Did You Get The Message? Reducing Patent Costs by Maintaining Contact

by Downs Rachlin Martin PLLC

(This post is a continuation of a series of posts on reducing patent costs, the two previous posts in the series can be found here and here.)

O.K. – you had the meeting with your patent attorney—it seemed to go well.  No promises from the patent attorney (go figure), but he appreciated all of your efforts and it seems as though the patent application isn’t going to take your kids’ college fund. You’re done, right? That’s why you hired that highfalutin’ patent attorney.

Unfortunately, you’re not done. Controlling costs requires additional work on your part because additional issues will come up during the drafting of your application and once filed, while your application could sail through the PTO and result in a patent, it is more likely that there will be additional back and forth with the PTO (called prosecution) that will result in further costs.  Fortunately, the cost of the application and of each response to the PTO (in attorney/agent time) can be greatly influenced by the quality and quantity of your assistance.

Respond to questions thoroughly and in a timely manner

During the preparation of a draft application a number of questions or comments are likely to surface.  Returning to the toilet breathing apparatus, one can envision questions around alternatives, such as whether the device could be used in sinks, shower drains, etc. or whether there are alternatives for the types of materials used.

While the patent attorney may have the ability to flush out the necessary information on his own, the best (and cheapest) resource for the patent attorney is you.  Responding thoroughly and in a timely manner to the questions asked will generally reduce the costs of the application in at least two ways:

  1. The patent attorney will not have to spend time searching for the needed information.
  2. Since the patent attorney will usually have to put your application aside while waiting for a response, the longer it takes to get a response, the more time the attorney will have to spend refreshing his or her memory with the details of your application  once the information is provided.

As a general rule of thumb, and despite arguments to the contrary, more information is better than less, and today is better than tomorrow.  When you decide you want to patent your invention, but wish to do so on a budget, be prepared to contribute early and often to the process.

Your availability needs to continue throughout the prosecution (i.e., the back and forth with the PTO to discuss the patentability of your invention) of your patent application.  If the PTO rejects your invention in view of prior art, your assistance may be crucial to understanding what about your invention is different than the prior art AND whether a modification to the claims, which may be necessary to be novel and non-obvious in view of the prior art, is worth pursuing.  Additionally, not only would you save attorney time by responding to her questions thoroughly, you can avoid paying for extensions of time (as much as $1345 for small entities, double for large) in order to file a late response to the PTO.

While it may seem manifestly obvious that you’d need to be in communication with your patent attorney—you would undoubtedly be surprised how often inventors, who are concerned about costs, fail to timely respond to my requests for information, assistance, or even communications as to whether to continue to pursue the application.  Delays resulting from a lack of inventor contact routinely result in large fees for extending deadlines at the PTO and more attorney/agent time in preparing the response…thus, of the ways to reduce patent costs, this is one of the most neglected, yet influential, factors.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© Downs Rachlin Martin PLLC | Attorney Advertising

Written by:

Downs Rachlin Martin PLLC

Downs Rachlin Martin PLLC on:

Readers' Choice 2017
Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
Sign up using*

Already signed up? Log in here

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
Privacy Policy (Updated: October 8, 2015):

JD Supra provides users with access to its legal industry publishing services (the "Service") through its website (the "Website") as well as through other sources. Our policies with regard to data collection and use of personal information of users of the Service, regardless of the manner in which users access the Service, and visitors to the Website are set forth in this statement ("Policy"). By using the Service, you signify your acceptance of this Policy.

Information Collection and Use by JD Supra

JD Supra collects users' names, companies, titles, e-mail address and industry. JD Supra also tracks the pages that users visit, logs IP addresses and aggregates non-personally identifiable user data and browser type. This data is gathered using cookies and other technologies.

The information and data collected is used to authenticate users and to send notifications relating to the Service, including email alerts to which users have subscribed; to manage the Service and Website, to improve the Service and to customize the user's experience. This information is also provided to the authors of the content to give them insight into their readership and help them to improve their content, so that it is most useful for our users.

JD Supra does not sell, rent or otherwise provide your details to third parties, other than to the authors of the content on JD Supra.

If you prefer not to enable cookies, you may change your browser settings to disable cookies; however, please note that rejecting cookies while visiting the Website may result in certain parts of the Website not operating correctly or as efficiently as if cookies were allowed.

Email Choice/Opt-out

Users who opt in to receive emails may choose to no longer receive e-mail updates and newsletters by selecting the "opt-out of future email" option in the email they receive from JD Supra or in their JD Supra account management screen.


JD Supra takes reasonable precautions to insure that user information is kept private. We restrict access to user information to those individuals who reasonably need access to perform their job functions, such as our third party email service, customer service personnel and technical staff. However, please note that no method of transmitting or storing data is completely secure and we cannot guarantee the security of user information. Unauthorized entry or use, hardware or software failure, and other factors may compromise the security of user information at any time.

If you have reason to believe that your interaction with us is no longer secure, you must immediately notify us of the problem by contacting us at info@jdsupra.com. In the unlikely event that we believe that the security of your user information in our possession or control may have been compromised, we may seek to notify you of that development and, if so, will endeavor to do so as promptly as practicable under the circumstances.

Sharing and Disclosure of Information JD Supra Collects

Except as otherwise described in this privacy statement, JD Supra will not disclose personal information to any third party unless we believe that disclosure is necessary to: (1) comply with applicable laws; (2) respond to governmental inquiries or requests; (3) comply with valid legal process; (4) protect the rights, privacy, safety or property of JD Supra, users of the Service, Website visitors or the public; (5) permit us to pursue available remedies or limit the damages that we may sustain; and (6) enforce our Terms & Conditions of Use.

In the event there is a change in the corporate structure of JD Supra such as, but not limited to, merger, consolidation, sale, liquidation or transfer of substantial assets, JD Supra may, in its sole discretion, transfer, sell or assign information collected on and through the Service to one or more affiliated or unaffiliated third parties.

Links to Other Websites

This Website and the Service may contain links to other websites. The operator of such other websites may collect information about you, including through cookies or other technologies. If you are using the Service through the Website and link to another site, you will leave the Website and this Policy will not apply to your use of and activity on those other sites. We encourage you to read the legal notices posted on those sites, including their privacy policies. We shall have no responsibility or liability for your visitation to, and the data collection and use practices of, such other sites. This Policy applies solely to the information collected in connection with your use of this Website and does not apply to any practices conducted offline or in connection with any other websites.

Changes in Our Privacy Policy

We reserve the right to change this Policy at any time. Please refer to the date at the top of this page to determine when this Policy was last revised. Any changes to our privacy policy will become effective upon posting of the revised policy on the Website. By continuing to use the Service or Website following such changes, you will be deemed to have agreed to such changes. If you do not agree with the terms of this Policy, as it may be amended from time to time, in whole or part, please do not continue using the Service or the Website.

Contacting JD Supra

If you have any questions about this privacy statement, the practices of this site, your dealings with this Web site, or if you would like to change any of the information you have provided to us, please contact us at: info@jdsupra.com.

- hide
*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.