On Friday, a new post on IPWatchdog caught my attention. While I co-sign the post written by Gene Quinn, the post was about an issue that I believe is so important that I feel I must add my two cents. The post concerned the cost of patent applications and prosecution.
I don’t want to repeat everything from the IPWatchdog post, but a few points bear emphasizing. There are a large number of inventors and companies out there now that want patent work done as cheaply as possible. Especially since the economy has tanked, many inventors and companies are attempting to low-ball fees for preparing patent applications. Gene mentions the $1,400 patent application. There is simply no way to have a quality patent application prepared for this price.
A typical situation that I encounter is where an inventor or company sends me a pending patent application and asks me to take over the prosecution because they are dissatisfied with their current counsel. They believed that the invention would be patentable and that the examiner should be able to 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.
Often, I find out that they are correct–certain aspects of the invention are patentable. When I review the specification, however, I realized that it is only 8 or 10 pages long. They didn’t want to spend much money when they had their application prepared and filed (often a couple years earlier), so they went with the low-ball price for its preparation. Now, many of the features that seem to make the invention patentable are not sufficiently described in the specification; I cannot add them to the claims because they would constitute new matter. I do the best that I 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.
As Gene notes, 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.
His point about the marketplace is also a good one. With a down economy many or most patent attorneys either didn’t raise their rates or even lowered them slightly the past few years, and rightfully so. The market dictated this event. When comparing the services of an attorney who charges $800 per hour with one who charges $50 per hour, however, 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 $200 or $300 per hour, why would he continue to charge $50 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 implemenations, 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. I previously provided some tips and strategies to keep costs down and get better patents.
The bottom line is that in patent preparation and prosecution, like most everything else, you get what you pay for.