Patent attorney Mark Bergner provided a great post on Patently-O last week about ways for independent inventors to reduce costs when working with a patent attorney to prepare a patent application. I second everything that he included in that post and add a few more points that I believe are worth emphasizing.
Mark’s point about the costs of obtaining a patent and the costs of commercializing a product is worth repeating. 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, www.uspto.gov, and you will see that this is true.
Prior Art Search
This leads to a point that Mark did not cover. If an inventor plans to develop and market a product, it is important that a clearance search be performed prior to his doing so. This will help determine whether the invention may run into problems with patents owned by third parties. In trying to save cost, 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.
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.
This is not to say that inventors should not spend time searching on the internet. A few hours on Google can certainly save time and money as well. And the inventor should let the attorney know the closest products and patents of which he becomes aware. 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
I do want to emphasize Mark’s points about preparing a written description and drawings of the invention. Take some time to review some other patents to see the level of detail that is generally required in such a document. 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.
If you’ve been following this blog, you know that the courts (especially the Federal Circuit), the PTO, and even Congress are 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.
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. I covered this issue in an earlier post.
As Mark states in his post, 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 do his part.