Inventors and entrepreneurs who shop around find that if they take their invention to a number of different patent attorneys they are likely to get a number of different quotes for services ranging from patent searches to patent applications. In fact, you have probably seen the ads on the Internet where a patent attorney or patent agent proclaim that they can prepare and file a U.S. nonprovisional patent application for some ridiculously low price, perhaps as low as $1,400. It is my opinion that there is no legitimate way to adequately prepare and file a nonprovisional patent application for $1,400. In fact, the lowest quotes we typically provide are for between $6,000 to $8,000 plus the filing fees and costs of drawings. See Cost of Obtaining a Patent. So why the great disparity? The first thing to understand is that like everything else in life, you get what you pay for. There is just no way to escape that economic reality.
Often times a patent attorney or patent agent will start with drafting a set of claims. In fact, it is probably accurate to say that about 70% of patent attorneys start with the claims. There is nothing wrong with starting with the claims, and there is nothing wrong with starting with the written description, it is a matter of preference really. The claims will be what defines the exclusive rights that are ultimately granted, and many patent attorneys and agents think in terms of claims. The difficulty comes, however, when a set of claims are drafted and then the written description is drafted to match the set of claims crafted. When this occurs the written description is no broader than the claims, which means that there is no support in the written description for anything other than the claims originally filed. This is one way that some bargain basement providers operate, and it can be catastrophic for the unknowledgeable inventor.
One of the things that many inventors and entrepreneurs fail to understand is that claims can be added to an application even after the application has been filed. Whenever I tell inventors this they are almost always perplexed because they are typically familiar with the fact that you cannot add anything “new” to your patent application after it has been filed. This centers around the concept of what is considered “new matter.” There is an absolute prohibition on the addition of new matter after you file a patent application, but what is “new matter”? The answer is almost always a surprise.
If an applicant amends or attempts to amend a pending patent application the issue of whether that which is being amended constitutes “new matter.” Typically what you want to do is add a claim not previously presented, so the patent examiner will endeavor to determine whether the claim you are adding constitutes new matter or whether it is acceptable to be added to the patent application. Information contained in the specification, claims or drawings of the application as originally filed may be added to any other part of the application without introducing new matter. What this means is that it is imperitive that at the time you file your patent application your application; namely your written description, drawings and claims be as in depth and detailed as possible.
You want to have a description of a very basic, vanilla version of your invention, you want to have many examples of optional features, elements and characteristics. You want to describe the Cadillac version of your invention. So you describe all the various combinations and permutations that you can think of, because if you don’t then you have no ability to claim them as your invention. By rigorously describing your invention and the various alternative versions it could take you create an extremely detailed disclosure at the time of filing, which will allow you to later add claims without those claims being new matter. If what you seek to add was disclosed anywhere in the text or in a drawing, even in passing, you should be allowed to add a claim based on that information without there being new matter. But how are you going to do this if you have a short textual description with few drawings?
By spending little and allowing the written description to be no broader than the claims that are filed you are making a huge mistake. The reason I always start with the written description is because I want to be able to have as thorough and complete a description of the invention in writing as possible. Then I go to work on the claims. Invariably, whether you start with the claims or you start with the written text, you will need to go back and forth iteratively.
For example, after I write the text I start to work on the claims, then as writing the claims I will want to add certain things that might not be described as well as could or should in the text, so I return to the text to beef up the text. As I am beefing up the text thoughts come to mind for the claims, so I add that to the text to make sure its there, then return to the claims to add that information to the claims. Regardless of what you start drafting the application needs to be viewed as a unitary whole and that requires back and forth. It also requires that you stop working on the application for a while and come back to it. Just like anything in life, if you set it aside and pick it back up later you bring fresh eyes, a new perspective and the product becomes better. If you are paying $1,400 how many hours do you expect to get from the attorney or agent? How many days will they work on the application and come to it with fresh eyes and a new perspective?
When you file a patent application it is always necessary to file something that completely and clearly describes the invention so that others would be able to understand the invention. It is likewise important to file a patent application that explains the full glory of the invention. This is something a patent attorney can really help with. Invariably inventors will come and say they have invented X that does A, B and C. Upon review it might be noticed that with some minor alterations and enhancements the invention might not just be X, but it could morph into Y and Z, and could do D, E, F and G. If all you describe is X that does A, B and C, then you never get protection for Y and Z, or for D, E, F and G. Thus, one critical function a patent attorney can play is helping the inventor realize the full glory of the invention by working with the inventor to tease out variations and different versions of the invention. If you are not doing this type of brainstorming and just filing a short description with a few claims you are absolutely leaving on the table claims you could otherwise have obtained.
It takes time to prepare a detailed written disclosure that will support any number of claims, and there is just no way to rush it. Inventors and entrepreneurs intuitively know this, but still some get lured into believing that what they get for $1,200 is just as good as what they would get if they paid $8,000, which is unrealistic of course. You should not fall for what you want to hear when you deep down know it makes no sense. If you aren’t convinced ask yourself this: When you were in school and you had to write a paper for a grade, was the resulting paper better if you spent more time or less time working on the project? The reality is the more time you have to spend the better the work product. If you are not paying very much then you realistically cannot expect the same number of hours, nor can you expect the same level of quality.
I have a friend who works at a big law firm. He is one of the most sophisticated computer minds I have ever encountered. He charges between $900 to $1,000 an hour to work on a patent application, and he always has more work than he can handle. He represents large corporations who not only want patents but absolutely need patents because without them they really have no competitive advantage. These companies pay him this rate not because they like to overspend, but because he is THAT good. The truth is that those who have a specialized skill set charge more, and others who recognized the quality provided and know they need nothing less than top flight quality pay it. Now it is unrealistic for inventors or small businesses to pay those sums for patent work, but the story is not offered for that reason. Don’t fool yourself into believing that someone who charges $50 an hour is as accomplished as someone who charged $400 an hour or $800 an hour. If the person charging $50 per hour were as accomplished and could demand more wouldn’t they?
It is essential for inventors and entrepreneurs to treat their inventions from moment one like they will be the million dollar invention they have dreamed about, because if you don’t by the time you realize it is the million dollar invention it will be to late to do anything about. I preach about the need to set a realistic budget, investigate the prior art on your own first, work with crude prototypes, pieces and parts you have laying around in your garage. Inventors need to be frugal and continue to work in a fiscally responsible way. There will come a point in time, however, where things are shaping up and proving out. At that point you need to take steps to protect your invention, and you want to file an application with the most thorough and complete disclosure as possible. If your invention continues to prove out, becomes marketable and commercially relevant then you want to get a patent, and in fact you might want to establish a patent portfolio with multiple patents protecting various aspects of the overall invention. The reality is you will NEVER be able to do that if what you filed was a watered-down written disclosure that does nothing more than support the few claims you filed.
If a price like $1,200 to $1,500 is all you can afford that is one thing, but fooling yourself into believing you are buying a Cadillac, or a Ferrari when you are paying for a Yugo is ridiculous. In poker if you don’t understand the quality of your hand you get burned, and the same is true in the patent world. Spending all the funds you have for a patent that is extremely narrow and offers no opportunity to grow through the addition of claims that will later protect various aspects of your invention is almost certainly not in your best interests.
Frankly, if your price point is in the $1,200 to $1,500 range and you would likely be better off spending money to get a competent patent search, hiring a patent illustrator to create professional drawings and filing the application on your own. This is certainly far less than ideal, but if you do this, take into account what you learn from the patent search and use a tool like the Invent & Patent System you will at least wind up with as best a do-it-yourself provisional patent application filing as possible. Then you have 12 months from that point to be more aggressive, openly trying to market your invention to see whether it will make sense to move forward with a nonprovisional patent application.
Now a word of caution — BE CAREFUL! If you can afford to hire an attorney that will result in the best work product, the broadest disclosure that is justifiably supporting your invention and claims that will be useful to your commercialization efforts. The patent process, from interpreting searches to drafting patent applications to writing claims and ultimately prosecuting the application at the USPTO is extremely complicated. You will do yourself tremendous disservice if you fool yourself into thinking that a bargain basement price will result in what you need. Similarly, you will do the same disservice if you fool yourself into thinking that you can do just as good a job on your own without the assistance of a trained professional.
Good luck and happy inventing!
Join the Discussion
15 comments so far.
jodiOctober 18, 2012 10:40 am
step back –
>>> “boring part which is most effective for blocking off your competitors among the many possible neck points in the Grand Canyon of possibilities”
Do you really think I’m after some exciting feature? Do you really think I favour spending all this time to write abstract legalese specification vs writing code and seeing it come to life and being deployed in the field?
Furthermore, the “blocking competitors” is exactly the point of better patents that I speak of. Sorry, but no Patent Attorney or Agent will ever come close to understanding the competition, the landscape, and the various minefields that have already been tried over the past ~15 years – especially not in 1-2 weeks.
So I believe it’s not my assumptions that are incorrect, but rather your assumptions of my original post that are invalid.
step backOctober 17, 2012 07:28 pm
It wasn’t meant to be personal. Sorry.
Most inventors have emotional attachment to their inventions; especially the technically nifty parts.
However, sometimes, in terms of business judgment; it is better to focus claims on a boring mundane part rather than the nifty because it is that boring part which is most effective for blocking off your competitors among the many possible neck points in the Grand Canyon of possibilities.
Hope that little pointer helps you in your DIY paradigm. Good luck. 🙂
JodiOctober 17, 2012 06:42 pm
step back –
You are correct that I have emotional attachment – who wouldn’t. Likewise you likely have similar attachment to the current practice (e.g. throw the idea over the wall to the attorney and have him write it) and possibly feel offended at my different views.
Also, you make the assumption that I have not brought in a 3rd person. Read my post again, I specifically did not say to do it all:
“there are advantages to doing much of it yourself”
“doing more of the work yourself”
I have watched Gene point out to various posters that they need to back up their statements, I would suggest your use of “No need to enumerate” is rather empty.
step backOctober 17, 2012 04:40 pm
You’re incorrect on many of your assumptions.
No need to enumerate.
However, most important of all; as an inventor you have emotional attachment to your baby …
and that can (and usually does) severely cloud your view of what is going on (and what you should be getting a patent for)
Just for that reason alone, it is always advisable to bring in a semi-detached 3rd person’s perspective by hiring a competent patent attorney or agent.
AnonOctober 17, 2012 04:13 pm
Thanks Gene – excellent meat on the bones.
Gene QuinnOctober 17, 2012 02:17 pm
I should say that a proper provisional needs… The fact that a provisional can just be a page attached to a cover sheet is why so many provisionals aren’t worth anything.
Gene QuinnOctober 17, 2012 02:17 pm
I understand what you say. I didn’t say write a provisional that doesn’t contemplate claims.
Like so much I (and we) try and jam decades of practical experience into a 2,000 word post or few hundred word comment. My process is to do a patent search and then write a detailed assessment that goes between 6 to 10 pages. I lay everything out. The law, the closest references and why I think they are closest and how I can think to distinguish them, what an examiner will likely do with those references and ultimately what I think the innovation must focus on… looking for that core uniqueness. That core uniqueness will be what at a minimum I believe needs to be in claim 1, the broadest claim. So our process is to give this to inventors, which many then pass on to investors and attach to a business plan. It also becomes our road map for drafting a patent application.
When a nonprovisional is ordered the first thing our firm does is draft the claims. That is typically done by Mark Malek or other highly experience patent attorney. Then the disclosure is drafted, ultimately with work proceeding going back and forth between spec and claims to make sure everything is there. When a provisional is ordered we assume that claim 1 will be that which I say needs to be in the broadest articulation of the invention (which would have been translated into claim 1). We then focus on the written disclosure.
This works very well with software, particularly since many clients have no code when they come, just some basic design document. It also works well with ongoing invention that is not complete.
So I wouldn’t ever say you should disregard claims, but I also don’t think you can spend all the client’s money writing a good claim set in a provisional and then have just that claim set without disclosure. So we prefer to have one heck of a complete disclosure. We also know that as the thing takes on more form and gets coded more will be learned.
JodiOctober 17, 2012 12:27 pm
Depends. Being someone who is starting a software company and feels patent protection is critical to my long-term success/failure – my perspective is somewhat different.
This article seems to target the sole inventors and small businesses looking at bringing innovative products to market since medium-large corporations do not skimp on patent filing costs (at least to my knowledge). Next the assumption is made the inventor has little-to-no knowledge of patents and simply throws the idea over the wall to the patent attorney or agent. While that assumption may be true in vast majority of cases, I suggest there are advantages to the sole inventor or small business to invest the time&effort to gain knowledge of writing a patent and then writing the bulk of themselves – with the exception of the Claims (although initial rough drafts could/should also be done).
Sure, if you’re focused on the short-term then writing a patent isn’t easy nor efficient. But if you’re long-term focused (which sole inventor or small business needs to be) then there are advantages to doing much of it yourself – one of which the patent attorney/agent can NEVER truly understand your vision, the competition, what your industry will look like in 5-10years, etc…
In other words, by educating yourself about patents and then doing more of the work yourself, you not only get a better quality patent but as a side-effect you keep your attorney costs down. Now, whether that cost reduction is greater than the cost increase in your initial investment plus writing costs is to be seen (includes many factors).
Now I know I’ll attract heat for the above suggestion as heresy – but consider this: the vast majority of patents are filed using the “best practice” of the engineer/inventor throwing the idea over the wall – yet most patents return $zero over their lifetime – so how good is this “best practice”? In other words, when you’re losing the game doing what you’re doing, what’s the worst that can happen if you change it up?
step backOctober 17, 2012 06:49 am
A Provisional does not “need” anything.
It’s just a piece of paper.
Now as to what an inventor needs to do in order to protect his/her property rights, that is another story.
As to what an ingrate needs to do in order to violate, destroy or belittle the inventor’s property rights, that is another story.
AnonOctober 16, 2012 07:47 pm
A concern I think I share with Inventor0875 is shown in the answer you provided at 3:10 PM.
Whether or not claims are needed is immaterial to writing a document that must support claims.
If you write your provisional without claims in mind, it will naturally (and dangerously IMHO) lack the proper thought and diligence that a nonprovisional should have.
If you are filing before the invention is complete – what exactly are you filing? Keep in mind that filing is considered a constructive reduction to practice of the invention. So something is complete at the time of filing, right?
Or perhaps I am a bit sensitive to this, as I have on more than one occassion had to explain to an inventor that a provisional shouldl be on the same work product level as a nonprovisional if later support for claims will be desired. If you don’t have that support for later claims, then the filing date saved is quite meaningless. To me, a strong disparity in cost (other than government fees) is sending the wrong message that it is OK for provisionals to be quick and dirty.
Gene QuinnOctober 16, 2012 03:10 pm
A provisional does need to have as much support as would a nonprovisional patent application. In most situations, however, a provisional patent application is filed before the invention is deemed complete by the inventor. You will almost always (if not always) be able to file a patent application to support the invention well before all tinkering is complete. So many will elect to file on what they presently have. That being the case it is impossible to describe what is yet to be envisioned.
If the invention is complete then the only cost savings associated with a provisional would be that less time is required because no claims need to be included.
Inventor0875October 16, 2012 01:34 pm
For example, the costs at the linked page “provisional patent application” above.
More generally, the AIPLA Economic Survey $ differences between Provisional and Non-provisional.
In general in the industry, a Provisional often seems to be mentioned/quoted at half to even a quarter of the cost of a Non-Provisional.
Especially, since the gutted grace period of AIA may require even more applications.
Mark NowotarskiOctober 16, 2012 12:38 pm
How can a provisional be so much lower cost than a non-provisional?
Which “cost” are you referring to? I don’t see provisional cost estimates shown above.
Inventor0875October 15, 2012 11:18 pm
How can a provisional be so much lower cost than a non-provisional?
To assure solid provisional coverage of the ultimate non-provisional claims, multiple iterations of claims versus prior art versus description/figures would still be needed in a provisional, as you describe above.
Given that the matter in a provisional application needs to have the same level of claim support as in the ultimate non-provisional, I would expect the cost of a provisional to be close to the cost of a non-provisional.
If the iterative effort is not done or is reduced for the provisional, then isn’t there risk of loss of the provisional priority date for wanted/needed claims.
At the other extreme is a riskier provisional approach of just filing massive detail on everything with limited iterations, and hoping to discover support for the wanted/needed claims hiding in the provisional, when the non-provisional is prepared.
STEVEN J. FROMM, ATTORNEY, LL.M. (TAXATION)October 14, 2012 06:59 pm
Hey Gene: Very informative post. As a tax attorney, I learned quite a bit from this article. From my side of the street the analogy is very apt when it comes to estate planning. I got a call from a woman last week and she had received a very low ball quote for wills, trusts, etc. She had a sizable estate and the attorneys she spoke did not concentrate in this area of the law. I explained to her the same type of issues you raised in your post but in the estate planning area. Not sure if she will call me back but her estate was sizable enough and her needs unique enough to retain an experience estate planner.