Patent Application Costs: You Get What You Pay For

By Gene Quinn
January 7, 2011

Inventors and entrepreneurs who shop around find that if they take their invention to a number of different patent attorneys they are likely to get a number of different quotes for services ranging from patent searches to patent applications. In fact, you have probably seen the ads on the Internet where a patent attorney or patent agent proclaim that they can prepare and file a U.S. nonprovisional patent application for some ridiculously low price, perhaps as low as $1,400. It is my opinion that there is no legitimate way to adequately prepare and file a nonprovisional patent application for $1,400. In fact, the lowest quotes we typically provide are for between $6,000 to $8,000 plus the filing fees and costs of drawings.  See Cost of Obtaining a Patent.  So why the great disparity? The first thing to understand is that like everything else in life, you get what you pay for. There is just no way to escape that economic reality.

Often times a patent attorney or patent agent will start with drafting a set of claims. In fact, it is probably accurate to say that about 70% of patent attorneys start with the claims. There is nothing wrong with starting with the claims, and there is nothing wrong with starting with the written description, it is a matter of preference really. The claims will be what defines the exclusive rights that are ultimately granted, and many patent attorneys and agents think in terms of claims. The difficulty comes, however, when a set of claims are drafted and then the written description is drafted to match the set of claims crafted. When this occurs the written description is no broader than the claims, which means that there is no support in the written description for anything other than the claims originally filed. This is one way that some bargain basement providers operate, and it can be catastrophic for the unknowledgeable inventor.

One of the things that many inventors and entrepreneurs fail to understand is that claims can be added to an application even after the application has been filed. Whenever I tell inventors this they are almost always perplexed because they are typically familiar with the fact that you cannot add anything “new” to your patent application after it has been filed. This centers around the concept of what is considered “new matter.” There is an absolute prohibition on the addition of new matter after you file a patent application, but what is “new matter”? The answer is almost always a surprise.

If an applicant amends or attempts to amend a pending patent application the issue of whether that which is being amended constitutes “new matter.” Typically what you want to do is add a claim not previously presented, so the patent examiner will endeavor to determine whether the claim you are adding constitutes new matter or whether it is acceptable to be added to the patent application. Information contained in the specification, claims or drawings of the application as originally filed may be added to any other part of the application without introducing new matter. What this means is that it is imperitive that at the time you file your patent application your application; namely your written description, drawings and claims be as in depth and detailed as possible.

You want to have a description of a very basic, vanilla version of your invention, you want to have many examples of optional features, elements and characteristics. You want to describe the Cadillac version of your invention. So you describe all the various combinations and permutations that you can think of, because if you don’t then you have no ability to claim them as your invention. By rigorously describing your invention and the various alternative versions it could take you create an extremely detailed disclosure at the time of filing, which will allow you to later add claims without those claims being new matter. If what you seek to add was disclosed anywhere in the text or in a drawing, even in passing, you should be allowed to add a claim based on that information without there being new matter. But how are you going to do this if you have a short textual description with few drawings?


By spending little and allowing the written description to be no broader than the claims that are filed you are making a huge mistake. The reason I always start with the written description is because I want to be able to have as thorough and complete a description of the invention in writing as possible. Then I go to work on the claims. Invariably, whether you start with the claims or you start with the written text, you will need to go back and forth iteratively. For example, after I write the text I start to work on the claims, then as writing the claims I will want to add certain things that might not be described as well as could or should in the text, so I return to the text to beef up the text. As I am beefing up the text thoughts come to mind for the claims, so I add that to the text to make sure its there, then return to the claims to add that information to the claims. Regardless of what you start drafting the application needs to be viewed as a unitary whole and that requires back and forth. It also requires that you stop working on the application for a while and come back to it. Just like anything in life, if you set it aside and pick it back up later you bring fresh eyes, a new perspective and the product becomes better. If you are paying $1,400 how many hours do you expect to get from the attorney or agent? How many days will they work on the application and come to it with fresh eyes and a new perspective?

When you file a patent application it is always necessary to file something that completely and clearly describes the invention so that others would be able to understand the invention. It is likewise important to file a patent application that explains the full glory of the invention. This is something a patent attorney can really help with. Invariably inventors will come and say they have invented X that does A, B and C. Upon review it might be noticed that with some minor alterations and enhancements the invention might not just be X, but it could morph into Y and Z, and could do D, E, F and G. If all you describe is X that does A, B and C, then you never get protection for Y and Z, or for D, E, F and G. Thus, one critical function a patent attorney can play is helping the inventor realize the full glory of the invention by working with the inventor to tease out variations and different versions of the invention. If you are not doing this type of brainstorming and just filing a short description with a few claims you are absolutely leaving on the table claims you could otherwise have obtained.

It takes time to prepare a detailed written disclosure that will support any number of claims, and there is just no way to rush it. Inventors and entrepreneurs intuitively know this, but they get lured into believing that what they get for $1,400 is just as good as what they would get if they paid $8,000, which is unrealistic of course. You cannot fall for what you want to hear when you deep down know it makes no sense. If you aren’t convinced ask yourself this: when you were in school and you had to write a paper for a grade, was the resulting paper better if you spent more time or less time working on the project? The reality is the more time you have to spend the better the work product. If you are not paying very much then you realistically cannot expect the same number of hours, nor can you expect the same level of quality.


Do You Have an Idea for a New Product?
CLICK HERE to Submit your Idea. 100% Confidential.
No Obligation. Team up with Enhance to bring your invention to life and get it to market!

I have a friend who works at a big law firm. He is one of the most sophisticated computer minds I have ever encountered. He charges between $900 to $1,000 an hour to work on a patent application, and he always has more work than he can handle. He represents large corporations who not only want patents but absolutely need patents because without them they really have no competitive advantage. These companies pay him this rate not because they like to overspend, but because he is THAT good. The truth is that those who have a specialized skill set charge more, and others who recognized the quality provided and know they need nothing less than top flight quality pay it. Now it is unrealistic for inventors or small businesses to pay those sums for patent work, but the story is not offered for that reason. Don’t fool yourself into believing that someone who charges $50 an hour is as accomplished as someone who charged $400 an hour or $800 an hour. If the person charging $50 per hour were as accomplished and could demand more wouldn’t they?

It is essential for inventors and entrepreneurs to treat their inventions from moment one like they will be the million dollar invention they have dreamed about, because if you don’t by the time you realize it is the million dollar invention it will be to late to do anything about. I preach about the need to set a realistic budget, investigate the prior art on your own first, work with crude prototypes, pieces and parts you have laying around in your garage. Inventors need to be frugal and continue to work in a fiscally responsible way. There will come a point in time, however, where things are shaping up and proving out. At that point you need to take steps to protect your invention, and you want to file an application with the most thorough and complete disclosure as possible. If your invention continues to prove out, becomes marketable and commercially relevant then you want to get a patent, and in fact you might want to establish a patent portfolio with multiple patents protecting various aspects of the overall invention. The reality is you will NEVER be able to do that if what you filed was a watered-down written disclosure that does nothing more than support the few claims you filed.

If a price like $1,400 is all you can afford that is one thing, but fooling yourself into believing you are buying a Cadillac, or a Ferrari when you are paying for a Yugo is ridiculous. In poker if you don’t understand the quality of your hand you get burned, and the same is true in the patent world. Spending all the funds you have for a patent that is extremely narrow and offers no opportunity to grow through the addition of claims that will later protect various aspects of your invention may not be in your best interest.

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and President & CEO ofIPWatchdog, Inc.. Gene founded IPWatchdog.com in 1999. Gene is also a principal lecturer in the PLI Patent Bar Review Course and Of Counsel to the law firm of Berenato & White, LLC. 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 19 Comments comments.

  1. Anon January 8, 2011 7:59 am

    Good article – thanks Gene

  2. The Dude January 8, 2011 9:34 am

    Gene,
    i enjoy reading your blog everyday
    i appreciate your present article eventhough i do not share your opinion on writing the description first and then fishing into it to define claims :in my opinion it is quite impossible to have claims defined then only with the words already present into the description which in turn leads to lack of support of the claims by the disclosure which in turn means big and serious problems in most countries,except (may be in prosecution)in the US, unless you incorporate the claims in the description .
    Furthermore the lack of analysis of the invention in general terms (with detailed dictionnary of those terms) which is usually the way to address the “drafting the claims first” issue is catastrophic in european prosecution (and “rest of the world “prosecution) wherein your broad scope claims become very narrow as soon as you have to modify those claims in prosecution.

    I understand , Gene, that you’re doing the necessary back and forth work to avoid this kind of trap, but too many attorneys(and not only in the US) making the description first just then throw some “general claims” to the pto giving the illusion to the inventor that he will control the world! A description focused on what your prior analysis of the prior art with he help of the inventor’s knowledge and skill starting from the general teaching of the independant claims
    up to the very detailed examples is i believe(but i understand others may have different views)
    a better approach.

  3. Steve M January 8, 2011 10:11 am

    Gene–I 2nd Anon.

    And congrats on your hard-earned blog award, too.

  4. MLS January 8, 2011 11:09 am

    With rates such as noted above, I have to wonder why patent reform even needs to be mentioned in any conversation. At those rates, and future, predicatable escalations, it seems only a matter of time before the process of securing a patent is priced well beyond the means of the financially well-heeled. The continuing escalation of fees before the USPTO merely exacerbate the pricing of prosecution and maintenance services beyond the means of the ordinary inventor.

    Price does not equate with the quality of the finished “product”. The professional qualifications of counsel is a far better metric, and not every such counsel subscribes to the notion that billable hour rates are the sine qua non of professional qualifications and abilities.

  5. Gene Quinn January 8, 2011 12:46 pm

    MLS-

    It is certainly true that some attorneys charge a lot, and perhaps without justification. But is it really your position that those who are qualified based on experience and expertise are charging bargain basement prices? Do you really think that paying bargain basement prices is going to result in the same quality application?

    Patents are expensive, and quality patent work has always been expensive. So we are not now any more at risk of only having patents for the “well-heeled”, as you say. Most inventors think patents cost a lot of money, but what they fail to realize is that the cost of protecting the rights available is only a very small fraction of the overall costs required to go from invention to commercial success. So those who are turned off by patent costs would do better to simply not pursue an invention because if you cannot afford legitimate, quality work then there is no way that you will be able to afford the many other far more costly stages of the process.

  6. Gene Quinn January 8, 2011 12:53 pm

    Dude-

    I don’t think our approaches differ really. One thing that allows me to start with the description first us a very detailed search process. I typically produce a 5-7 page patent opinion that spells out the broadest likely scope of protection that can be anticipated. I always like to go back and forth with the inventor to constanly learn more, particularly in the context of what we find. In fact, our searches are typically two phase searches that use feed a k from the inventor after phase 1 to refine the search further. But this, and the process you describe, as well as other quite deliberate procedures that others use, requires a lot if time. Time costs money, and it is not realistic for inventors to expect those offering bargain basement prices to produce the same quality because they simply can’t (or won’t) put in all the time that could be invested to produce the best, broadest and most complete disclosure.

    Cheers.

  7. Ashwin January 8, 2011 6:30 pm

    Another great article about why when it comes to patent drafting, you really do get what you pay for. I have seen patents filed with spelling mistakes, grammatical errors, and written in “Indian-English”. The Examiners must be laughing their heads off. I mean $2000 for a utility patent is ridiculous. A good disclosure alone takes in excess of 20 hours. Even if you break that down to $100/billable hour, it does not include drawings, claims, etc. Which is why, top companies who are serious about protecting their IP, do not use outsourcing chop shops and do not use the lowest provider they can find. The purpose of a granted patent is to stand enforcement, offensively or defensively. Good luck trying to get an enforceable patent for anything less than $6-$8k at the low end of the spectrum. Obviously more complicated technologies, require more time and careful drafting.

  8. Stan E. Delo January 8, 2011 9:02 pm

    Ashwin,

    Very well said methinks. In my case I came to a very experienced Patent Agent with a self-drafted Patent Wizard disclosure, which had most of the information included, or so I thought at the time. It took about 2 weeks of back and forth between us to ensure that Larry completely understood the scope of the invention before we filed the Provisional application, as I was trying to teach a somewhat complex invention to him, but later I have discovered that probably 10 claims have not even been addressed yet. Not a big problem as long as the spec has enough information included which it seems to, which will have to be reviewed before it is filed as a NPA, replete with as many claims as we think we might be able to get away with. Looks like most will survive at this point, but there is a very big world out there.

    Regards,
    Stan~

  9. step back January 9, 2011 10:22 pm

    A more accurate way to say it is that you very very rarely get more than what you pay for.

    An exception might be when you buy the one winning lottery ticket.

    Another way to think about it is to ask yourself if you would hunt for the cheapest brain surgeon in town. Patent preparation is sort of like brain surgery in that the attorney/agent has to get into the head of the inventor to better understand what the gist of the invention is.

  10. Stan E. Delo January 9, 2011 11:02 pm

    Step Back-
    With all due respect, the Patent Agent that helped me has more than 30 years of experience in writing patent applications, originally working for UC Davis as I recenly learned, before working with the Washington State University licensing program for several years, and then moving on to the University of Washington for the rest of his official careeer. Perhaps the best part is that he is a very good guy, and we have become pretty close friends in the process. He is still just a little kid at heart like myself I suppose.

    Stan~

  11. David Boundy January 11, 2011 2:32 pm

    I agree with The Dude — based on the hundreds of applications I’ve reviewed, the ones that were written “claims first” are almost always better than the ones written “specification first.”

    I almost NEVER see a patentability opinion letter — and writing that letter may force a precise-enough analysis of what you plan to claim that this practically accomplishes the same result.

  12. Stan E. Delo January 11, 2011 3:33 pm

    Hello David,

    In my case it was necessary to teach the invention to my Patent Agent, just so that he adequately understood what it was capable of doing, which meant that I needed to convey the gist of the invention through a somewhat rambling specification that I supplied, as trying to define the claims first might have been a bit dangerous in my particular case because I am not knowledgeable about proper claim construction. I had a working prototype to show him several times, but the possible benefits were hard to explain to someone that doesn’t happen to be an expert in aeronautics. The device itself is relatively simple, but what it is capable of doing is most definitely not. I plan to use a different practitioner to review the application before I file the NDA, to seek a second opinion with fresh eyes to try to extract as many valid claims as we can derive from a profuse spec, but then again we will be forced to go back and make the specification match the language that is needed for the possible claims.

    Best regards,
    Stan~

  13. MLS January 14, 2011 12:07 pm

    Mr. Quinn,

    Perhaps my opinion can best be summed up by changing the title of the article from “Patent Application Costs: You Get What You Pay For” to “Patent Application Costs: You Get Who You Pay For”.

  14. john white January 14, 2011 6:52 pm

    I am with Dude; claims first. Gene and I have this discussion all the time. The goal is the same, but writing claims first, for me, helps me comprehend the nature of the necessary disclosure. John

  15. Stan E. Delo January 14, 2011 7:47 pm

    I see now that I had inadvertantly written NDA, when in fact I meant to say a Non Provisional Application for a patent. Sorry about that! In my case the claims were very difficult to describe, so I just wrote a proposed very complicated spec just to see what we might be able to claim. In fact it would have been very problematic for Larry to try to write any claims until he fully comprehended the invention, which I had not even fully comprehended myself until I had tried to describe it accurately, and I am supposed to be the *expert* of the inventive matter. Therefore we went with the spec first, until we were both satisfied that we were on the same page, and he then proposed an impossibly broad claim that included the Kitchen sink, the Bathtub, and everything else just in case some of the claims might be objected to. When I finally file the NPA, the claims will be very extensive of course, just to see what might be possible to get away with perhaps. Great article John W…

    Regards, Stan~

  16. step back January 15, 2011 7:05 am

    I am with Dude; claims first.

    JW: Obviously you are a chicken before the egg kind of guy.

    But when you have your breakfast, surely you do not engage in the abhorrent behavior of cracking your poached egg at the bigger end, heaven forbid ! (/sarcasm)

  17. Former Solo April 14, 2011 9:40 am

    I do not agree wholly that ‘you get what you pay for’ nor “If the person charging $50 per hour were as accomplished and could demand more wouldn’t they?” No. Not necessarily. ‘Depends on why you’re practicing.
    I know for a fact (because I worked for one) there are at least a few patent attorneys who do the work because they love it, want to help the small inventor, and look at their practice as a calling, not only a business. This one in particular went into patent law later in life, after ‘retirement’ from a teaching position. He has been practicing for well over 20 years. He is very experienced and accomplished, but not greedy. He adjusts his fees according to what clients can pay and truely wants to help small inventors. While I think clients should be prepared, should know what it costs to start a small business, even have a business plan and have realistic cost expectations, I also think there are ways to keep costs down and still provide excellent service. This person’s been a solo for years, lives in a place with a relatively low cost of living and has a home office. The clients pay for his brain and his expertise but not his fancy office, car or suits. Just because he does not charge $800/hour and may charge some clients $50/hour does NOT mean he is not accomplished. He’s just not greedy. I’m know he does more work than he is paid for. He also has his teaching retirement and doesn’t ‘need’ the money so that of course figures in. BUT, there are people out there who can help the small inventor get good, broad, useful patents at a reasonable cost. i would not jump to the conclusion that if you’re not charging $800/hour you must not be accomplished.

  18. Gene Quinn April 14, 2011 11:06 am

    Former Solo-

    And I didn’t say you have to pay $800 per hour to get competent assistance.

    Nearly all attorneys engage in helping those who cannot afford their hourly rate. This type of pro bono or dramatically reduced fee service is good and probably required under many, if not most, ethical rules that apply to lawyers. Notwithstanding, I do think it is naive to believe that those who charge $50 per hour on a regular basis are as accomplished as others who can command more.

    Market forces sometimes over blow the cost of some goods or services, but in most instances price is a relevant factor indeed.

    -Gene

  19. Alan Rudy September 12, 2012 3:32 pm

    I agree with Solo. It’s great to find people who are like the person Solo worked for. To extend on Gene’s car example, I don’t think everyone needs a Cadillac of patents for a patent idea, they can be just as happy and maybe even better served by an Accord.