Table of
Contents
- What
are the chances that I will make money from my
invention?
- How do
I know if I have a good or great
idea?
- What
is a Patent?
- Can I
get a patent on my idea or
invention?
- What
is the difference between a Design Patent and A Utility
Patent?
- Should I have a
patent search done?
- What
are Claims and why are they so
important?
- How
much will having a patent application prepared and
filed cost me?
- What
is the difference between a Patent Attorney and a Patent
Agent?
- Should I write my own patent
application?
- What are your
thoughts on provisional applications?
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1. What are the chances
that I will make money from my invention?
We have
absolutely no idea!
Your invention could be incredibly valuable to the
particular market segment to which it pertains or it could be
a dud. You are in
a better position to evaluate that than us. Sometimes timing
and luck play a significant role in bringing an invention to
market. And then
of course there is your commitment to the invention. Are you
willing to spend the time required to promote your invention?
Are you willing to spend the money necessary to pursue your
invention to its logical conclusion?
One thing is very certain; your chances of success are
lowest if you do not protect your invention with a
well-drafted patent.
In fact, your chances at licensing your
invention without a patent are essentially zero (of
course, there are always rare exceptions). The decision to patent
your invention should not be entered into lightly, but
if you are willing to devote the time, the money, the
energy and the perseverance necessary to pursue your
invention, the rewards can be huge, and not just in
terms of money but in terms of accomplishment.
One of our attorneys (Kurt Leyendecker) invented a
product, formed a company to produce and market that product,
and lived through the failure of the company. However, he
does not regret having taken the chance. In fact despite the
outcome, he claims to learned so much from the
experience that it has made him a better businessperson
and lawyer today. He
feels his entrepreneurial experiences allows him to
better assist his clients in their ventures.
In our opinion, the two most important
factors to the success of an invention are (1)
a novel and good idea for an
innovative product or process, and (2) a high degree
of commitment by the inventor. Everything else pales
in comparison.
And we would even be so bold as to say a very high
level of commitment can even turn an idea that perhaps isn’t
so great into a successful product or process. So if you have the
will, the desire and the fortitude to see the process of
bringing a new product to market through, than your
ultimate chances of success increase
significantly.
The actual invention of a new or improved product or
process plays a very small part in a product’s ultimate
success.
Obtaining a patent for your invention also plays a
crucial part in the process of bringing your invention to
market, especially if your goal is to license it to
others.
Most large corporations will not even look at
your invention unless you have at least applied for a
patent.
If you are going to produce and market your invention,
a patent is not an absolute necessity. However, if your
product is successful, watch out because a well-heeled
competitor may copy your product and cannibalize your market
share, and there will be nothing you can do about it.
To summarize, you are the key to the success of your
invention. If you have a good idea along with the will and the
persistence to pursue your invention, your chances of success,
although not guaranteed are much improved over the typical
independent inventor.
Obtaining a patent for your invention is your
price of admission and the first step on the road to
success.
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2. How do I know if I have a
good or great idea?
That’s the
million-dollar question.
Unfortunately, we cannot answer that for you.
Patent attorneys are experts at obtaining patent protection
for their clients and are not in the business of product
evaluation and marketing research. If you ask us
what our opinion of your invention is, we might give
it, but understand there have been plenty of products
that we thought would never make it and have, and
conversely, there have been products we thought were
great ideas that never panned out.
In general, you are a much better judge than your
attorney at determining the value of your invention. Presumably, you have
some knowledge of the field of art to which your invention
pertains. In
developing your invention, you may want to research related
products that are currently available and analyze the
differences between them and your invention. You may want to talk
to those who market similar products and have some feel for
the market size.
On caveat, do not reveal your invention to others
without first consulting with your patent attorney as such
disclosures could effect your ability to obtain patent
protection.
If you would like to explore the viability and market
potential of your invention, contact us and we will
try and direct you to reputable people who can help you.
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3. What is a Patent?
Simply,
a patent is a personal property right granted
by a government that gives the owner an exclusive
right to prevent others from making, using or selling a
claimed invention for a certain period of time. In the United States,
the term of a utility patent grant is 20 years from the date
of filing a patent application and the term of a design patent
is 14 years from the date of the design patent grant.
Of particular note, a patent does not convey to the
holder the right to make, use or sell their invention. Rather it only
prevents others from making, using or selling the
invention. In
certain circumstances a patent owner may be prevented from
making, using or selling his/her invention because the
invention is also covered by another patent owned by someone
else.
For example, lets assume you invented a pencil with an
eraser on it, and no one else had ever put an eraser on top of
a pencil. You
apply for and receive a patent. Now, nobody can make
your pencil with an eraser without your OK. But lets also assume
the pencil was invented a few years before and another
inventor owns the patent on the pencil. Your pencil has all
the features of the other inventor’s pencil except you have
added the eraser.
Unfortunately, your pencil reads on his patent and you
must get permission from him before you can make your
pencil. In the
real world of business, you would probably approach the other
inventor and reach some sort of agreement so that you can have
your pencil produced and sold. Perhaps, you would
have to license his pencil patent and give him a percentage of
the revenues generated from the sale of your pencil with an
eraser.
In reality, more often than not, no one else will hold
a patent that prevents you from producing your invention, but
the prudent inventor is wise to have his/her patent attorney
review the patent references identified in a patent search to
not only determine whether your invention is patentable, but
also whether your invention will likely infringe another’s
patent if it is made, used or sold. While both patent
attorneys and patent agents can legally provide advice on
whether a particular patent is patentable, only attorneys,
preferably patent attorneys, can provide advice about whether
your invention might infringe another patent. See
here for more about the distinctions between patent
agents and patent attorneys.
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4. Can I get a patent on my
idea or invention?
We have
observed over the years that many people think that in order
to receive a patent a person must invent something
earthshaking or of great significance. The truth is that
merit, potential and/or groundbreaking significance have
nothing to do with obtaining a patent for an invention. The United States
Patent Office makes no judgments as to the merit or potential
value of your invention. Rather, they look to see that an
invention satisfies three basic requirements: (1) utility; (2)
novelty; and (3) nonobviousness.
Utility is by
far the simplest requirement to satisfy requiring only that
the invention serve a utilitarian purpose. In other words, the
invention must be useful. Most inventions easily
satisfy the utility requirement. Some types of creations
excluded from patentability for lacking utility include
creative works, such as music, literature and sculpture,
scientific or mathematical algorithms, which are considered to
be discovered rather than invented, and purely mental
processes, which can be performed solely in one’s mind.
Novelty merely
requires that someone else did not invent your invention and
disclose it to the public before you. In general, a patent
search combined with a patentability opinion is very effective
in determining whether an invention is novel. If your attorney
believes that your invention isn’t novel, he/she will usually
recommend that you do not file a patent application.
Nonobviousness
simply requires that the invention not be obvious in light of
prior art to someone of ordinary skill in the art in which the
invention is to be practiced. Obviousness or the
lack thereof is very difficult to objectively judge. Not
surprisingly, nonobviousness is the most common hindrance to
having the claims in a patent application allowed. Further, it represents
the greatest source of disagreement between patent attorneys
and the patent examiners in the patent office. An examiner will
contend that a claim is obvious, the attorney will respond
with a legal argument why it is not, and this may go on and on
until one side gives up. Mind you, arguing with the examiner
costs money in terms of (i) having your attorney draft office
action responses and (ii) continuing the prosecution of the
invention.
Usually, the attorney will try to reach an accord with
the examiner in a telephone interview after the second and
typically final office action has been presented.
An obviousness
rejection by a patent examiner usually takes the form of two
or more prior art references (typically issued patents) that
when combined teach all of the elements in one or more of the
patent application's claims. Often, however, the
attorney can successfully argue that the combination of the
references is not proper even if the two references
contain all the elements of the claim. In order to
combine references, the examiner must demonstrate that the two
references pertain to the same field of art as the subject
invention and that there is a motivation to combine the
references.
Interpreting these legal standards and applying them to
the facts of a particular patent application and rejection are
not easy and are best left up to a qualified patent
attorney. Suffice
it to say, just because you think an invention may be obvious
does not mean that the invention is obvious in terms of the
requirements for patentability. Obviousness as viewed
by you is based on your common sense and life experiences
while obviousness relating to patentability is based on
statute and case law. In our experience, the legal
standard of obviousness is much narrower than one would
imagine and accordingly, can often be argued around to obtain
a patent.
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5. What is the Difference
between a Design Patent and A Utility Patent?
A utility
patent is typically what comes to the mind of most people when
they think of a patent.
Utility patents can be obtained for new and useful
processes, machines, articles of manufacture or compositions
of matter.
Utility patents may not be obtained for: printed matter
(usually protected with a copyright); naturally occurring
articles; scientific principles, mathematical laws; and
“inoperative” inventions, such as perpetual motion machines,
that are incapable of achieving a useful result.
Unless otherwise stated, throughout this web site
when we use the term “patent” and “patent
application”, we are referring to a utility patent and
utility patent application respectively.
Art is generally not within the purview of utility
patents.
Sculpture, paintings, and music are not considered to
possess utility (or usefulness) and are, accordingly, not
patentable.
Creative works are typically protected through
copyright. Patent
law does overlap with copyright concerning design patents.
Design patents protect the novel, nonobvious
ornamental designs of articles of manufacture. In other words, the
design patent protects the way an article looks. Unlike
utility patents, there is no requirement that the ornamental
design be useful.
Rather, a design patent cannot protect the features of
an article of manufacture that are dictated wholly by
functionality. It
is not uncommon to apply for and receive both a utility patent
and a design patent for the same article provided the novelty
and nonobviousness of the article resides in both its utility
and its ornamental appearance.
As mentioned above, sculpture is protectable through
copyright, but since it is an article of manufacture, it is
also protectable through a design patent. Because registered
copyrights are inexpensive to obtain when compared to design
patents (typically about $200 versus about $1000-2000) and
considering the much shorter term of a design patent (14
years), it is rarely prudent for a sculptor to apply for and
obtain a design patent when a copyright will provide adequate
protection.
Furthermore, since copyright protection actually
applies to a creative work immediately upon its creation, the
sculptor need not even apply for a registered copyright,
although by registering the copyright, the sculptor does gain
certain additional avenues of legal recourse against those who
copy his work.
Copyrights are not available, however, for
articles of manufacture that are primarily functional unless
the nonfunctional portion can be conceptually or actually
separated from the functional elements of the article. For
example, a 1.5-foot high sculpture of a person is protectable
through copyright whether the sculpture stands alone or serves
as the base of a table lamp. Interestingly, the lamp's
design (i.e. the sculpture) would also be protectable for use
in a lamp using a design patent. There is a degree of overlap
concerning copyright and design patent protection but in
general, design patents are most useful to protect the
ornamental and non-functional features of an article of
manufacture that possesses functionality.
Generally, a design patent by itself without an
accompanying utility patent is of little use to the
independent inventor. Some
unscrupulous invention companies have in the past used the
design patent as a way to inexpensively (for them) obtain a
patent for their customers. They, however, often
failed to inform the customer that the design patent
only pertains to the look of the device and that a
competitor could produce a similar device that has the same
functionality without infringing the design patent. And if the competitor
cannot produce a device having similar functionality as the
design-patented device without copying the look of the device,
than the design patent is probably invalid because the look of
the product is not wholly ornamental but is at least partially
dictated by function.
We
do recommend that an inventor or company consider obtaining
design protection when they intend to produce an article of
manufacture themselves and the design is unique enough in
their opinion that there is a concern about someone copying
it. Often a
design patent is a good companion to the utility patent as it
further protects a particular product.
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6. Should I have a patent
search done?
If you are a
solo inventor or a small company, the answer is almost
always yes.
Furthermore, any patent search should include a
patentability opinion and cursory review for infringement
issues from a qualified patent attorney (note that patent
agents can only provide patentability opinions and cannot
legally provide his/her opinion concerning infringement
matters).
For
$795, we provide a patent search from a professional
patent searcher based near the United States Patent Office and
an analysis of the identified patents. Based on this
analysis, we will give you an idea of the potential
breadth of any claims to be included in your patent. If it is determined that
sufficient claim breadth cannot be obtained for your
invention, you may decide not to file a patent application
saving the several thousands of dollars to draft and file the
patent application, as well as, the future expense of
prosecuting the application.
You may be
familiar with patent searches that are advertised at prices
from $250 to $500 on the Internet and in certain inventor
magazines. These
searches typically include a list and copies of the references
that were found to be closest to the invention, and a very
brief opinion of the searcher or someone with the search firm
concerning the patentability of the invention. Typically, these brief
opinions do not analyze the breadth of coverage that may be
obtained for an invention. Understand, however,
that most inventions are patentable in some manner over the
prior art if the patent claims that define the legal scope of
the invention are written narrowly enough. As discussed elsewhere
on this site, narrow claims result in patents that are not
very valuable; whereas, patents with broad claims are the most
likely to get licensed.
To get an idea of the potential breadth of patent
coverage obtainable for an invention, a more in depth analysis
of the prior art than is provided in the cheap searches is
required. We
have had clients come to us with results from inexpensive
searches who were unclear on how to proceed with patenting
their invention.
To have us review the results from one of these
searches, we charge about 2-3 hours of our time that
amounts to about $500-750. Ultimately, it is less
expensive to hire us to perform both the search and an
analysis in the first place.
If during the
review of the patents identified during the search, it is
determined that the one or more unexpired patents are
sufficiently close in subject matter to your invention, an
in-depth infringement analysis may be recommend. As discussed here, a patent only gives you
the right to exclude others from making, using or selling your
invention. The
patent does not give you the right to make your
invention. In
fact, you may be prohibited from making and selling your
invention by another patent. To determine whether
this is an issue an infringement analysis is performed. Depending on the
complexity of the subject patent(s), anywhere from about an
hour to 5-10 hours may be required to perform the
analysis. Of
course, this service will not be recommended unless a
potential infringement issue is identified during the
patentability analysis. In the majority of cases, no
infringement issue will be identified or if one is, the
necessary analysis can be performed within an hour.
It is to be understood that any
patentability or infringement opinions offered by a patent
attorney are limited to the prior art identified in the patent
search. Patent
searchers are not perfect and although they do their best to
identify all of the most relevant prior art, they can and do
occasionally miss a key reference. Since searches are
typically limited to U.S. patents alone, any pertinent foreign
patents will not be identified. The scope of the
search can be expanded to include various foreign patent
offices, such as the European and Japanese Patent offices for
an additional search fee. Further, searchers do
not look for prior art that has not been patented. In fact, we
recommend that before a search is even performed that the
inventor get on the web and search for any information that
may be pertinent to his/her invention. You may find your
invention is already on the market or was at some time in the
past, in which case there would be no need to perform a
formal patent search or apply for a
patent.
If you found the answer to this question helpful, feel free to peruse the other questions on this page and the entirety of our patent Patent Services section of the web site.
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7. What are Claims and why
are they so important?
Simply,
claims are one-sentence descriptions of
what the inventor considers his invention. The claims
legally define the scope of an invention and
inventor’s right to exclude others from making, using or
selling his invention.
Without question, the claims are the most important
part of the patent application and subsequent patent.
The claims are
also the most misunderstood part of a patent application. They
are often written in patent attorney legalese and are very
difficult for someone not trained in patent law to read and
properly interpret. The typical
inventor is unable to judge the quality of the claims provided
in a patent application and if the patent attorney has
not done a good job, the scope of protection of any resulting
patent may be severely limited to the point where
the patent has little or no value in preventing
other from copying your invention. It is an unfortunate
reality that many patent agents and attorneys are also not
very adept at writing good legally defensible claims, whether
that is because writing good claims would take too long or
because of simple ignorance concerning the rapidly changing
state of patent law.
On the other hand, a good patent claim may
provide you with a scope of protection that is greater than
you contemplated before you went to see your patent
attorney.
Accordingly, the choice of quality patent counsel is of
the utmost importance.
To give you a
better understanding of claims, there are basically two types:
independent claims and dependent claims. An independent claim
is a complete description of the invention in and of
itself. It
comprises a set of elements (or limitations) that when taken
together in combination defines a novel and nonobvious
invention. A
dependent claim is a claim that includes additional
limitations that further define and limit an independent
claim. Consider
the example of a pencil with an eraser as provided below:
1.
A writing device comprising:
(i) an
elongated core comprised of a first material, the first
material having a property of exfoliating when frictionally
engaged with and moved across a surface;
(ii) an
elongated shell comprised of a second material substantially
surrounding the elongated core, the elongated shell having a
first end; and
(iii) an
eraser, the eraser being attached to the first end.
2.
The writing device of claim 1, wherein the first
material comprises graphite.
3. The
writing device of claim 2, wherein the second material
comprises wood.
Claim 1 is an
independent claim. Claim 2 is a dependent claim that includes
all of the elements of claim 1 plus the additional requirement
that the first material be graphite. Accordingly, if these
claims issued in a patent and a person made a wood pencil with
a lead core, he would be infringing claim 1 while not
infringing claim 2, because claim 2 requires that in addition
to all the elements of claim 1 that the core be made of
graphite. Claim 3
is dependent on claim 2 and accordingly includes all the
limitations of claim 2 and claim 1 from which claim 2 depends
as well as the additional limitation that the second material
comprises wood.
Accordingly, if a person made a mechanical pencil with
a graphite core material and a plastic shell he would still be
infringing claim 1 and claim 2, but he would not be infringing
claim 3.
How does an inventor know if the claims that a patent attorney
wrote for his invention are any good? We do not have an
answer for you. Our basic
response would be to question your patent attorney before you
hire him. Listen
to his responses. Does the attorney seem like he takes the
claims portion of a patent application seriously. Ask him/her how much
time it takes to draft a set of claims. If he/she indicates it
can be done in a couple of hours, you can rest assured that
the claims will probably not be very good. If you prospective
patent attorney says he can draft an entire application for
$3000 and his hourly rate is $225 or more, you can be
confident he is not going to spend more than a few hours on
the claims.
In our opinion to draft three really good sets of
claims (you can have up to three independent claims in your
application for the basic filing fee) takes around 6-8 hours.
And incidentally, the shorter the length of
the claims, the better they are likely to be. Long claims with a lot
of additional language are almost always too
narrow!
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8. How much will having a
patent application prepared and filed cost
me?
There are a number of steps to getting a patent as
indicated in the Patent Process chart. Normally,
however, it is the initial cost to get an application on file
that concerns most inventors. Typically, the initial
cost involves (1) a patent search to determine whether the
invention is patentable and often to determine whether
practicing the invention would potentially infringe another’s
patent, (2) analysis of the documents uncovered during the
search, and (3) the drafting and filing of a patent
application.
If you have
done any research into the cost of getting a patent, you know
the fees vary dramatically. One firm may charge
$250 for a patent search while another charges $1000 or
more. Some agents
and attorneys advertise that they will prepare a utility
application for $2500-$3000, while large national firms can
charge upwards of $10,000. It doesn’t seem
reasonable that one patent attorney will prepare an
application for a mere $2500 and another will charge around
$10,000 for the same invention.
Please remember not all patent
applications are created alike, some are better than others,
and typically for the better application you will pay more
money. We liken it to choosing an automobile.
A $2500 application is most akin to a Yugo; whereas the large
law firm application is most akin to a Rolls Royce.
Moderately priced applications from solo practitioners run the
gambit from Yugo value and quality up to and and exceeding
Lexus and Infiniti value and quality.
You will find that large law firms will charge the most
for an application.
They are use to dealing with large corporate clients
with much deeper pockets than small companies and individual
inventors. The
billing rates of attorneys in the large firms are very high,
typically ranging from around $225 for a new attorney that
recently graduated from law school and does not have much
experience to $400 and above for partners.
Considering
that a patent application of low to
medium complexity takes 17-28 hours to prepare properly,
a patent application prepared by a senior associate attorney
at a large firm will typically cost between $5,500 and
$9,100.
Why are rates
so high at the larger firms? There are several reasons. First, the overhead is
substantially higher: they have to pay for the fancy offices,
the secretaries, the numerous clerks to handle billing and
docketing, the receptionist, and the fancy computer systems
including personnel to maintain those systems. Many of these services
that raise the hourly rate of the attorneys are valuable to
large corporate clients. For instance, a large corporation may
have dozens of U.S. and Foreign patents in their portfolio
that need to be maintained and organized. Accordingly, docketing
services are very important to them. However, many if not
all of these services are of little value to independent
inventors.
Second, the hierarchy of the large law firm requires a
substantial chunk of the amount billed by an associate be
distributed among the firm’s partners as profit. Typically, about 20%
to 35% of the amount billed is pure profit distributed to the
partners. A good
rule of thumb is that a third of the amount billed goes to the
attorney actually doing the work in the form of salary; the
second third is applied to overhead costs; and the final third
is partner profit.
Perhaps a question that begs an answer is whether
patent attorneys from large national firms are more skilled at
their craft than patent attorneys from smaller firms. In general, large
national firms are very selective in who they hire. No more than 10% of
all attorneys graduating from law school in any given year are
even considered by the large national firms to be suitable for
employment. So generally speaking, the academic abilities of
the average large firm patent attorney are slightly
better than those of the average small firm patent attorney or
solo practitioner that has never practiced in a large
firm.
However, the distinction is typically not that
great. In
our experience, we have come across very good
attorneys that are associated with large firms and that are
solo practitioners.
Conversely, we have come across mediocre patent
attorneys in both large and small practices.
Concerning the low cost providers, stay
away!
As we stated above, it takes an average of
17-28 hours to write a good patent application for an
invention of low to medium complexity. The hourly
rates for solo patent attorneys typically range from about
$175 to about $275.
Even at low end, a properly prepared patent application
should cost between $3000 and $5000. Even patent agents
rarely charge below $125 an hour, although we do not
generally recommend using agents for drafting applications for
the reasons listed here.
So how can
someone prepare an application for about $2500? Well, they might write
skimpy inadequately detailed applications. The patent office does
not scrutinize patent applications for sufficient detail and
accordingly, many of these applications will issue into
patents. But they
will typically be very weak patents that are easy for a
competitor to work around or easy for a competitor to
challenge and have declared invalid in court. In other words, these
types of patents tend to be very difficult to enforce. Because of this,
a holder of a weak patent would have a very hard
time licensing his/her idea.
Another trick
of the low cost provider is to use unqualified writers, who
are not registered patent agents or attorneys, to draft the
applications. At
best, the writers may be engineers or scientists, while at
worst the writers may not have any formal technical
training. In
either case, the writers are almost assuredly not trained to
draft a patent application that maximizes the potential
coverage of the inventor’s invention.
Finally, a low
cost provider may charge an extremely low per hour rate that
is well below market (<$100 an hour). The thing for an
inventor to consider is why is this attorney or agent charging
so little.
Perhaps, they cannot get business at higher rates,
unlike most other attorneys and agents, because their skills
are lacking in some way.
Perhaps, they are inexperienced. Perhaps, they do not
believe they are worth the going rate. In any case, the
inventor will probably not be well served.
So what is a reasonable cost? Well, it varies with the
complexity of the application. Expect to pay between
$4200 and $5800 for the drafting services of a qualified
attorney or agent for an invention of low to medium
complexity.
Applications for more complex inventions can be much
more. Further, expect to pay $70-100 for every sheet
of formal drawings required for the patent application.
Additionally, filing fees of $425 and up are required
depending on the number of claims in the application. Of course, these fees
are on top of any patent search and analysis fees that can add
an additional $700-1400 to the total cost. To see our
comments concerning patent searches, go here. The total cost for
preparing a quality patent application from the initial search
through filing will typically cost the inventor between $5600
and $7200 ($5000 to $6200 if you forgo the patent
search).
Certainly this is not chump change and the decision to
spend this amount of money should not be entered into lightly.
Understand that there are ways to reduce the cost if
you are willing to do some of necessary work
yourself. For instance, if you can prepare your own
drawings you can save several hundred dollars. Further, if you
can provide the attorney with a well written and detailed
invention disclosure, the attorney may be able to use portions
of the write-up in the application; reducing the amount of
time he must spend drafting the application and thereby saving
you hundreds to thousands of dollars.
We
assume that because you are considering patenting your idea or
invention that you believe the invention has value in the
relevant market place. Presumably, you
believe the idea is worth a significant amount of money,
perhaps millions of dollars in potential revenue and/or
thousands to hundreds of thousands of dollars in potential
licensing revenue.
While the difference between a $5000 estimate to
prepare and file a patent application with one provider and a
$3000 estimate with a low cost provider may seem significant
now, please consider that the $2000 difference is
relatively insignificant if the patent from the $5000
application results in a license potentially worth hundreds of
thousands of dollars and the patent from the $3000 application
is not licensable because of significant
insufficiencies in the patent document.
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9. What is the Difference between a Patent Attorney and
a Patent Agent?
Both patent attorneys and agents have passed an
exam administered by the Untied States Patent Office and are
licensed to prepare and prosecute patent applications in front
of the patent office for clients. Patent
attorneys, however, have also passed a state
bar exam and are licensed to practice law and render legal
advice.
At risk of being blunt, we generally do not
recommend the use of patent agents to prepare your patent
application. That
is not to say that there are no qualified agents. There are,
but the risks involved with using an agent are potentially
greater than using an attorney.
Patent
attorneys are versed in the law. They know how to read
case law and analyze it to determine its effect on the law of
the land. By in
large, patent agents are not similarly trained. Properly understanding
case law is not an easy task and usually is a skill acquired
after reading and analyzing hundreds of cases during three
years of law school.
How does this
affect you? Well, patent attorneys are much more apt
to be knowledgeable concerning how recent court cases effect
your patent application and the claims contained
therein. Patent
law is constantly changing and it behooves you to utilize
someone to write your application that can make sure your
application is written so not to be undermined in any manner
by changes in the law.
Patent agents
are only permitted to practice a limited form of patent law,
i.e. patent law as it pertains only to obtaining a patent from
the United States Patent Office. For instance,
a patent agent can perform a patent search
and render an opinion whether your idea is patentable, but
they cannot offer an opinion whether your invention
infringes the patent of another. As discussed here, a patent only gives you the
right to prevent others from making, using and selling your
invention and it does not give you the right to actually make
your invention.
For an opinion on whether an invention
infringes another patent you must utilize an
attorney.
If you
need someone to negotiate, draft or prepare a license
agreement, you will need an attorney. Of course, if this
need arises you can hire an attorney then and use an agent to
draft and prosecute your application, right? Yes, but in most cases
any cost savings you garnered by having an agent prepare the
application will be lost getting the attorney up to speed.
This brings us
to a significant question: do you really save that much money
using an agent instead of an attorney? Perhaps, but be
sure to compare apples to apples. We have come
across web sites of patent agents promising to prepare
nonprovisional patent applications for around $2000. We figured the
agent was just charging an extremely low effective hourly rate
and not actually making much money. After all, an average
application takes about 20-30 hours to prepare properly. We reviewed some
of the patents written by these agents, the answer become
extremely obvious: the low cost was a result of very skimpy
specifications that, although adequate for obtaining the
patent, might not have enough detail to satisfy potential
licensees or hold up in court. We could prepare
patent applications for $2000 if we made them as skimpy
as these; however, we wouldn’t because they would not
serve the best interests of my clients. If you are considering
a patent agent because of the lower cost, ask the agent what
hourly rate he uses to calculate the amount he charges for an
application.
Often, the hourly rate will be only slightly lower than
that of an experienced patent attorney.
There are
instances where we do not think using an agent is a bad
idea. For instance, agents working under the supervision of a
patent attorney are more likely to be kept abreast of changes
in patent law.
And certainly there are agents that are extremely
knowledgeable and skillful just like there are plenty of
patent attorneys that are suspect in their skills. The fact of the
matter, however, is that you are more likely to get a good
patent application from a patent attorney than a patent agent,
although there are always exceptions.
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10. Should I write my own
patent application?
Do you perform surgery on your family members to
save money? We would guess
the answer is no!
The fact of the matter is that anyone can draft his or
her own patent application and there is a good chance that
application will issue into a patent. However, you are
not likely to have very good coverage for your
invention.
In other words, competitors will likely find it very
easy to work around your patent to avoid infringement but
still gain the benefits your inventions provides. Further, you
might as well forget licensing your patent. Why would a company
pay for a license when they or their competitors can easily
work around your invention? If you really believe your
invention has merit and value, please commit to invest in it
and have your patent application prepared by a qualified
professional.
Although we do not recommend an inventor write his
own patent, we do feel strongly that an inventor is well
served by learning as much about the patenting process as
possible. To that
end, we suggest you read Patent It Yourself by David
Pressman. It is a
really good book that is generally respected by patent
attorneys even though many of us may disagree with the book’s
premise.
If you
are adamant about drafting your own patent application, at the
very least have the document reviewed by a patent
attorney.
Depending on the length of your application, this will
typically cost anywhere from $200-1200, but will be well worth
it. Better yet,
work with a patent attorney from the beginning. He/she can help you
outline the application and give you tips and pointers that
will be invaluable. An even better idea is to have the
attorney draft the claim sets to go along with your
application.
Claims are the
most difficult section of the application and are also the
most important.
As discussed here, the claims define the legal
scope of your invention: if they are too narrow, competitors
will not have a difficult time designing around your
patent.
Conversely, they cannot be so broad as to read on the
prior art.
Claims are tricky things that are strangely written and
are difficult for the layperson to understand let alone
write. Depending
on the patent application, a review of an
inventor-written application coupled with the drafting of
three high quality claim sets comprising a total of twenty
claims (the number included with your filing fee) will
typically cost you between $1200 and $1800. Mind you, this is not
an insignificant chunk of change, but it is much less than the
$3900 to $5800, an attorney would charge to draft the entire
application.
Further, although an application written by the
inventor with claims drafted by an attorney will be much
better than one with claims drafted by the inventor alone,
typically it will not be as good as an application drafted in
its entirety by the patent attorney. At the very least,
however, by having an attorney draft the claims, you will have
the chance of getting a much stronger patent that can be
licensed and can be enforced.
Another option
for the inventor who is willing to help draft the application
in hopes of reducing his/her costs is to provide the
attorney with a very detailed disclosure (See our Disclosure Form
here) that the attorney can cut and paste from in
drafting the patent application. A well-written
disclosure can save the attorney significant time and reduce
the inventor’s bill substantially. Further, if the
inventor provides figures of the invention with sufficient
level of detail (even if only rough sketches), these figures
can help the attorney more quickly determine the number and
type of formal drawings that will be required to fully
illustrate the invention. A caveat: a poor
written disclosure even if fairly detailed may not reduce the
time necessary to prepare an application properly.
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11. What are your thoughts
on provisional applications?
In general, we discourage their
use, especially when small companies or solo
inventors are concerned.
This view is contrary to much of what you will hear and
read.
Some patent prosecutors trumpet the provisional
application as an inexpensive way to patent your
invention. Not
true!
Some software companies will sell you provisional
patent application software that you can use to “easily” draft
your own patent application. Well, this is true to
some extent: you can draft your own application, but that does
not mean the application will be very good. Others will tell you
how a provisional application is cheap to file. Yes, it is, but it has
to be matured within one year and you will pay the more costly
filing fee for a nonprovisional patent application then.
First, what is a provisional patent application? In
short without getting into unnecessary detail, a provisional
patent application is a patent application without
claims. As
mentioned, claims are the most difficult section of an
application to draft. Furthermore, they are the most important
component of a nonprovisional patent application as they
define the legal breadth and scope of your patent. Claims are also
what a patent examiner examines when determining whether your
invention is deserving of a patent. Except
for the claims, the content of the provisional application
must satisfy all the other major requirements of a patent
application. Namely, it must enable your invention so
that someone with ordinary skill of the art could practice
your invention, and it must describe your best mode of using
the invention at the time of filing. For more detail on the
sections of a typical patent application and a description of
them, see Patent Anatomy .
Because a provisional application has
no claims (or at least is not required to have any), it is
never examined and can NEVER issue into a
patent. In fact, a provisional application has a life
span of no more than 1 year. If it is not matured into a
nonprovisional patent application with the inclusion of at
least one claim, if will go abandoned. It will, however, give
you the right to list your invention as patent pending. So at the end of the
one-year period, you will have to spend much if not more than
you originally spent to add claims and update the
application. Our experience is
that by splitting the process the overall cost of getting a
proper nonprovisional patent application on file with the
patent office that will be examined and can issue into a
patent is at least 10-50% more expensive than filing the
nonprovisional in the first place. Why? Well, if you have
updated or improved upon your invention in any way, you will
want this new information added to the application, especially
if these improvements relate in some manner to a claim that is
included in the nonprovisional patent application. Adding this new
information takes time and money. Depending on the nature of
the improvements and how they effect the invention as a whole,
you may even be obliged to update the application. Conversely,
if you file a nonprovisional initially, you are under no legal
obligation to update the application as you improve on the
invention, although you can if you want by filing a related
application that adds the new information. Further, because the
attorney or agent that originally drafted the provisional
application has probably not worked on the application in
nearly a year, he or she will have to refamiliarize himself
with the content of the application. Of course, you will be
billed for that time or it will be figured into the quote to
file the nonprovisional application.
So why do many attorneys and agents recommend
provisional application then? In our opinion:
Economics! That
right, they want your business and they quickly ascertain that
you are unable or unwilling to pay the full price to get a
patent application on file. So they split the baby
and offer to put the less expensive provisional application on
file for a little over half the cost of the
nonprovisional.
They know, however, that you will be back in a year and
that you will have to pay the necessary amount to mature the
application into a nonprovisional, and at that point you will
not be in the position or have the inclination to shop around
for less expensive legal services. In the end, an
unscrupulous patent attorney or agent can increase his/her
revenues by steering an inventor towards the provisional
application based on its lower initial cost.
Aside from the issue of cost, recent court cases in the
Federal Circuit (the court when it comes to patent law) have
been very unforgiving concerning patents that have been based
on provisional applications. In at least one case
in 2002, a patent was declared invalid because problems with
the sufficiency of the provisional application that it was
initially based. The legal basis is rather complicated to
explain here, but suffice it to say if the applicant had filed
a nonprovisional initially, the patent probably would not have
been invalidated.
In good conscience, we cannot except work
from an inventor to draft a provisional application without
fully warning him/her of the potential pitfalls. We will, however,
prepare a provisional application if you still want one
after we have explained the negatives.
The negatives aside, there are a few valid reasons for
filing a provisional patent application. First, there are some
advantages concerning the term of a patent that can make
filing a provisional patent application valuable for certain
types of inventions.
For instance, if the inventor or applicant expects the
patent to be worth more near the end of the patent’s term, a
provisional patent application may have value. However, to minimize
any problems down the line, we usually recommend that a
provisional application filed for term extension purposes be
essentially complete and include a complete set of
claims.
Accordingly, such provisional applications typically
cost about the same as a nonprovisional to prepare. Another instance where
a provisional application may be of value is when an
application must absolutely be filed within a couple of days
to beat a hard date (such as the one year bar date) and there
is no time for a proper nonprovisional patent application to
be drafted. These situations occur most often when an inventor
comes to the attorney a mere couple of days before the date
desperate to avoid losing their right to obtain a patent.
In summary, provisional applications do not offer the
inventor an easy or simplified way of getting a patent. Rather, there are
significant pitfalls that need to be understood and considered
before making a decision to file a provisional
application.
While it is true that the cost to prepare a provisional
application is often cheaper than a nonprovisional
application, in the end obtaining a patent by starting with a
provisional application is often more expensive than
immediately filing a nonprovisional application. Our job is to
provide my clients with the best and most defensible patents
that we can, so that the potential of capitalizing on
their inventions are maximized. For this
reason, we hesitate to recommend provisional patent
applications even though promoting them could earn us
more money.
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