than $2,000 and usually less than $1,500. Patent attorneys have standing relationships with these search companies so that the attorney can order searches quite efficiently.

This is not to say that inventors should not spend time searching the internet. A few hours on Google can certainly save time and money as well. And the inventor should let the attorney know about the products and patents of which the inventor becomes aware that are closest to the invention, such as products or patents by competitors. For one thing, the PTO requires disclosure of material information of which the inventor may be aware, but this also assists in the preparation of a patent application by knowing what the inventor considers the closest competitive product or patent.

Provide the Best Description and Drawings that You Can

Inventors should take some time to review other patents to see the level of detail that is generally required in patent applications. The more the inventor can prepare, the less time the patent attorney will need to spend on the application. Try to include as many alternative ways of practicing the invention as you can think of. Again, other patents can be found on the PTO website, Google Patents or other sources.

In the US, the patent system is regulated by the courts, the PTO, and Congress. In recent years, these entities have been making preparing patent applications more difficult and expensive. One of the take-away lessons from this trend is that the more detail and information that is included in the description of the invention and the more alternatives that are described, the greater the chance of obtaining a strong patent.

Conclusion

And then, you have to be patient. Once the application is filed, it will take over a year and potentially several years before the PTO will examine the application. And no, a provisional application will not be significantly cheaper than preparing a non-provisional application because provisional applications should be as complete as possible when filed in order to be of use to the patent applicant.

Remember, the inventor knows a great deal more about the invention and related technology than the patent attorney does. The more help and assistance the inventor can provide, the more efficiently the patent attorney can prepare a strong patent application.

For help with your patent or intellectual property needs, please contact Matt Osenga at (804) 565-3531 or mosenga@goodmanallen.com.

More information abut the costs involved in a patent application can be found in Matt's previous post, "Patent Application Costs".


This blog is made available by Goodman Allen Donnelly for general information, and does not constitute legal advice. By reading this blog, you understand that there is no attorney-client relationship between you and the firm. This blog should not be used as a substitute for competent legal advice from a licensed professional attorney in your state.

 

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