Why Does It Cost So Much to Prepare Patent Applications?

By Gene Quinn
May 7, 2016

gold-guy-question-franklin-dollarPreparing and filing patent applications in the United States can be a daunting undertaking.  Indeed, the cost of preparing and filing a patent application can be quite high; far higher than most inventors and small businesses would prefer.  Sure, there are the bargain basement discount providers on the Internet, but does anyone really think that in an industry that has only time to sell by the hour or by the project that the same quality will be obtained if you pay $1,500 for a nonprovisional patent application instead of $15,000?  Unfortunately, there are some novice inventors who delude themselves into thinking they will get the same quality for $1,500, but sophisticated inventors, knowledgeable corporations, and even newbies who have their wits about them all know that the more time you spend on a patent application the better.

I always tell my clients and prospective clients that they will run out of money before we run out of the ability to make the patent application better and more complete, but that is life. The more time you spend the better the ultimate work product will be, but more time equals more expense. Spending the proper amount of time and not going beyond the point of diminishing returns is where you want to be. Of course, it should go without saying that if you can afford to work with a patent professional you should.

But why does it cost so much money to prepare and file a patent application?  A rather simple question really, but one that unfortunately does not have a simple answer I’m afraid.

Several years ago, in February 2011, former Federal Circuit Chief Judge Paul Michel testified to Congress on patent matters, most specifically the then pending patent reform legislation.  In his prepared remarks Chief Judge Michel stated: “In 1988 when I was first on the court, the patents usually involved relatively simple technologies. Often the applications were less than 5 pages long and included less than 10 claims.”

Patents litigated in 1988 likely were issued 5 to 10 years earlier on average.  If you go back even further than that window you would see that patents and patent applications were even shorter, perhaps with a page or two of drawings and maybe several pages of double column text.  Claims to patents issued 100 years ago read little more than what we would today call an omnibus claim, which basically says what is claimed is what has been described. Omnibus claims are not allowed in the United States, and long gone are the days when a simple claim could be used to cover what everyone honestly would understand the patented invention to be.

What happened to the simplicity of patent applications?

Somewhere on the way from those simpler times until now patents started becoming exceptionally valuable.  That means that there is big business in enforcing patents and big business in trying to get around issued patents so that you are not infringing, or at least so you don’t have to pay much of a license fee or damages after the fact.

In 1982 the United States Court of Appeals for the Federal Circuit was formed.  The purpose was to establish coherent and stable patent laws that would be uniform across the United States. As the Federal Circuit settled patent law and issued patents really came to be presumed valid, it became far more of a challenge to defeat a patent by arguing that the claims should never have issued because the invention was not new, because it was obvious or because it wasn’t properly described at the time the patent application was filed. What this has lead to is the near exponential growth in what what is included in patent applications, both in terms of quantity and quality.

As patents became more valuable increased litigation lead to an abundance of case law, which in many cases found the patent claims invalid. Patent attorneys would go back to the drawing board, learn from the mistakes courts pointed out, and do things differently. Over time with more rulings, rulings dealing with the written description as well as nuances of claims, patents had to become longer, more technically dense, and the never ending march of archaic, often nonsensical rules, continued. Like a snowball rolling down hill patents have only become more complicated while at the same time harder to read and understand.

Once upon a time, as mentioned already, it became really quite difficult to defeat a patent. Over the last decade it has become increasingly easy to defeat patents as the tide has turned away from innovators. The Supreme Court is most to blame thanks to their extraordinarily restrictive (and changed) view of what constitute patent eligible subject matter. As patents have become easier to challenge patent attorneys have had to do even more work when preparing applications to make sure there is a dense technical description of a tangible invention that could never be legitimately characterized as being abstract. This is a challenge in many regards because at some level every innovation starts off as an abstract idea. This is further complicated by the fact that the Supreme Court has not defined the so-called abstract idea doctrine in any satisfying way, but it gets used liberally to find inventions patent ineligible. Left with no definition for the key term “abstract idea,” patent attorneys are left to do whatever we can to make sure the inventions we describe are anything but abstract. So the snowball continues rolling down hill and patents continue to become far more complex than they once were even a generation ago.

The First Application Matters Much

What is the big deal about describing an invention so thoroughly at the time you file your first patent application?  The concept is “new matter.”  New matter is defined by first considering what is fairly described in the text, claims and drawings filed.  That makes up your disclosure.  Whatever is not in your disclosure is considered “new matter” and under no circumstances is new matter allowed to be added to pending patent applications.  If you want to add new matter you must file a new patent application, but that means a new priority date for that being added for the first time.  That new priority date means there will be additional prior art you need to consider and define around. With few exceptions, what comes after your priority date cannot be prior art against you, therefore, you want to have the earliest priority date you can have.

Simply stated, the first patent application filed is critical.  It has to describe the invention to the fullest extent possible. If it does it will lock in an early priority date and limit the amount of prior art that can be used against you when it comes time to evaluating whether your claimed invention is new and non-obvious in light of the prior art.

But I thought you could add claims after you file a patent application?  Yes, indeed you can, but that is different than adding new matter.  Issued patent claims define the exclusive right that the United States federal government has granted.  Patent rules, however, require the claims to be no broader than the Specification.  What that means is that the claims precisely point out the right that the Patent Office has given you, but the claims cover a subset of what the rest of the disclosure defines.  So you can add claims to pending patent applications without adding new matter because the claim has to necessarily be a subset of what you have disclosed elsewhere.  See MPEP 608.01(o) and MPEP 2163.03, which explains: “An amendment to the claims or the addition of a new claim must be supported by the description of the invention in the application as filed. In reWright, 866 F.2d 422, 9 USPQ2d 1649 (Fed. Cir. 1989).”

What all of this means is that an invention needs to be described in its full glory at the time of filing the patent application.  The way that those who offer rock-bottom prices manage to prepare and file patent applications so cheaply is because they describe EXACTLY what the inventor says they have invented — nothing more.  If an inventor walks in with a right handed monkey wrench there will be no effort put into determining whether the device could be used by left handed individuals, regardless of whether there might need to be structural alterations made or not. Figuring out the alternatives and what the fullest extent of what can be protected takes time; describing all the alternatives and what you are entitled to receive takes even more time. Time is not something bargain basement service providers offer.

As I explained in The Key to Drafting an Excellent Patent – Alternatives, there is nothing inherently wrong with a narrow patent.  What makes narrow patents problematic for inventors is that they typically don’t’ think they are getting a narrow patent.  They don’t understand that because of the bargain basement price they pay they are leaving claim scope on the table — exclusive rights that they will think they possess but simply do not own.  Even worse, you have a narrow patent with narrow claims and your written description offers no ability to get any additional claims. Again, there is nothing wrong with a narrow patent, but if you accept a narrow patent you almost universally will want to circle back with a continuation to get broader claims later. This is a common strategy, it is perfectly fine, but it is a strategy that you likely will never be able to execute if you hired a bargain basement service provider.

 

Conclusion

You must keep three things in mind.  First, you want to describe anything that works in your patent applications, no matter how crudely.  Second, you want to describe variations to the invention that knock-off artists will likely employ in an attempt to rip you off without actually infringing.  Third, you need to remember that a patent doesn’t give you the right to do anything other than exclude others, so you don’t just protect what you are doing or what you want to do, but rather you want to describe everything you can think of and describe with enough concrete details.

You absolutely, positively need to describe not only what has been invented.  You must also describe the various possible combinations, permutations and alternatives.  That is how patent applications can get rather large for even relatively simple inventions.

The cost of getting a patent is typically considered to be significant by nearly all estimations.  What you get for what you pay can be enormously valuable and that is another reason why patents have become more expensive to obtain.  Because patents are valuable to have and expensive to infringe there will always be those who seek to get around your rights.  The job of the patent attorney is to make sure that doesn’t happen to the greatest extent possible.  That requires a lot of time and energy, which translates into money.

Outsourcing to those who speak English as a second language is extremely dangerous, and there is only so much an inexperienced patent attorney or patent agent can do without having someone more seasoned review the work and add value. We can gripe about the “good old days” or we can just realize that it takes more time and more energy to prepare patent applications then every before, and consequently more money than ideal.  So if you are going to go down the patent path do yourself a favor.  Either go all in and get quality or don’t bother.  The half-way solution is a recipe for spending a lot of money and getting nothing to show for it in return.

More Information

The pages of IPWatchdog.com are full of information, tutorials and resources. To learn more about patents and patent applications please see:

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and founder of IPWatchdog.com. Gene is also a principal lecturer in the PLI Patent Bar Review Course and an attorney with Widerman Malek. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 39 Comments comments.

  1. Stephan Curry May 7, 2016 6:20 pm

    Come on, Russell Slifer. it’s not that simple. you make it too simple.
    Not every patent attorney trained under Alan MacPherson, Limbach, Norm Oblon, Ed Taylor, Dale Lazar, Bill Poms, or even Roger Blakely, Bill Bohler, Albert Smith, or Jim Bear. So Russell, you can’t expect every patent attorney to be sufficiently trained in writing a great spec and great claims. You know that. So you all can speak patent quality, but reality is not that simple.

    http://www.law360.com/articles/786202/attys-have-key-role-in-ensuring-patent-quality-experts-say
    “When I go out and speak to bar associations about quality, I would hear a little bit of rhetoric: ‘If examiners would just do their job, everything would be fine.’ And when I would come back to the agency and talk to examiners, I would hear, ‘If the applicants and attorneys for applicants would just do their job…,’” he said. “We had a disconnect obviously, and what that is definitely pointing out is that we are in this together as a community.”
    The USPTO needs the help of applicants because it does not have the resources to ensure perfect patents on its own, Slifer said.

  2. Gene Quinn May 7, 2016 6:28 pm

    Stephan-

    First, I’m not exactly sure what comments by Deputy Director Russ Slifer about patent quality have to do with this article. So please try and keep on topic.

    Second, you are simply wrong to say that patent attorneys cannot be expected to be sufficiently trained. If you are offering your services you should be competent to do the work. If you are not competent and you take the work you are violating well established ethics rules. It is that simple.

    I am a skeptic on some levels of the quality initiative, but not because of anyone in the senior management Slifer, is a good patent attorney and clearly has his heart and head in the right place. The PTO does need to do a better job, but I think many in the industry would be shocked if they saw the low quality the PTO gets from applicants (including represented applicants).

    -Gene

  3. Stephan Curry May 7, 2016 6:48 pm

    Gene@2
    Second, you are simply wrong to say that patent attorneys cannot be expected to be sufficiently trained. If you are offering your services you should be competent to do the work. If you are not competent and you take the work you are violating well established ethics rules. It is that simple.

    Gene, your words above are Not my words.
    Second, Russ puts the burden on patent attorneys to write high quality patents.
    Well, your article proves that quality involves a lot of things, since you bring forth many details that are required to write an ideal patent application. Third, not every patent attorney who trained in law firms are digging patent prosecution (some registered patent attorneys simply hate patent prosecution, and how they speak gives clues), and so they can not prep/prosecute as well as other prosecutors, and you know that in larger law firms, junior prosecutors may not be supervised as much, and not every patent attorney is an expert in every technical field (and so a Bob or a Jack who is an expert in software patents may not necessarily write a high quality semiconductor etching patent application), and you know that Gene. I think I hit an issue, which is not every patent attorney is of ordinary skill in the art, and so the patent quality issue is not that simple (a good prior search goes a long way to helping achieve quality).

  4. Stephan Curry May 7, 2016 6:53 pm

    I meant to say, a good search by an Examiner goes a long way to helping achieve quality.

  5. Stephan Curry May 7, 2016 7:02 pm

    here’s a quick way to address the quality issue of patents. of course, it is not this simple since making a change/reform in the patent system is like Brain surgery (the patent system is really sensitive to a change).
    Why not give patent examiners more time (maybe double their time) to do their prior art searches, instead of the Patent Reformers coming up with the IPRs which have resulted in unintended consequences. A good patent attorney will always be able to Exploit future patent reforms if so client desires (e.g., Kyle Bass’ patent counsels and strategists).

  6. Stephan Curry May 7, 2016 7:11 pm

    This talk of getting higher patent quality is disturbing because some people don’t understand the nuances of patent applications.
    You know that old classic saying of patent attorneys (anything you say can be used against you) or anything you write in the specification can be used against you. so ideally, the perfect patent is a one sentence or one-paragraph patent that is fully enabling and covers every conceivable equivalent and meets all statutory requirements, etc, but that is an Alice in wonderland wishful fairytale situation.

  7. Russell May 7, 2016 7:23 pm

    ” .. You absolutely, positively need to describe not only what has been invented. You must also describe the various possible combinations, permutations and alternatives. That is how patent applications can get rather large for even relatively simple inventions ..”

    Excuse me — isn’t there a train of thought (e.g., Pressman) that takes the position, most examiners only care about the claim(s), and nothing else? That is, focus mostly on the claim-writing?

    IMHO, many examiners don’t give a rip about the small inventor, who can be shoved aside with a “get a lawyer” risposte. Uncle Bruce does tools (he has Ivy law degree), got a lot of indifference from examiner, spends $25,000 on a patent bar lawyer, and suddenly his work is “OK” by examiner.

    Waste of everyone’s $$$, IMHO. No matter what Obama claims.

  8. Stephan Curry May 7, 2016 7:24 pm

    Here is Gene admitting that not everyone is competent.

    as an aside, Colleen trained at Fenwick …….

    http://www.ipwatchdog.com/2015/07/01/why-it-is-unnecessary-to-open-the-patent-system/id=59326/

  9. Stephan Curry May 7, 2016 7:44 pm

    Gene@2
    The cost of getting a patent is typically considered to be significant by nearly all estimations. What you get for what you pay can be enormously valuable and that is another reason why patents have become more expensive to obtain.

    In line with us helping the USPTO to achieve higher quality, in crowded spaces in hardware or mechanical arts or chemical arts etc., lots and lots of IDS are filed, particularly if a sizeable portfolio is managed (and even if the portfolio is not big) and so this highly significantly adds to prep/pros costs
    So Russ, we are doing the best we can by giving the USPTO the form 1449s etc., and so this talk of one side or the other side not carrying their weight can be skewed. just give Examiners more time to search and have congress eradicate the IPRs and PRGs.
    http://www.law360.com/articles/786202/attys-have-key-role-in-ensuring-patent-quality-experts-say

  10. Stephan Curry May 7, 2016 8:03 pm

    On the topic of high costs for patent application due to wanting more “quality”,
    this campaign by some patent attorneys on this “quality” issue is disturbing on another level. They presume that narrower claims leads to higher quality patents which in turn promotes innovation.

    Here is my comment to Lemley et al. Look at the Israeli Patent Office, Mark Lemley.
    I have many patent matters pending or issued in Israel, and the Israel Patent Office is known to issue patents with extremely broad claims. And yet, Israel is known as the High-Tech Startup Nation being an innovation leader like America. Of course, there are other additional factors for Israel’s innovation.
    And so this talk of wanting “high quality” patents which is leading to higher patent application costs may be a Wrong Tree that Patent Reformers are barking up on.

  11. Curious May 7, 2016 11:14 pm

    Second, you are simply wrong to say that patent attorneys cannot be expected to be sufficiently trained
    That’s not what he said … he said “you can’t expect every patent attorney to be sufficiently trained in writing a great spec and great claims.” Honestly, I think it is extremely difficult to get patent prosecutors to be trained well. Unless you are lucky enough to be a law firm where you have multiple people reviewing your work, you are at the mercy of training under someone who may or may not be competent (my guess is that they probably aren’t particularly competent). I’ve seen a lot of work product produced by patent attorneys that didn’t know that what they wrote was absolute cr&p (and I assume a lot of it was reviewed by people who thought it was good).

    From my experience, some attorneys are good at claims, others at writing specifications, and still others at prosecuting. Sometimes you won’t find these people until years after you’ve practiced, and only afterwards do you realize how bad your previous work product was. I was once told by one partner that he didn’t really learn how to write a good specification until he had to litigate one of the specifications that he had written.

    Moreover, one cannot pick up a specification (and just by reading it) know whether it accurately describes the invention unless you sat in on every meeting with the inventor and read everything provided by the Examiner. As such, it can be difficult to identify (from afar) who is good at writing specifications and who isn’t.

    Another part of writing good specifications is knowing the prior art — sometime you may have a good handle on it — other times you don’t.

    Also, it just gets harder and harder each year as the Federal Circuit makes us jump through more and more hoops.

  12. Stephan Curry May 7, 2016 11:29 pm

    Curious@10
    I echo you.

    also, google’s previous Nortel botched up patent strategies (failure to realize the importance of the Nortel patent portfolio as far as freedom to operate issues and future lawsuits of that portfolio in the wrong hands, etc etc) is mainly due to outside software patent guys were evaluating the Nortel patent treasure troves directed to important hardware and electrical engineering patent assets and so google blew off the nortel patent portfolio since the software patent guys did not think the hardware patents were important or/and did not understand the hardware patents.
    Here, in the Google case study, Gene can see the problems of software patent guys trying to evaluate electrical engineering patents — a massive uber fail. Someone should tell those supreme court justices and senators that patent law practice is a hard job.

  13. Stephan Curry May 7, 2016 11:43 pm

    Gene@2
    Second, you are simply wrong to say that patent attorneys cannot be expected to be sufficiently trained. If you are offering your services you should be competent to do the work. If you are not competent and you take the work you are violating well established ethics rules. It is that simple

    Gene, if you lived in the Bay Area, you can see shenanigans going on.

    a very famous software patent attorney once told my friend in the Bay Area that the electronics stages in the more detailed embodiments should only be drawn as plain BOXES without the transistor-based switching circuits even though the inventor provided the circuit drawings in the invention internal disclosure form (i.e., the famous attorney erroneously said drawing boxes are good enough). So even famous patent attorneys really do not know what they are doing when they try to handle inventions outside of their technical education/background.

  14. Stephan Curry May 8, 2016 2:57 am

    here’s a company (google) using outside software patent attorneys to evaluate nortel hardware and electrical engineering patents. the result is an uber patent panic.
    Anyone who claims they know what is a high quality patent are just fooling themselves and are causing patent application preparation Costs to go up.

    http://www.iphoneincanada.ca/news/apple-microsoft-rockstar-sues-google-samsung/

  15. Paul Cole May 8, 2016 3:24 am

    Patent applications cannot and should not be filed on the cheap. Here are a few considerations that it is useful to bear in mind:

    (1) A patent specification is a document that is likely to have to face third party due diligence examination and for enforcement will have to come before a judge, in the US a jury, and possibly appellate judges. The resources for scrutiny of the document at those stages may be about two orders of magnitude greater than those for initial drafting. If the patent is filed internationally, it will be scrutinised by numerous patent offices and the total resources for international filing and prosecution will far exceed initial filing costs. Again, deficiencies will be cruelly exposed during international examination. If you have any experience of court proceedings you will understand only too well the standard that is required. In summary the patent specification has to be fit to put before a judge.

    (2) As a corollary of (1), the document has to be sufficiently well-written to be persuasive, so that competitors will be inclined to respect it rather than challenge it.

    (3) A well written specification is the work of a drafting team. It is not the sole work of the attorney who cannot and should not be expected to pull rabbits out of hats. Very famously, Marconi’s first patent on the coherer in a radio receiver was drafted by a team made up of him as inventor, a patent attorney from the Carpmaels firm, an independent technical expert called Preece who was employed by the Post Office (then responsible for telecommunications) and John Fletcher-Moulton Q.C. who was then probably the leading IP litigation counsel in the UK. It was their team effort that resulted in a successful outcome. Most inventions cannot justify a full team of this kind, but the need for team effort and inventor involvement cannot be overlooked.

    (4) The broadest possible claim may not be the wisest one in the long run. Recent Supreme Court and Federal Circuit decisions show, if nothing else, the dangers of over-optimistic main claims. If the point of novelty in claim 1 is a broad functional statement devoid of supporting detail, the court may derive an indelible impression of excessive scope, and all may be lost.

    (5) Cheap and cheerful US provisional applications are unlikely to give rise to worthwhile priority. Almost certainly the generalization that is needed to obtain grant e.g. at the EPO will be missing, and even if it is in the final specification as filed, it will be mission from the provisional application with potentially fatal consequences.

    (6) For better or worse, the cost of patenting is front-loaded. The first filed application, and the subsequent international text, are the most important and critical documents. Everything else depends on them. Although the initial cost may appear daunting, in the overall scheme of things it is relatively minor, and going the extra mile will be abundantly repaid later on.

    (7) A friend of mine was recently offered the following proposition by the patent department of a major US company. They wanted patent specifications drafted and prosecuted on behalf of a research unit in a major UK university town. The deal was that a fixed sum of $5000 would be available for the drafting. More importantly, the whole inventor contact time for both the drafting and prosecution stages was not to exceed 1.5 hours. My friend spoke eloquently about the multi-meeting back and forth discussions that were crucially needed to identify the real invention in the field (which was software), and declined the invitation.

    (8) There ain’t no such thing as a free lunch.

  16. Anon May 8, 2016 7:36 am

    Well stated Paul.

    (5) rings true to one of my biggest “reteaching moments” that I experience with new clients, who somehow have picked up a “quick and dirty” is good enough mentality.

    (6) is absolutely true, and clients need to remember that in all jurisdictions there exists a “no new matter” rule. Sure, additional filings can be made (both additional provisionals and Continuations-In-Part), but both of these face a later priority date than the original pacing items.

    (7) may very well be all well and good for the friend, but the legal reality is that such a request from the potential client will be snapped up by somebody somewhere. It may be true that a top notch job just will not be had – but the critical point here is that the client is the boss, and it is the client’s right to decide to proceed with a “non-quality” price-based “best-at-a-price-level” application. There is NO law that says that clients must have the best possible application written. There is NO law that says that clients cannot force a “race to the bottom” based on low initial front loaded costs. Heck, there is NOT EVEN a law that requires any prior art search be undertaken whatsoever (and the mere oath from the inventor that the inventor herself think that what is submitted is the inventor’s invention suffers from an unverifiable tendency towards willful and biased misunderstanding vis a vis invention and the (unchecked) state of the art.

    But in the context of the Supreme Court – and the largest and most dangerous developments in patent law, I look most particularly at your point (4).

    (4) though, is impossible to know a priori, as no signposts exist to actually designate either how broad is too broad (for the applicant) and how pessimistic the courts will view whatever level the rung chosen from the “ladder of abstraction.”

    While it is indeed good to always stay away from “devoid of supporting detail,” the problem that I would put to you is NOT that claims are “devoid,” but rather, what will the term “abstract” mean in any one case that turns something NOT “devoid” in the eyes of the scriviner (and client, since the client has final say on the work product) but nonetheless is deemed “abstract” and “lacking that substantially more” double unknown.

    I am skeptical that ANY “scriviner” is prescient enough to know the right point of knowing where the duty to zealously serve the client and obtain maximum protection is in a sea of shifting judicial nose of wax mashing.

    The blogosphere is full of people proclaiming that Diehr is bad law and has been overturn (and in truth, Diehr is really just a software patent, so who knows how that case would be decided today had today’s “Judicial imprint” were active at the time of the original case). And yet, a close read of the Supreme Court writings indicate no such clear overruling – and arguably the opposite reading – but only if one considers that the full body of Supreme Court writings are an irreconcilable and hopelessly conflicted mess.

    There is a reason why Section 101 was called out as the “wax nose” (called that no less by Justice Stevens, who only too happily felt unconstrained to mash that nose himself perhaps most vigorously and without a doubt within the top five worst offenders).

    There will be NO clarity as long as the Supreme Court feels the ability (and has the ability) to play scriviners themselves. Within the next president’s term we are likely to have as many as FOUR new appointments to the bench, and the bench itself is likely to contain a majority of justices with under ten years of top level experience. ALL signs point to a continuing and perhaps exacerbated wax nose mashing period.

    To play off of a different “lunch” meme: Congress: wake up! In a very real way, it is your lunch that is being taken!

  17. Paul F. Morgan May 8, 2016 9:07 am

    Re: “..knowledgeable corporations .. all know that the more time you spend on a patent application the better.”
    If only that were true. A surprising number now farm out initial application preparation to India, and a number of others now outsource application prep and prosecution on a low bid basis. Nor is time the only issue with in-house or outsourced application preparation by young associates needing supervision and guidance from senior patent attorneys. Too often now they do not get that, especially with the billing pressures on partners in large law firms these days.

  18. tifoso May 8, 2016 10:18 am

    On The Race to the Bottom: I believe I got to see that race and the bottom.

    A few years ago I received an email solicitation from a firm asking me to “prepare patent applications” for their clients. Customers would be a better term. Their offer was $100. per application for two hours work. Needless to say, I did not even reply.

    The solicitation did not specify whether they wanted Provisionals or Non-provisionals. I assumed Provisionals. At that price, the most a prosecutor could do is prepare the forms and slap a cover paragraph or two around a writeup from the inventor.

    A little investigation revealed that one of those TV ad law businesses – wills, contracts, patents, etc. – charged $500. to the customer. Half of that went to a pair of California lawyers not admitted before the PTO. They, in turn, would dole out $100. to someone hungry enough to not care about the quality of the work.

  19. Anon May 8, 2016 10:21 am

    As Mr. Morgan may (or may not) know, any outsourcing to India prior to obtaining the appropriate export clearance is problematic.

    Mr. Morgan may be unaware of this, given his statements that he long ago relinquished his registration number and in no longer involved in the practice of law involving prosecution before the Office.

  20. Anon May 8, 2016 10:55 am

    Ethical considerations aside for the moment (and you do touch on some of them tifoso, including those not registered involved with patents and patent law), the mechanics related to prizing of which you speak are just not against the law.

    And while your case reverberates Paul’s in your saying “no,” the asking and saying “yes” – even at a quality/price point is NOT illegal and is entirely within the proper control of the client.**

    **of course, your exact situation may be different in that the client appears a step removed and one must then look to as to whether the attorney at the 500 level is properly working with the client who has that authority and final say-so. The 100 level attorney and the agency relationship need to be analyzed further, but does not change the bottom line of it being up to the client to decide the prize/quality point.

  21. Ternary May 8, 2016 12:03 pm

    tifoso@17

    An old-school approach is the use of patent engineers, who assist the inventors with “engineering” the invention to a patentable matter and nowadays would assist in assessing potential obviousness and embodiment issues. The billing cost of a patent engineer is between 30-60% of an attorney. (That is why good patent engineers eventually go to law school to become a well paid attorney).

    Some companies actually start to employ patent engineers again who assist with “invention harvesting”, spec and claim drafting and prior art search. The attorney reviews and edits and signs-off on filing. It lowers the cost of preparing the application while increasing the quality significantly. The (money) problem is of course that it takes a couple of years to train the engineer into a patent engineer. It takes a while for companies to figure out the actual cost of low quality patents.

    I suspect that we will see more of this as the bottom in quality hopefully has been reached and the courts and PTAB will continue to punish low quality patents, which I would like to stress are not synonymous with low quality inventions.

  22. tifoso May 8, 2016 12:15 pm

    Anon –

    I was not claiming it was illegal. Gene wrote about why patent applications cost so much. He referred to a race to the bottom. I was giving an example of that race.

    I am reminded, again, of something a colleague told me about 35 years ago. He had received a call from a prospective (non-patent) client whose main concern was price. “How much do you charge per hour?” Ignoring that this seldom reveals total cost, my friend replied, IIRC, “$125.” (This was long ago.) The prospect responded, “I know a guy who charges only $75.” My friend finished with, “He knows what he is worth.” So it is with patent prosecution.

    As we all have learned the hard way, clients whose sole concern is price are never satisfied. They will be trouble.

  23. Stephan Curry May 8, 2016 12:56 pm

    tifoso@21
    in view of your great comments, google got into this Infamous patent fiasco because their main patent guys were not “worth” their salt
    http://www.iphoneincanada.ca/news/apple-microsoft-rockstar-sues-google-samsung/

    and google used patent guys who did not know patent harvesting and invention disclosure incentives that solves the anti-patent engineer problem since these guys did not have experience in managing client massive patent portfolios and/or did not work as engineers prior to their legal careers.
    http://www.iam-media.com/blog/detail.aspx?g=d7906c86-9dd6-4e71-ad86-0d98744831b7

    Gene’s comment: “Gene@2 Second, you are simply wrong to say that patent attorneys cannot be expected to be sufficiently trained. If you are offering your services you should be competent to do the work. If you are not competent and you take the work you are violating well established ethics rules. It is that simple.”

    Gene’s above comment really really Oversimplifies the patent prosecutor profession since being a decent prosecutor not only involves cost-effective patent preparation/prosecution skills but also involves competent patent strategizing, patent harvesting, litigation forecasting, and Psychological conditioning to the client (and public/politicians) that our American patent system works (same approach done by antitrust lawyers), etc. By the way, did you all know that the late great Alan MacPherson despises the word “”etc.”” in a patent specification and office action response remarks (it is obvious to you all hardcore prosecutors that etc. should not be used in any USPTO filings).

  24. Anon May 8, 2016 1:02 pm

    Ternary,

    To play the devil’s advocate, upon what right do you suggest: “and the courts and PTAB will continue to punish low quality patents“…?

    You may be unwittingly buying into the premise of “punish” with no proper legal basis for doing so – or you may very well be just being colloquial and using “punish” in a sense that (without the negative connotation) such lower quality (but fully legal) patents and applications just ‘bite the dust’ when suitably challenged.

    I would however greatly caution that ANY sense in the first manner of “punishing” for pursuing a lower quality/cost price point is illegal and nigh immoral in its own actions. If such options are to be dissuaded, then they must be done so in proper (read that as legal) manners.

    tifoso,

    Thank you yes – my reply was less critical of you than the reading may indicate. Your stories about what a practitioner may charge (and the fact that practitioners may decline any work that they do not want to bring on) bring a smile to my face for their veracity – but sadly do not address the point that someone else WILL take up that work and further – that such a lower quality/price point is deemed perfectly acceptable in out legal system. Until such time that the legalities catch up then, I would also caution against the “moral imperative” aspect of “shaming” that implicitly accompanies the client’s choice (and control of choice).

    We have enough of the liberal self-appointed “fields of rye” protectors that would ploy their moralistic views as if those views were controlling law.

  25. Paul F. Morgan May 8, 2016 1:25 pm

    Anon, in response to your usual attempted insult above, yes I was well aware of the export control restrictions on descriptions unpublished inventions being exported to India for preparation of applications without a license, including the PTO Director’s warning memo, and counseled against it. But I heard much later, after I was no longer involved, that it is being done by several large companies, so presumably they have some kind of arrangement that avoids that problem.

  26. Anon May 8, 2016 1:51 pm

    First, the “insult” was slight and has to do more with the ongoing perception that wish to invoke more knowledge of prosecution than I think that you may have, and second (to belie that very point), I would not make such a presumption.

    Even large “companies” can act in disregard for legalities – as “shocking” as that may seem.

  27. Ternary May 8, 2016 4:41 pm

    Anon @22.

    I mainly used it in the colloquial sense. But also from the perspective of the inventor, whose patent “bites the dust” due to bad (or at least not good) lawyering in an early stage. The inventor fulfilled the obligation of inventing and disclosing the invention. For most inventors there is little influence on the application, once it is in the hands of an attorney, especially if the inventor is a novice in this field who has to rely on the attorney, who expects a certain level of compensation for a certain amount of work.

    The quality of patents before the courts and the PTAB is not always good, to say the least. However, I have seen very few comments on the quality of the attorney’s work in these cases, while most of these cases actually occurred because of the work of an attorney. Cuozzo being a case in point, wherein Justice Breyer criticized the quality of the invention, but not the work of the attorney. Cuozzo made a good invention.

    I suggest a wider involvement of patent engineers to help the inventor place the application in better condition for post-issuance procedures and wherein a major portion of the work goes to the engineer. The billing and compensation structure at law firms do not support this model of extensive preparation work by engineers and that is why you see it mainly at companies (and yes, sometimes not in the USA, though I doubt if that increases the quality, but it lowers the price). So, we probably will see a continuation of cases like Cuozzo, wherein it is argued that “integrally attached” includes a full computer interface, which may be good lawyering but is bad engineering.

  28. Anon May 8, 2016 6:07 pm

    Ternary,

    We appear to be speaking crosswise to each other, each to a slightly different topic.

    You are aware that the client has the approval and sign off authority on the attorney’s work, right?

    I do “get” that you are speaking more to an “expected value” position, but the plain fact of the matter is that a client who demands work at a set or fixed price is NOT asking for that same “expected value” as you may think is in play.

    Yes, counsel should advise the client appropriately and those clients who may be novices are likely to take the attorney’s word – but that is just not the driver in the situations that we are discussing with a “drive to the bottom” mentality.

    I think that you are too eager and too quick to say “that’s the attorney’s fault” without regard to the reality that cost points will – as they must – obtain different levels. You just cannot buy bottom level prices and expect a Ferrari.

    Your suggestion of patent engineers is a notable suggestion (and an option that people should take note of) – but again, that has nothing to do with the topic I am discussing.

  29. Anon May 8, 2016 6:35 pm

    Also, let me point out that you appear to want to have the inventor limited in their oversight role, and to take the notion that there is some “deal” that the inventor and the attorney have and that the attorney has not lived up to their end.

    Are you thinking of an inventor in a corporation setting, one that is NOT the client?

    If so, then your version of “deal” is an apparition – and does not exist. One thing that I always make clear when dealing with inventors within a corporation is that I am NOT representing the inventor as a person (unless, I am – and then I am not representing the corporation).

    The important point that I am making that is crossing over you (without being noticed) is the level of control of just what is submitted is very much in control of the client. If the client is the corporation and the corporation has struck the price-point deal – then THAT is the deal and not the deal that you are thinking of.

    Perhaps this is a shocking bit of legal reality, but while several attorneys have posted that they would not have such clients (as is their right), such clients – AND THEIR desired price-point driven “quality” is just not against the law.

    The law fully allows non-Ferraris on the road. And to drive that analogy even further, the law does NOT require a minimum safety check of anyone asking to have their “whatever” car be put on the road. THAT is fully – and only – the role of the examiner. Yes, that particular “deal” is a bit lopsided – but THAT is the deal. What you so often see is a wanting of a different deal and wanting the applicants to “police themselves” better and to only submit better “cars” into the system.

    But this is expressly a primary reason that the Tafas won – that “wanting” is just not part of the deal and the Office has no right to try to make it a mandatory part of the deal.

    If there IS to be a change – some “minimum level” of even submitting anything to the patent office, then THAT change (with the necessary details) must come from Congress.

  30. Ternary May 8, 2016 10:49 pm

    No, Anon, I don’t want the inventor in a mere oversight role. I want the inventor to work with a knowledgeable patent professional to create a spec that stands up in court (after issuance) so we create a respectable base of patents that takes the air out of the attacks we are suffering. While I blame much on interest groups, it is also true that some work delivered by patent professionals is of “Yugo” quality even if that is not illegal. And when so many “Yugo” patents stall or completely collapse in court or in the PTAB we cannot act completely surprised that people see that as representative for the patent system. And they hate it. It is completely irrational, but the American public right now does not like patents. And the fire is being deliberately stoked. Read the co-pending IPWatchdog article on Patent Trolls. (http://www.ipwatchdog.com/2016/05/08/media-use-term-patent-troll-negatively-predisposes-readers-courts/id=68944/) Our industry should adopt and conform to some minimum standards before Congress finally does its job.

    I like your comparison of patents with cars. Patent prosecution in many ways reminds me of a certain auto-shop I know: while they say that they deliver the highest quality for the lowest price, their purpose in life is to charge you the highest possible price for the lowest amount of work they can get away with.

    Even the banks realize (most of the time) that some form of self-regulation is good to prevent total disaster. Except for some lone voices on the need for improved quality, like Gene’s in this article, that notion seemingly has not reached our industry. We are still in for the “deal.” Very apropos right now. We cannot blame the courts, the PTO, the Examiners, the PTAB, the NPEs, interest groups and inventors, anyone but the prosecuting patent professionals. The PTO Bar Exam only says that you know the MPEP, not that you deliver good quality. In this highly polarized environment completely opposite interests are pursuing the overhaul of the patent system for different reasons under the guise of quality. Large firms and companies will survive the onslaught that will follow. The writing is on the wall.

  31. Greg May 9, 2016 9:34 am

    Gene, great article. I am in-house counsel and constantly fighting for the right budget for each patent application. Some can be done on the cheap, while others need larger budgets. This article will hopefully help convey the message.

  32. Gene Quinn May 9, 2016 10:54 am

    Russell-

    You ask about focus on the claims. It is probably true that most examiners focus mainly (if not solely) on the claims. But it is 100% correct that when the claims you file are rejected you will need to amend those claims and add material to the claims to make them more narrow to overcome the prior art found by the examiner. If you focused only on the claims and put everything into the claims and then prepared the written description just so the claims were covered you will have no ability to amend the claims. That is how the bargain basement providers operate. They write claims, they cover just those claims and nothing more in the specification and when those claims are rejected (which is the rule not the exception) then you have to abandon the application because there is nothing left.

    Furthermore, if you have a technically thin specification and you are lucky enough to get claims issued you will almost certainly lose those claims if/when they are challenged or become the subject of a lawsuit.

    Focusing only on the claims is a mistake.

  33. Paul F. Morgan May 9, 2016 11:03 am

    Gene, your response to Russell above about thin specs lacking a basis for claim amendments is right on.
    Also, if the PTO starts enforcing 112 enablement requirements for more than just chemical applications [as it now says it is] a skimpy spec may not even adequately support the broad generic claims.

  34. Stephan Curry May 9, 2016 12:18 pm

    Paul F. Morgan@33

    I also would like to add that I have been able to overcome all and I mean all Alice 101 rejections in office actions so far (fingers-crossed) by crafting the specification to make clear on the usefulness and advantageous aspects of the embodiments in a very careful way. Obviously, this leads to Higher and higher patent application preparation costs since the courts added another hoop for patent prosecutors need to jump through. Granted, talking about advantageous aspects can be an issue during litigation regarding claim scope interpretation, but the patent litigator in me still has to get the application through the Examiner first even before the patent can be litigated in the future.

    Those Patent Reformers really like to preach the High Quality patents Sermon (but Judge Paul Michel said in a panel in Virginia that the issue is not high or low quality patents, but the issue should be whether each claim is valid or invalid).
    Those Patent Reformers really want to put most prosecuting patent attorneys out of business, as at least some of them are mad at patent attorneys for various reasons due to costs, economics, revenge due to fiascos that hurt the bottom line, etc. etc.

  35. Qian Gu May 10, 2016 8:33 am

    Mr. Quinn, you wrote “Outsourcing to those who speak English as a second language is extremely dangerous.”

    I have to disagree. There are many competent and good patent attorneys whose first language is not English. Please revise your article!

  36. Gene Quinn May 10, 2016 9:48 am

    Sorry Qian. I’m not going to revise the article. I am entitled to my opinion, which is based on what I have observed in the industry for many years.

  37. Qian Gu May 10, 2016 3:53 pm

    Your statement is too absolute, if not discriminatory.
    Many reputable firms hire patent attorneys who were not born in an English speaking country. Some even made partner. These firms are not stupid. Many big companies trust these patent attorneys with important inventions and are happy with the results. These companies are not stupid.

    Your statement is simply wrong. Maybe you should ask the PTO and state bars to disbar all practitioners who were not born in an English speaking country.

  38. tifoso May 10, 2016 4:34 pm

    Qian Gu –

    If a patent application is outsourced to someone who is in another country and that person is not admitted before the U S PTO and that person discloses the invention to another who copies the invention, what recourse does the inventor have? Sue? At what cost?

  39. Qian Gu May 11, 2016 4:39 pm

    tifoso:

    That is not what Mr. Quinn was talking about. He said “Outsourcing to those who speak English as a second language is extremely dangerous.”

    Apparently he was talking about everybody who speaks English as a second language, regardless whether he/she is admitted to practice before the PTO, has been in US practice for years, has served many clients, or is a member of a US state bar. As long as he/she does not use English as the first language, Mr. Quinn believes that it is dangerous to use that person.

    I asked Mr. Quinn to revise his article to clarify his position but he refused. I can only conclude that he meant what he wrote.

    As to your question, there is not much the applicant can do in that situation. The patent bar is there for a reason. Not using someone who is not admitted to practice before the USPTO is wise, but not using a licensed practitioner simply because of his/her first language is discriminatory.