Get a Quality Patent for a Reasonable Cost

Congratulations! You’ve made a valuable invention that should be well received by the marketplace. Now you’d like to patent your invention to prevent anyone else from using it without your permission. How can you get a quality patent on your invention without spending a bundle on attorney’s fees?

The cheapest way to get a patent is to patent it yourself. The patent rules say: “An applicant for patent may file and prosecute his or her own case”. 37 C.F.R. 1.31. Thus, it is possible to get a patent yourself without hiring a patent lawyer, and many have done so. A Google search for “get a patent without a lawyer” will find links to sites with resources to help inventors who choose to go this route.

Unfortunately, the adage “you get what you pay for” applies with full force to inventors who represent themselves before the U.S. Patent Office. Most inventors are not familiar with the complex procedural rules governing patent practice before the U.S. Patent Office, and are even less familiar with substantive rules that apply to patents based on the U.S. Constitution, Title 35 of the United States Code (35 U.S.C.), Title 37 of the Code of Federal Regulations (37 C.F.R.), and literally centuries of patent case law.

As a result, most inventors who represent themselves end up with applications rejected by the U.S. Patent Office, or with patents that are too narrow or contain other significant defects making them invalid or worth much less than they could have been worth if the inventor had been well represented.

Some inventors--especially individual inventors who are long on ideas but short on cash—try to partner with a patent attorney. They try to find a patent attorney willing to prepare, file and prosecute a patent application for free, in exchange for future payment from income received from the invention. Their pitch is that the invention is sure to be a commercial success, and the attorney will make money.

The problem with this approach is there are few patent attorneys willing to accept it. Most good patent attorneys have many current and prospective clients willing to pay cash for their services. These attorneys also know that, statistically, only a small percentage of patents are licensed, sold or otherwise commercialized for a significant amount of cash. Thus, except in unusual situations, good patent attorneys are not willing to render their services in this way.

The most common way to get a patent is to hire a patent attorney to perform virtually all the work. Typically, the inventor prepares a short description of the invention (“an invention disclosure”), which is given to the attorney. The attorney often does a prior art search based on the disclosure, reviews the results of the search to determine what if anything is patentable, conducts a short interview with the inventor to discuss the invention, prepares a draft application, reviews any comments the inventor may have on the draft application (which, in the majority of cases, are minimal), files the application, and then responds to any rejections made by the Patent Office with little or no input from the inventor.

There are two basic problems with this approach. The first is the inventor often has significant knowledge or insight concerning the invention and its technical and commercial significance that never gets communicated to the patent attorney. The second is this approach tends to be expensive, since the attorney often spends significant time researching and learning things the inventor already knows.

In many cases, the best way to get a quality patent for a reasonable price is to have the inventor work in concert with the patent attorney. The guiding principle is to split the work needed to get a patent between the inventor and the patent attorney, with each doing what he does best.

The first step is to have the inventor prepare an “invention package” including:

• The results of a prior art search. While searches used to be done primarily by professional searchers located close to the search rooms at the U.S. Patent Office, the abundance of electronic searching tools on the Internet make it possible for the inventor to conduct the search. This can be a superior approach since the inventor is often more knowledgeable about the field of the invention.

• A short summary of the search results. The inventor should identify a certain number (e.g., 5) of the prior art documents closest to his invention, and briefly describe how his invention is different from each of those documents.

• A description of why his invention is likely to be valuable in the marketplace.

• A few drawings showing his invention. The drawings should illustrate the parts of his invention that are different from the prior art.

• A short description of his invention that refers to the features in the drawings.

In preparing this package, the inventor should not “write like a patent attorney”. There is no need for him to use legal words or phrases; in fact, it is preferable for him to write naturally.

The second step of this approach is to select a good patent attorney willing to work at a discounted rate because of the fact that he will be supplied with the above-described invention package. Many patent attorneys will provide such a discount because they understand the invention package will minimize the time they’ll need to spend on the application without any need to sacrifice the quality of their work.

To save even more money, try to select a good patent agent rather than a good attorney. Patent agents, like attorneys, are registered before the U.S. Patent Office. However, their billing rates are typically lower than the billing rates for patent attorneys. In some cases, patent agents have technical backgrounds that are even more relevant than that of patent attorneys.

The third step is to give the invention package to the selected patent attorney, and encourage him to work closely with the inventor. The attorney can use the invention package to get up to speed quickly on the invention. By working in concert with the inventor, the attorney should be able to conduct an efficient inventor interview, efficiently draft a patent application covering the commercially important aspects of the invention, and efficiently respond to any rejections.

Disclaimer: The author has retired from the practice of law. This cursory article is for information purposes only, is not legal advice, and does not establish any attorney-client relationship. The author encourages any reader with questions about how to get a patent to contact an attorney.