How to mitigate the cost in drafting patent applications

Types of Costs | There are several types of costs associated with preparing a patent application, some of which are listed below:

• Patentability search but only if it specifically asked for and which is separately charged as it is not a requirement in the preparation process.
• Attorney Fee for preparing the application (often based on time)
• Paralegal/Flat Fee for preparing & filing of the formal documents
• Drawing Fees for hiring an illustrator to prepare professional drawings (sometimes can be done by the client)
• Filing Fees which are set by the patent office
• On Going Charges during prosecution when we receive notices from the patent office and when the paralegal files certain documents
• Prosecution Attorney Fees which are as necessary to respond to official communications from the patent office
• Extension of Time fees set by the patent office when a response extends its time for responding (has a maximum number however)
• Continuation Fees for when an application is not allowed and client wishes to continue prosecution
• Issue Fee when and if the application is finally allowed

Cheap versus Inexpensive | Nothing comes free. It’s only a matter of getting value. When I was still a young college student I wanted to buy a small piece of jewelry as a gift for my older sister’s college graduation. The wise jeweler told me: “young lady, you don’t want cheap. You want inexpensive.”

So that is my advice. You want value added not cheap. What is value added? Although many use that term, it is hard to quantify.  It is paying for expert experience but not a lot of firm overhead like expensive offices.

Scientific Writing versus Patent Drafting | People often believe that if they are good authors of articles and/or scientific papers, that automatically qualifies for being good at drafting patent applications. Simply put: it does not.  As a scientist and engineer one of the hardest things, when transitioning to law, was resetting my criterial for the different types of writings.

Flat versus Hourly | You may sell widgets. Attorneys sell their time and expertise. Although with experience, a patent attorney becomes more efficient, at the end of the day, by its very nature, each invention is different. That means, each application has to be drafted from scratch and built up. With the exception of a few standard paragraphs in the application, everything else will have to be original because your invention is supposed to be new and original.

So, when an attorney quotes you a flat rate, often, s/he is betting on how much time it will take for her/him to draft your application. And if they are in the habit of flat rates before they even see the disclosure of your invention, how can they reliably give you a quote? Think of it as building a house: it’s not just the location but also the square footage, land conditions, building material, etc.

For us, we normally don’t provide a flat rate but provide a “good faith estimate” based on a very high-level review of your disclosure. Most often, if the nature of the invention does not change (and often it does as inventors learn more about what their invention may really be about after discussions with the attorney), then the attorney fee falls within that estimate, give or take a some. However, if the scope changes, so does the final cost.

Organized versus piecemeal | The more organized the content is, including the figures, and is provide all at the same time, the less time attorney has to spend on the application. It’s that simple.

Drawings | Patent drawings are a critical part of a patent application. Make sure to provide clear drawings that show all parts of the invention. What you provide does not have to be formal as that is something that an illustrator (or yourself later) may create. At the disclosure stage, what is important that you provide very good drawings of what the invention is and that includes process steps.

Timeliness | Attorneys work on many different projects. Patent applications include a lot of nuances unique to each invention. If a lot of time passes between communications, the attorney will not remember all details and has to renew his/her memory and that will take time which means more cost to you. So, when you receive questions to drafts to review, be timely in your response.

Number of Revisions | Be clear and concise in your remarks when commenting and/or editing a draft which you receive from the attorney. Attorneys normally have a goal of one revision for a patent application. The more re-writes, the more cost.

Follow On Reminders | Some firms do not aggregate fees. That is, in the interest of transparency, they will itemize the source of charges instead of aggregating them. Let me give you an example: when we receive a communication (e.g., office action or filing receipt) we review the correspondence and then enter it into the docket/calendar system and then if appropriate will communicate it to the client. Instead of adding these charges to something else, we itemize them (others may add this “overhead” to their attorney fees). If you don’t respond to a correspondence that needs to be acted on, and we have to send you subsequent reminders, we may charge you for that. This is will help keep the cost down for clients who are diligent with their communication as we don’t pass on charges for one client to another.

Prosecution of Application | Once an application is filed, if and until such time that is issued, it will go through several back and forths with the patent office. This is called “prosecution.” The main cost associated with prosecution, in addition to routine matters (billed as flat paralegal rates), is attorney fee, when for example, there is an office action. These are handled similar to the drafting of patent application: they are “time driven.”