Patents – Applications, Opinions & Challenges
Protecting inventions is an art form, and you get what you pay for with a patent application. Lower tier attorneys can obtain patents cheaply, but with weak claims that may be evaded by competitors. Unfortunately, a layperson isn’t likely to be able to recognize the weaknesses in pending or issued patent claims. Seeking the appropriate degree of patent protection is a matter of balancing costs against benefits based on the circumstances. A patent attorney does not uphold the legal duties to a client well by applying a one-size-fits-all fee formula based only on the type of subject matter an invention involves. It is important to use your resources effectively, and not file an application if the likely cost to benefit ratio doesn’t warrant it. I turn away most prospective clients in the half-hour to hour initial interview (which is free), based upon likely subject matter ineligibility, prior art that’s too close, or other reasons. Resources should be directed to other business objectives in these cases.
Some amount of prior art searching usually will be done in the process of preparing a patent application (included in the fees noted in the next paragraph), but not enough to independently provide much confidence in the lack of relevant prior art. If more prior art searching is desired, an appropriate search firm is usually enlisted and will work on a flat fee basis (usually $300 to $750 unless specific literature is to be searched). About an hour of attorney time is then needed to review and explain the search results for the client.
Preparing and filing a patent application is usually done for a flat fee determined by the complexity of the subject matter, any known prior art difficulties, and the client’s needs. My flat fees usually run from $4,000 to $8,000, plus there are Patent Office fees (typically under $1,000 for an individual or small business), and often professional drawings are needed ($250 to $750 for reasonable subject matter and number of drawings). Subsequent work, typically on the order of half the initial costs, is then needed to prosecute the application.
Where useful, one or more design patent applications may be filed on a product as well, typically for a flat fee based on the complexity of the drawings, prior art issues, and how many distinct product variations there are.
A provisional patent application may be appropriate, however, my philosophy is that provisionals should be as complete as possible including a well thought-out set of claims. In my experience, clients who have had provisional applications filed by other attorneys on the cheap have been harmed by doing so, with a false sense of security that the provisional was adequate to support the claims of a subsequent proper application. That is worse than a waste of money.
International (Patent Cooperation Treaty, or ‘PCT’) applications may also be filed if protection outside the U.S. is sought, and can be done on a flat fee basis as well. If it is known at the outset that a limited set of countries are of interest, those can be filed in directly without a PCT application. A network of diligent, effective, and reasonably-priced foreign associates is used for the foreign filings.
If you think some aspect of your product or service might be patented, an opinion from a seasoned patent attorney can provide critical go/no-go or design-around information. It can also help avoid the imposition of multiplied damages for infringement. I have extensive experience in authoring written opinions tackling complex, difficult cases. In cases where the issues are more clear-cut, a less formal opinion may be rendered inexpensively.
Similarly, if you’re considering initiating a Patent Office challenge against a third party’s patent, it may be desirable to obtain an opinion on validity or infringement of the patent. If the patent isn’t infringed or conversely there are no clear bases of invalidity, it may not be desirable to start such a costly proceeding.
If you’re considering suing a third party for infringement of a patent that you own, a second opinion from an outside patent attorney should help guide this critical decision. Litigating patents for many years left me with the view that litigators tend to prefer litigation over solutions that might better serve the client.
Anyone can challenge a patent on validity grounds, through an ex parte reexamination or an inter partes review (IPR). (There are other proceedings, but these are the most commonly used). While these proceedings are expensive, they require only a fraction of the cost and duration of litigation and may yield more favorable results for the challenger. A registered patent attorney skilled in challenging and defending patent validity is needed to handle these proceedings.