There are a large number of inventors and companies out there now that want patent work done as cheaply as possible. There are times when it might be tempting to seek the lowest fees possible for preparing a patent applications. I have seen ads for $1,400 patent applications. There is simply no way to have a quality patent application prepared for this price.
DIY Patent applications can end up costing the inventor more - not less
Some inventors may attempt to prepare their own patent applications and then ask a patent attorney review it to make sure that there are no obvious mistakes. The reason for preparing the applications themselves is that the inventors believe that this will save money on preparation costs. Unfortunately, this is usually not the case, and I tell these clients this fact up front. Unless the inventor has significant experience with preparing and prosecuting patent applications, the application will undoubtedly need a lot of work by a patent attorney, as patent attorneys have significant experience working within the patent system and with patent examiners. They spend a great deal of time keeping abreast of changes in the law that could affect patents.
These applications prepared by the inventors may be very brief, perhaps 8-10 pages with a drawing or two. The invention will often be described in very general terms because the inventor is afraid that specific descriptions will unduly limit the invention. In this case, the patent attorney generally has to start over. One cannot get a patent on a general idea. One must describe specific implementations of the invention. This does not mean that the invention must be very specifically claimed.
In other cases, the inventors may have an application of adequate length for the complexity of the invention, say 30 or so pages, with 10 or so pages of drawings. In fact, sometimes these patent applications may be more akin to a research paper, so they will include large amounts of extraneous details on the background or theory of the invention. In this situation, it will probably take a patent attorney just as long or longer to adequately review the entire application, discuss the details with the inventor to fully appreciate and understand the invention, and then make corrections and changes based on the attorney’s experience in patent law and adequate understanding of the invention. This does not save the inventor money.
Changing patent counsel can’t make up for an inadequate patent application
Another typical situation is where a patent attorney is asked to take over the prosecution of a pending patent application because the client is dissatisfied with their current counsel. The client believed that the invention would be patentable and that the examiner should be persuaded of this fact quickly. They have also had commercial success with the invention, but are afraid that if they don't get a patent, knock-offs will appear that will undercut their prices and knock them out of the market.
Clients in these situations are often correct--certain aspects of the invention are patentable. Upon review the specification, however, it may be that the application is only 8 or 10 pages long. The application was prepared in a way to save money when it was prepared and filed (often a couple years earlier). Now, many of the features that seem to make the invention patentable are not sufficiently described in the specification; descriptions of these features cannot be added to the claims because they would constitute new matter. Patent attorneys do the best they can to salvage something from the application for them, but there is a lesson here. If the description contained more details and was say 15 or even 20 pages long, these aspects of the invention could be added to the claims. This is not to say that longer applications are always better, but in general this is the case.
Treat every patent application as a million dollar invention
The best practice is for each invention should be treated as a million dollar invention when the application is being prepared. At that time, who knows which ones will be? I always tell clients that patents are speculative investments. You can't tell from the start which inventions will be successful and worth the investment; you can't be certain which will be granted broad patent protection; and, perhaps most importantly, getting a patent doesn't mean the product will be successful in the marketplace. If you don't spend the time and money to prepare an adequate patent application, it doesn't matter. The resulting patent, if any, will only be worth what you paid for it.
When comparing the services of an attorney who charges $800 per hour with one who charges $75 per hour, one must realize that the attorney with the low-ball rate would undoubtedly charge a higher rate if the market demanded it. If he can be just as busy charging $300 or $400 per hour, why would he continue to charge $75 and make less money?
This isn't to say that a higher rate always gives you a better product. One should also take referrals and other factors into account when comparison shopping for patent services. Sometimes a better patent attorney may choose to work for a smaller firm or in a smaller market where rates are lower than those in the big city at the big firm. His or her work may be just as good or better than the big-firm attorney in New York or DC. When a price is too good to be true, however, it probably is.
On the point of whether to begin a patent application by preparing the claims or the specification, I have done it both ways. I generally find, however, that preparing the claims first is advantageous. In this way, I can confirm with the inventor his or her understanding of what the invention actually is. I then prepare the written description. I try to make it as detailed as possible and get the inventor to provide me with as many different implementations, embodiments, and optional features as I can. It is indeed an iterative process: when preparing the description, it is inevitable that I will discover features that that should be claimed, and vice versa. And yes, all of this takes time; more than $1,400 worth of time.
I will often discover during prosecution that there are features of the invention that I need to add to the claims or that are patentable that were not included in the original claims. By having an adequate disclosure from the beginning, adding such claims is easy. If the description is too terse, however, this can't be done. New matter cannot be added to a pending application during prosecution.
When a client comes to me with a new idea for a patent application, I try to get all of the details of the invention from them and then provide what I believe to be a fair and realistic estimate of the cost to them based on the time it should take to adequately describe and claim the invention. Sometimes my estimate is too high and the actual cost is lower; sometimes things happen that raise the costs. For tips and strategies to keep costs down and get better patents, see the follow-up post to this article.
The bottom line is that in patent preparation and prosecution, like most everything else, you get what you pay for.
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.