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

by Downs Rachlin Martin PLLC
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(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.

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