New to patenting?

Many small companies and individual inventors request that costs be kept to an absolute minimum.  I am highly sympathetic to this and am very conservative in assessing the time spent on each matter.  However, it is impossible to get a valid and enforceable patent without doing a thorough job of describing the invention, and that requires, first and foremost, that I understand it completely and comprehend its full scope.  The earlier I reach this stage, the less time will be required to draft the application.

Here are some tips that can be followed to keep costs down:

1) Provide me with the best disclosure that you can up front with some illustrative (even hand-sketched) diagrams, along with any design documents you may have, photos, a prototype if available—whatever will help communicate the invention.

Often, inventors will provide a one-page summary or a sales brochure of their invention that leaves out a significant amount of detail. It is going to drive up costs if I have to drag each and every relevant aspect of the invention out. Similarly, if additional design documents  are provided to me after a significant amount of work has already been done, it will take much more effort for me to integrate this newly added information with a nearly complete draft specification than if all information had been provided up front.

2) Get a search done by a professional searcher.

Obviously, you need to know whether your invention is patentable before spending time and money on a patent application.  It is not possible to do a good search on the Internet; although of course you may find your idea is old, you won’t have any confidence that it is new unless you have a patent search done by a professional searcher, as many ideas are patented that are never marketed.  Unfortunately, the results even of a professional search cannot be guaranteed, as pending applications are maintained in secrecy for 18 months, and there is no end to the amount of searching that can be done.  Also, you must understand that even if I conclude your invention is patentable, the Examiner to whom it is assigned may not agree, although this is relatively rare.

3) Try to do as much of the work as you can yourself.

I am very experienced in patent prosecution, and am generally technically knowledgeable, but may not know much about the subject matter of your invention—after all, by definition it is something new!  One has to be a quick study to succeed in this business, but it inevitably takes some time to climb the learning curve.  Your application will cost considerably more if I am required to do extensive research in the field of the invention in order to fill in a sparse invention disclosure. I will sometimes point inventors to a well-written patent in their general field and suggest that the detailed description and figures shown in the patent provide roughly the level of detail needed for their patent application.

However, it is not necessarily a good idea for the inventor to try to draft the patent application itself.  Patent applications must be written in a certain rather arcane manner in order to conform to the rules of the US Patent and Trademark Office.  It is usually much more work for me to rewrite an application to be consistent with those rules than to draft it from scratch.

Also, there are many inventors who are wonderful technical people, but simply cannot communicate well in writing (that's why they majored in physics and not journalism). It might be a good idea for such an inventor to work with someone (under a confidentiality agreement) who can write well to prepare an initial description. Although I can get all of the relevant information by talking with the inventor in person and over the telephone, if that is the sole means that I have of obtaining descriptive information, it is going to cost more. If the inventor has difficulty in communicating ideas and concepts both in writing and orally, it is going to be a very expensive patent application—no two ways about it.

4) Provide me with a nearly completed concept of the invention.

Nothing drives up costs more than to have the inventor continue to invent as the application is being drafted. One common issue is that if the patent attorney does a good job with the subject matter, the draft of the patent application may be the first time the inventor has ever seen his idea expressed in a complete, clear, and organized manner. This may cause the inventor to come up with alternate embodiments, do additional research, or to provide other features that might prevent a design-around.  Of course, these are all to the good, but it must be understood that the addition of completely new or different embodiments will substantially increase costs.

5) Answer any questions provided in a draft application clearly and completely.

Often I will prepare a draft application with a number of questions or comments, requesting clarification or additional detail. Some questions are intended to solicit lengthy responses, but only a bare minimum is provided or, worse, the information provided is completely non-responsive.  This of course requires more work.

6) Finally—be realistic.  The costs of obtaining a patent, even a relatively complex one, pale in comparison to the costs you will encounter in trying to commercialize your product.  Licensing is not easy, either.

I know I'm in trouble with an inventor if I throw out a fair cost estimate for preparing an application and the inventor breaks out in a cold sweat and starts suggesting a cost that is 50% of the estimate. It's one thing for an experienced business professional to haggle for lower costs, but in most situations involving the individual inventor, there is a significant lack of appreciation for what it will cost to do prototyping or pilot production runs, legal costs associated with non-disclosure agreements, trademarks, production and supply agreements, Underwriters Laboratories certification, FDA approval, etc. In the vast majority of cases, it is very expensive to bring an inventive idea to the marketplace, and the patent costs are typically a minimal part of those costs. If the inventor is not prepared for the entire undertaking, he is probably not going to willingly and cheerfully pay the bills, regardless of the quality and efficiency of the work done.

Of course, some patents and patent applications can be licensed, which passes the costs mentioned above on to the licensee.  However, it is not easy to license inventions in many fields, as many companies exhibit a “not invented here” mindset and are not receptive to new ideas.

This page was adapted from a post authored by Mark Bergner, Esq. of Chicago and is used with his permission.

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