Why Does It Cost So Much to Prepare a Patent Application?

By Gene Quinn
December 11, 2011

Applying for a patent in the United States can be a daunting undertaking.  Indeed, the cost of preparing and filing a patent application can be quite high.  Sure, there are the bargain basement discount sellers 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 can delude themselves, but sophisticated inventors, companies, universities and even newbies who have their wits about them know well that the more time you spend on a patent application the better, and more time equals more expense.

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

Earlier this year, in February 2011, former CAFC 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.  What happened to the relative simplicity of preparing and filing a patent application?

[Inventors-Google]

Somewhere on the way from then 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.

Indeed, 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.  Until the formation of the Federal Circuit there had been some Regional Courts of Appeals that hadn’t seen a valid patent for decades.  Every patent litigated in those circuits would meet an untimely death.  The Judges had never seen a patent worthy of being issued and valid.  Something had to be done.  It was, and patents became stronger because there was no philosophical hatred of the patent grant.  Bad patents have claims invalidated, good patents have claims confirmed and upheld.  Hakuna Matada!

With the Hakuna Matada certainty, however, came many more patent applications and issued patents, as well as an increase in the amount of patent infringement litigation.  The increases, which mirror each other in rise, are shown in the charts below.

For more patent litigation statistics see Patent Litigation Statistics: 1980 – 2010.

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 a patent application, both in terms of quantity and quality.

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 a pending patent application.  If you want to add new matter you must file a new patent application, but that means a new priority date for that which is being added for the first time.  That new priority date means there will be additional prior art you need to consider and define around.  Simply stated, the first patent application filed is critical.  It has to describe the invention to the fullest extent possible.

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 a pending patent application 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 has invented.  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.

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.  That is why you must keep three things in mind.  First, you want to describe anything that works, no matter how crudely.  Second, you want to describe variations to the invention that knock-off artists will likely employ 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.

Because you absolutely, positively need to describe not only what has been invented.  But you also must 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 why patents have become more expensive to obtain.  Because they 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 money and getting nothing to show for it in return.

For more information on this topic please see:

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 37 Comments comments.

  1. ben ford December 12, 2011 10:11 am

    “”the cost of preparing and filing a patent application…”

    Inventors who have been through the drill have adopted a new approach. Thanks to the new patent bill we no longer file, but instead rely on trade secrets. If we cant reliably protect an invention that way, we drop the invention and move on to the next. Congress and corporate thieving multinationals can kiss our backsides.

  2. Blind Dogma December 12, 2011 11:04 am

    ben,

    Don’t forget to document your work just as if you were filing.

    That way, you too can enjoy the Prior User Rights gift (in due time, of course).

  3. jodi December 12, 2011 11:53 am

    Gene,

    Sure professional help will be better – but if we’re talking about small inventor – at what cost? Assuming a small inventor + tight budget + willing to spend the time, I don’t see why they could not come within say 80-90% of the quality of a professional in writing the body of the patent – as long as they understand the “new matter” concept.

    Sure, the professional would still be necessary to refine the Claims (if not completely write).

  4. jodi December 12, 2011 11:56 am

    Blind Dogma,

    Even if you document your work – without filing I worry that you will face significant costs in defending yourself in an infringement suit (even you invented it first).

  5. Dave Korpi's Provisional Patent VIdeo Course December 12, 2011 12:57 pm

    I always LOVE to read what Gene Quinn has to say. For the MOST part I totally agree..

    However, I would ADD the following for consideration…

    Why does it cost so much to file…. Also add Office Actions as these can quickly pile up fees if the patent attorney is inexperienced or is trying hard to have complex claims allowed and must enter into a “battle” with the examiner…

    On EVERY patent I file I will ALWAYS spend the “extra” $125.00 to file a Provisional Patent Application, PPA, and then IF, and ONLY if, the product is viable I would concurrently start work on the non provisional patent application with the knowing that “stuff happens” and we FREQUENTLY find we left our “matter” that should have been put in the PPA. If it is significant I would simply spend ANOTHER $125 and file another PPA (assuming it is a HOT field where filing dates are important). For those with limited funds, and wanting to SELL their inventive idea it is highly likely that the buyer of your inventive idea will want to have THEIR IP team draft the non provisional patent application to be in keeping with their IP holdings strategic plan. This means you do not have to “directly” pay for the patent!

    Anyway, my learning is to file a PPA ALWAYS with the intent to “over describe” where we must describe the various possible combinations, permutations and alternatives in painful detail. I tell folks say the same thing so that a fifth grader, Albert Einstein, and one skilled in the arts can understand the inventive idea.

    So, if you DO NOT have a bunch of money to file your patent then look at the Provisional Patent Application and file it as if it were a non provisional patent application. There are no “penalties” for “over explaining” your invention in a PPA. You will discover that when you detail your inventive idea there will likely be more than one single invention, which is just fine in a PPA. And, you save money. Remember… OVER EXPLAIN..

    Thanks,

    Dave Korpi
    http://provisionalpatentvideo.com/

  6. Gene Quinn December 12, 2011 2:09 pm

    jodi-

    It is pure fancy to assume that a novice inventor can achieve a 90% solution. It is that type of thinking that leads virtually all do-it-yourself inventors to achieve extraordinarily narrow patent protection.

    -Gene

  7. jodi December 12, 2011 2:59 pm

    Gene,

    I disagree – note I included “willing to spend the time” – meaning if the small inventor spends a considerable amount of time they should be able to elaborate on all sorts of variations of their design and cover the “new matter” you describe.

    For example, small inventors do have choices:
    1) spend 2 hours discussing patent with professional + pay $10k for professional to write it up
    2) spend 100+ hours writing patent support themselves + pay $2k for professional to write Claims
    I suggest that any engineer that has some knowledge about patents and worth his salt and puts in the time to finely detail should be able to get say 80% of the professional. Indeed, is this different from many things in life? …e.g. first 80% takes 20% effort and last 20% take 80% effort.

    Of course the tradeoff is time – which independents have in comparison to $money.

    NOTE: I’m not talking about Claims – just the description, diagrams, and strategy.

  8. jodi December 12, 2011 3:08 pm

    Gene,

    Dave makes a couple points that support my arguments:
    1) describe it so that a “fifth grader” gets it
    2) over explain

    Surely a competent engineer is capable of these 2 things – so then all is needed is for the engineer to understand they can cover off “new matter” issues by basically wracking their brain for all sorts of uses, variations, combinations, permutations, etc… for their invention.

  9. Gene Quinn December 12, 2011 3:15 pm

    Jodi-

    Is a competent engineer equipped with the knowledge of Federal Circuit cases that deal with how inventions should be described in a patent application?

    Every time I review the work of an individual there are all kinds of egregious mistakes. The use of terms like “must” and “only” are two examples of how inventors love to talk and which come with enormously negative consequences. Most inventors describe their invention with such specificity that any resulting patent would be virtually useless and exceptionally easy to get around.

    Dave may be a nice guy, but taking patent advice on how to draft a patent application from someone who is not a patent attorney or patent agent is extremely dangerous. Thinking that untrained individuals can do the same work as a professional who does this for a living is extraordinarily naive.

    You are more than welcome to believe that novice inventors or even inventors with a few patent applications are just as capable. If you make such a leap you will, of course, wind up with patent rights that are useless. So the choice is yours. Sometimes you have to do it yourself, but pretending that you can do it just as well is ridiculous.

    -Gene

  10. Mike Coblenz December 12, 2011 4:07 pm

    Gene:

    The biggest cost for inventors is not the filing fees but the attorney’s fees. I always tell my clients that the more work they do, the less I have to do, which will save them money. I tell them to look over the patents I have uncovered in my search, and to write up the description of their invention in the same format (Background, Summary, Description) and same depth of detail as the patents I have provided. Despite that, most provide me about a paragraph of description, or more often than not, sit in my office and describe it to me from a sketch. And so I have to spend time to learn the art, draft drawings to describe the invention and to send to my draftsman, define elements, and draft the entire application.

    I have one client, a math professor from Europe, who writes such precise applications that I feel bad charging to proof-read and file. The rest, I almost feel like charging them more for the poor quality of their descriptions.

    Jodi must have better clients than I have, if they’re doing 90% of the work.

    Mike

  11. Gene Quinn December 12, 2011 4:29 pm

    Mike-

    I agree with you. In a lot of cases the more a client does the better, as long as they are doing it under my guidance. I use my Invent & Patent System to guide inventors to give me what I need, which allows me to focus on adding value rather than starting from scratch.

    I agree with you also about charging more for proof reading. I had one instance lately where I told the inventor I really didn’t think I could add much value in a reasonable amount of time. it was the best inventor job I have ever seen. Most of the time it is a mess. Tons of irrelevant information. The nuggets are all obscured, if in fact any are present at all. An inventor that waits to the end to get guidance is doing themselves a big disservice.

    Perhaps I missed it, but is Jodi an attorney or agent? I was getting the impression Jodi was an inventor.

    -Gene

  12. Anon December 12, 2011 5:18 pm

    I think the biggest costs are not the attorney’s prosecution fees, but any attorney fees that may come in any enforcement action.

  13. David Boundy December 12, 2011 8:11 pm

    > “there is nothing inherently wrong with a narrow patent. ”
    At least not if you’re the competitor…

    Jodi and others that ask why inventors can’t write their own patent applications: well, I don’t know why, but it’s just a fact. They can’t. In 20 years of practice, I have tried this a dozen times or so, and I have had only one client who understood how to write well enough to give me something genuinely useful. That was the only inventor who ever gave me more than a page or so of description. In every other case, asking the inventor for help has done far more to bog the process down than help it.

    Oh man, this is bringing back a bad memory. I had one inventor who I must have given the same instruction 20 times: give me one document, that walks through the invention from beginning to end, showing how the steps in the process connect to each other. I would get back a two sentence email. Then another two sentence email. Then another. He sent me over 75 two-sentence emails over six months. It was like Chinese water torture. I kept asking him to stop sending me the dribs and drabs, and put his thoughts together into one document that flowed from beginning to end, that showed how his 75 thoughts fit together. He just couldn’t do it.

    I finally took his 75 emails and put them together as best I could, filed the application, and fired the client the next day. One of the biggest relief days of my career. Two weeks later he phoned and asked “You didn’t say anything about how x connects to y.” I asked him to bring it up with his new lawyer, and get help filing a corrected application.

  14. Gene Quinn December 12, 2011 9:29 pm

    Come on David. You REALLY don’t know what I meant when I said “there is nothing inherently wrong with a narrow patent”?

    Lots of reasons to take what you can get and have an issued patent, but then circle back to expand your protection with a continuation. Investors love patents, as you know. Most investors are not sophisticated. Holding out for a broad patent and refusing a narrow set of claims is simply foolish for many. So there is nothing inherently wrong with a narrow patent. It just has to be a part of a broader strategy. You also have to know what you are getting.

  15. Stan E. Delo December 13, 2011 3:18 pm

    David B-

    I got a huge kick out of your Chinese water torture story, which I can certainly understand, after having run an inventors group for a few years. It must have been very frustrating to try to pull together the very scattered thought process presented by the inventor, and come up with something reasonably cogent. I have also had to walk away from clueless clients in my profession, if for no other reason than to protect my professional reputation, and also to avoid the frustration of being required to do something that I didn’t really feel very good about. (You want me to do What?)

    I used an approach somewhat like Gene suggests in #11, but in my case I used the PatentWizard PPA software to force me to adequately describe what I Thought I had invented. I used it as just a tool to teach the invention to the practitioner in the somewhat esoteric field of complex aerodynamics, and it took me about 2 weeks of intense concentration to get the *application* to the point where I thought it was reasonably complete enough for nearly anyone to understand, running to about 12 pages. Even at that, it took a fair amount of back and forth to clarify things for my practitioner, and make sure we hadn’t omitted anything important.

    After seeing what he came up with from my input, it was very humbling to see how clueless any application I might have filed pro se would have been, especially after seeing the claims that he managed to extract, that he seems to think are pretty unassailable given the prior art that we were able to find. This comes from a patent agent with over 20 years of experience, that has over a 90% approval rate and a history of getting almost all of the claims allowed. I think I will try Gene’s Invent+Patent system next time, as it is much newer than the PW, and I am a bit curious about it, and the price certainly seems to be very reasonable.

    Dave Korpi- You might want to go a little easier on your marketing attempts here, which is probably the wrong place to do so. You have definitely turned me and probably several others off, and I am just an unschooled inventor! The PW software was written by a very accomplished Patent Attorney, who knows WAY more than you or I.

    Stan~

  16. step back December 13, 2011 8:30 pm

    Dave B,

    That’s funny. I too, in my entire career have had just one inventor who wrote a golden spec all by himself.

    More generally the answer is that we attorneys think and dream 24/7 in claim format (and in invention non-disclaimer format) whereas your average normal inventor thinks like an engineer/scientist who works in a particular corporate culture. That’s why.

    (That’s why they can’t write up their own patent specifications and claims.) 🙂

  17. jodi December 14, 2011 1:57 pm

    Gene,

    >>> “Is a competent engineer equipped with the knowledge of Federal Circuit cases that deal with how inventions should be described in a patent application? ”

    I don’t see why a competent engineer can’t relatively quickly learn the basics of what to include, what not to include, how to say things in the description for a patent app. Things like trying to stay away from using “must” and “only” seem pretty evident…

    Seems to me nothing in patent law is 100%, but for the large majority of cases, knowing a few simple rules is all an engineer needs to know for writing the specification to a patent app.

  18. jodi December 14, 2011 2:15 pm

    Mike, Gene, David –

    For clarification, I am an engineer (software) so sit on the inventor side of the fence.

    Assuming a competent engineer (who knows his field, knows all the prior art) is given some guidelines to follow and writes a decent description (say 50+ pages which includes multiple variations and embodiments and a rough idea of the 3 or 4 steps for the Method claims) and the patent lawyer proof reads it and then writes the actual Claims – wouldn’t this generally be at least 80% as good as an inventor sitting down for a couple hours and handing over a 1-pager and the lawyer doing all sorts of work?

    Furthermore, I suggest at a fraction of the cost since the patent lawyer is not bogged down with learning the art, drawing diagrams, etc… Our society is where it is because of specialization – get the patent lawyer to focus on “Federal Circuit” knowledge and Claim language and the inventor/engineer/entrepreneur to think what is novel and what competitive advantage they bring.

  19. Mike Coblenz December 14, 2011 2:37 pm

    Jodi:

    50 pages might be a bit much, but I don’t write software patents, so maybe not. The patent attorney/agent still needs to get a feel for the general technology, the relevant prior art, and the invention to write the claims, so proofreading might not be enough. But assuming the client generated description is competent, and the attorney doesn’t have to spend time editing, then this would certainly reduce the cost (whether it would be 80% is hard to say.)

    Mike

  20. Mike Coblenz December 14, 2011 2:45 pm

    Jodi:

    I would also add that there is no magic to writing patents, and there are scientists, engineers and individual inventors that do it themselves. So if you are working in the same technology, and reading patents in that technology, you can probably get a pretty good grip on what needs to be in the application/specification.

    I work with a lot of individual inventors, and their eyes glaze over at a six page patent. So getting a decent description out of them is a challenge.

    Mike

  21. Stan E. Delo December 14, 2011 6:25 pm

    jodi-

    As a fellow inventor, I still remain a bit skeptical. Do you know what the objects of your invention actually are? The software I used to write my preliminary informative draft for a practitioner to use as a way to grok the invention in fullness allowed me to add as many *objects* of my invention that were conceivably of any import in preparing the eventual NPA. The objectives of the specification will be what a practitioner uses to eventually derive the claims from, so you had better rack your brains to figure out what possible benefits your invention might have over prior art in an objective manner. The PTO doesn’t really care at all about all the wonderful things your invention will supposedly accomplish, but just that it is truly new and novel, and that it therefore deserves the awarding of a patent right.

    It sounds as if you are considering a process type of application, which is arguably the trickiest of all, and therefore probably the hardest of all to prosecute. If you write a specification that is using the *wrong* language to describe things, which will have to match the language in the claims, you might cause serious linguistic problems for the practitioner, who will then have to figure out what you are really trying to say while also trying to dodge the language used in any prior art patents or even commonly used language in your field of art when he or she tries to write as many claims for you that might have some possible chance of being allowed. Always ask for way too much territory, as all they can do is say no in their FOA, but personally I wouldn’t even think of trying to answer it pro se, because even after 10 years of home study, or perhaps because of it, I have come to understand that I would have a fool for a client if I were to attempt to do so.

    Best of luck with it-
    Stan~

  22. Gene Quinn December 14, 2011 6:44 pm

    Jodi-

    You say: “I don’t see why a competent engineer can’t relatively quickly learn the basics of what to include, what not to include, how to say things in the description for a patent app.”

    With all due respect, that is the problem. You don’t see why a complete novice with no training can’t do the same job as a patent attorney with decades of experience. You, and many other inventors/engineers, believe that too. The absurdity should be self evident, but due to an over abundance of self confidence and complete failure to understand the serious pitfalls you believe it to be true. I see it all the time. The sad thing is that by the time you wake up it will be too late, rights will be compromised and there won’t be anything you can do.

    If you think that someone without training can do just as good a job then by all means go ahead and do your novice job. You will get extraordinarily narrow claims, your disclosure will be defective and likely read like an invention notebook or peer reviewed article and you will compromise all ability to get a usefully strong patent.

    -Gene

  23. Bruce Burdick December 15, 2011 4:05 am

    I saw this in a PIA posting, so thought it would be interesting to see the reaction Gene got when he described why patents cost so much to draft. Jodi and Stan, you prove his point.

    Stan, after 40 years doing this, I can tell you than the 80%-90% you and Jodi mention is a pipe dream. In fact, what I have almost universally found is that the more a “competent engineer” puts in a patent application, the more (not less) work the patent attorney usually has to do – undoing and correcting what is done in overly limited fashion to broaden it out. The spec is there to support the claims, provide enablement, provide best mode (a weakened but yet important requirement) give alternatives and give more alternatives, and very importantly to emphasize the exemplary nature of what is shown. You have highlighted the problem by saying you concentrate on the “objectives” . I almost always leave them out. If the inventor puts them in I cringe as they most often hurt you rather than help you. As a patent litigator, what I want to see when I attack a patent is lots of objectives and a long background, so that I can find prior art that shoots down the objectives (which are almost always easier to attack than the claims, especially if the objectives come from “a competent engineer”) and so that the long background minimizes the invention by comparison and builds up the level of skill in the art. When I write applications or litigate them, I want and prefer, respectively, a very very short background that at most just defines a class and subclass (“This invention relates to ABC and more particularly to ABCDEF”) and mentions a few problems that I am absolutely sure were known before and absolutely sure the invention solves and nothing else. The “objective” that belongs in there is to make the prior art look minimal and stupid. Inventors tend to paraphrase the prior art in overly broad terms l or in misdescriptive terms and and elaborate on it in detail Inventors tend to put objectives in the background portion implying they are prior art, when in most cases realizing the problems and determining the objectives are a key part of coming up with the invention and NOT any part of the prior art or background. That way the detailed description and summary of invention are long in comparison to the background which makes the invention look more important and which gives the other side little help from the background. This is only an example of some background section problems. There are many many more defects patent drafting inventors with fools for clients make. Heck, a lot of skilled patent prosecution attorneys make the same mistakes.

    Now, it is interesting to hear Jodi describing how 80-90 of the drafting is done and THEN the claims are added. Since the spec is there to support the claims and not limit the claims, that guarantees the attorney will have a bunch of extra work to do. Attorneys drafting a patent almost always start with getting the drawings, a description from the inventors, getting a search, and then beginning the drafting with claims that define over the prior art. Only then do most attorneys start on the disclosure as then they know what claims they are trying to support. Your 80-90% can never be even remotely true if the claims are not the starting point, the middle point and the end point. This focus on the claims in drafting the spec is what distinguishes a $15,000 masterpiece from a $1500 slopjob. And you have entirely and repeatedly shown how a competent engineer would miss that approach. The result, nearly always, is just a Gene is telling you a delusional inventor thinking all the heavy lifting is done and it can just be turned over to the patent attorney to simply add a few claims and something worthwhile will result. Something worthwhile for a defense attorney will result, an easy to defeat patent. But, as Gene warns you (and he teaches this stuff to hundreds of patent attorney wannabes) a properly drafted application has to focus on the claims and on the claims and on the claims. Hard to do that when they haven’t even been written. What’s easy, if the claims are not the focus from the start, is to have lack of antecedent basis, conflicts between claims and spec, or worse.

    I have neither the time nor inclination to write a treatise here on patent drafting, but only to give a glimpse, a highlight using your own examples to show the depth of the problem in self-drafting by inventors.

    Lesson to be learned: Drafting patents is not a job for inventors it is a job for patent drafters with the claims clearly in mind, who have the training in the caselaw to know what a judge or jury needs to see and, more importantly, NOT see.

    PS: There is nothing to say that a provisional cannot be prepared and filed with the claims deliberately omitted to hide the full scope or full narrowness, but if no claims are drafted during preparation a poor application is a virtual certainty. Also, none of this derogates inventors, whom I generally love to work with, rather (to paraphrase the current Hardee’s catchline) “. . that’s just the way it is.”

    -Bruce-

  24. Stan E. Delo December 15, 2011 11:32 am

    Bruce-

    I appreciate your concern on my behalf, but I happen to agree completely with Gene, so perhaps you didn’t read all of my post. I was just using a template type of software to describe a somewhat complex invention so that my practitioner would have a leg up on understanding how it worked. I figure I Might have contributed 20% to the final substance of the filed application. Perhaps my best contribution was in doing an exhaustive patent and market search to identify any art that the claims might have to work around. I understand the confusion factor you mention when trying to *edit* a poorly written document, as I once wrote a federal grant proposal with some amatuer *help*, which caused a whole lot of confusion and extra work to try to clarify things.

    Your mention of knowing what the claims will be when writing a PPA is critical, which nearly all amatuers don’t understand at all, creating a huge disorganized mess for the poor practitioner when it comes time to write the eventual formal application. I certainly do appreciate your post, which is right on the money in my opinion.

    Stan~

  25. jodi December 15, 2011 1:36 pm

    Gene, Bruce,

    Often, the main purpose of getting a patent for small inventor is to secure funding or investment. I think we agree that patents vary in quality and usefulness. Once an entrepreneur has a patent(s), he/she is much more likely to secure funding and later they can work on followup patents, or refining/Continuations on that first one.

    Small startups are not large corporations with $resources to spend on high quality patents – we’re trying to get started and get something issued so we can next work on securing funding and from there building out the product and possibly getting higher quality patents. We’re not defending $10million in revenues – we’re trying to *GET* to that point. The point is that for entrepreneur’s starting out with limited budget, often the 80% do-it-yourself is good enough – we tradeoff our time (which we have) for $money (we we lack).
    So rather than blowing $15k of a tiny budget on a patent that does absolutely nothing to gain customers. Indeed, in the software world, many find that patents are not providing more value than their cost anyways.

    So to use Bruce’s terminology: a “$1500 slopjob” may suffice while balancing to keep the company afloat for an additional 6-12months vs the “$15,000 masterpiece”. Hey, we’d all like masterpieces – but the bigger picture is the long-term survival of the company or being able to take it to the level where a $15k master piece is needed to defend say $10m+ in revenues. Last time I checked, a “$1500 slopjob” is still enough to threaten to take an infringer to court.

  26. Blind Dogma December 15, 2011 2:31 pm

    Gene,

    FYI,

    Noticing the tweaks to the website – mostly like – but currently, older articles can no longer be gotten to (their is no “page 2,” “page 3,” etc on the bottom anymore.

    I don’t want to assume tht this will return, so I will request its return.

    Thanks for all your efforts during the year – Happy Holidays!

  27. Stan E. Delo December 15, 2011 3:40 pm

    BD-
    I think Gene is probably much more concerned about the outcome of Renee`s neck surgery than answering your question. Here’s hoping that everything went very well for Renee and Gene today, and that Renee` is up and around to enjoy the holidays before too many days go by. My sense is that Renee is such an up-beat type of person, that she will rebound from this very quickly, and I very much look forward to hearing how the surgery went. I once had an uncle that was Never sick, and my mom who was his sister told me that Wallace never got sick because he simply didn’t have time to be sick, and that no self-respecting germ would dare to defy his will. I seem to have inherited the gene, as I seem to be mostly immune from getting sick, as in only getting a sniffle type of flu for a few days perhaps once every 4 years or so. I happen to be very lucky or perhaps too busy to get sick.

    Best regards,
    Stan~

  28. anon December 15, 2011 10:23 pm

    Bruce Burdick –

    I have seen “masterpiece” patents shot down in flames and I’ve seen “slopjobs” that have survived. Sure, there is a correlation between “masterpiece” and usefulness – but it’s certainly not predictable by any means – and I sure hope you are not telling your clients such.Bruce Burdick –

    I have seen “masterpiece” patents shot down in flames and I’ve seen “slopjobs” that have survived. Sure, there is a correlation between “masterpiece” and usefulness – but it’s certainly not predictable by any means – I hope you are not telling your clients such.

  29. Blind Dogma December 16, 2011 6:38 pm

    I certainly hope Renee’s surgery goes well. I point out the issue just to distract Gene (by the way Gene, the links are back up, bu they are not working).

    Get well Renee!

  30. Stan E. Delo December 17, 2011 8:58 pm

    BD-
    I checked the morning after on her facebook page, and apparently everything went very well during the surgery. I can sorta relate a bit, as I once accidently stabbed myself in my left palm when a straight-blade screwdriver slipped off a screw and nicked one of my medial nerves, whereupon the whole left side of my middle finger wenr completely numb. It made simple tasks much more difficult for quite some time, and when I asked Dr. Al about it, who I happened to be building a 47-foot stay-sail schooner for at the time, he told me that sometimes nerves heal, and sometimes they are gone forever.

    After about 4 months though, I suddenly realized that it had healed completely, but it happened so gradually that I didn’t even notice it? Very strange how the human mind adapts when it has to. In Renee`s case, I am reminded of the irrepressible Molly Brown, sans the whole Titanic thing. Stand back once she gets all of her fingers working at full speed!!

    Happy Christmas Renee` and Gene!
    Stan~

  31. Bruce Burdick December 18, 2011 1:34 pm

    Sure, there is a correlation between “masterpiece” and usefulness – but it’s certainly not predictable by any means – and I sure hope you are not telling your clients such.

    Ahh to the contrary, Senor anon, over 40 years of practice I can say with absolute certainty it is predictable. Sure there are exceptions. I am litigating such an exception right now where the inventor should collect millions of dollars. However, he stands to win because the invention was good and if he wins it will be despite his patent application not because of it. Had he used an attorney at the outset rather than deciding to “save money” and go pro se using the nolo book “Patent It Yourself” and take his time doing it he would not have to litigate but rather just retire and collect his fortune. Fortunately, he eventually hired the author of that book, a patent prosecution whiz, to straighten out his mess and get him the patent even though he had filed second. Due to the mess he spent nearly 7 years trying to convince any contingent fee patent litigator to take his case.

    Sadly, on March 16, 2013 that will become impossible for later such pro se late filers, as first to file, which Gene promoted, becomes law and kills their future in order to “harmonize” with the inferior patent systems of the rest of the world so IBM can save money. In America, fat cats rule Washington. Until we get public funding of elections American government will continue to be just a tool of the rich and be more the problem than the solution.

  32. Stan E. Delo December 18, 2011 10:54 pm

    Bruce B writes in part:

    “Sadly, on March 16, 2013 that will become impossible for later such pro se late filers, as first to file becomes law and kills their future in order to “harmonize” with the inferior patent systems of the rest of the world so IBM can save money. In America, fat cats rule Washington. Until we get public funding of elections American government will continue to be just a tool of the rich and be more the problem than the solution.”

    ~~~~~~~~~~~~~~~~~~~~~~~~~~~

    Sadly everything you say here is all too true, much to my regret. IBM’s efforts are just the tip of the iceberg though, as there is a very long list of corporations that would like to and actually DID successfully devalue the value of US patent rights with the passage of the AIA. In no particular order, Microsoft, Intel, Cisco, Apple, and IBM, to name just a few, spent upwards of 200 MILLION bucks in lobbying efforts to try to get just the 2007 *Patent Reform Act* passed (one years expense), but in my opinion they failed because they tried to get too greedy in gutting US patent rights even more severely than the recently passed *America Invents Act*, which I found to be very interesting. I heard one report that MickeySoft alone spent about a hundred million to try to buy the legislation in that cycle. Why would they do that you might ask, but the answer is very simple really when you consider the math.

    Let’s say they spent 100 million to buy the legislation, and they won, they might have avoided about 2 Billion in damages awards, so they would have paid only one twentieth of the damages they had to pay for willfully or accidentally infringing valid US patents. Not a bad investment from their perspective dontcha think? The really sad part about this is that even at that level of loss, it would only amount to about One Percent of their Profit Margin. That is much less than a rounding error for most businesses, but still they had to try to jam it through to make more billionaires for a few more years. Meanwhile all the rest of the inventors in the US would have lost nearly half of the value of their patent rights, but why should they care at all, as long as they make several or dozens more billions in profits? Kind of a no-brainer for general or legal counselors for the interested corporations, nicht whar?

    Perhaps some don’t realize that Senator Patrick Leahy is from Vermont, the IBM state, who has been the main architect of *patent reform* efforts since as early as 2004. Even if Mr. Leahy didn’t receive direct campaign contributions, I for one am very certain that his retirement plan will be very generous for him and his family in his old age. The good old boys thing, where nothing is in writing or on the books. The whole lobbying thing is disastrous for most constituents who can’t afford the big pay to play, which should be addressed or the US is going to become a 2nd world country before too many years go by. Large corporations have already sent many of our manufacturing jobs overseas, and they have no real reasons to change their behavior the way things are unfolding, and still very few in Congress seem to be able to figure out where all our jobs went to?? Is this what George Jr. meant when he was promoting trickle-down economics?

    Stan~

  33. Bruce Burdick December 19, 2011 1:39 am

    Stan, I think you also have your finger on the pulse of the political system in America, and it is campaign contribution MONEY. The system has distorted to where the fats cats take the money of the 99%, use a part of the money to buy the politicians, and the politicians make rules that they know will take more money from the 99% and give it to the 1% so the 1% will contribute to campaigns so the politicians can stay in office to make more such rules to take the money of the 99%, use a part of that money to buy the politicians, and on and on. We need to break the cycle. Inventors have the potential to break the cycle by creating disruptive technology and displacing the fat cats. And, while it might seem that is really off the topic of why patent applications cost so much, it is not at all. They cost so much because fat cats have lobbied successfully to get laws that make patents cost so much to make patents a rich man’s game. The fat cat’s also lobbied strongly for patent enforcement killing legislation with more limited success as even our corrupt politicians wouldn’t support that. Unless small inventors lobby harder the fat cats and their tools will continue to be the ipwatchdogs of the fat cats. The founders had a simple patent system that was designed to level the inequality of rich and poor by rewarding inventors for their creative efforts rather than the privileged friends of the king. Unfortunately, our laws are now doing just the opposite and rewarding fat cats and stifling the small guy. High patent costs to perpetuate economic domination by fat cats is foolish of America, emblematic of our current corrupt political system.

  34. Stan E. Delo December 19, 2011 3:27 pm

    Bruce- Your point about them trying to get rid of independents or small entities is well taken here. Larger corporations generally allow internal innovation to occur only if they can get past their cost effectiveness committee, so to speak, because they are terrified of not making as much profit as they possibly can. If another upstart like Steve Jobs and the Woz were to come along, it might make their whole deal obsolete, so of course they will do anything possible to try to avoid that if they can, including destroying the future possible value of US patent rights to support their own obsolete business models. Now that they have their precious *patent reform* bought and paid for and passed, it will probably take decades to undo the damage done, if it is even possible at all.

  35. Mark Smith December 20, 2011 2:15 pm

    Your article on costs to file a patent application is very interesting. While I agree that attorney fees can run from $5000 – $15000+ depending on the invention, this is not always the case. Small firms or firms comprising “older” attorneys and low overhead often prepare and prosecute an application for substantially less. I myself have prepared and biled complex software and biotechnology inventions (biomarkers) for $12000 and $8000, respectfully. I cannot justify charging more.

  36. Mark Nowotarski March 5, 2014 8:08 pm

    If patents appear to be expensive, then I wonder what they are being compared to. An inventor should have an overall business plan for developing an idea into a practical invention. This includes development costs, sales, marketing etc., even if the inventor’s intention is to license. If patent costs are more than 10% of that budget at any time, then it might be worthwhile to examine where the money is being spent.

  37. Dave Korpi March 5, 2014 8:37 pm

    Guys: We will ALWAYS see folks skilled in the art of doing ANYTHING justify these charges. At issue is to remember the engineer who charged $50,000 to fix a manufacturing plant that was down, costing the company thousands of dollars per hour as a result. The guy fixed it in 3 minutes by diddling one bolt and a knob. The bean counter objected to the charge and said why would you charge me $50,000 for 3 minutes of your time and all you did was diddle a few things. The answer was, you are right. I charge you $1.00 to diddle those things that took me three minutes and $49,999 for knowing WHICH things to diddle..

    So learn your stuff so you know which knobs to diddle. For me I am offended by the charges for drafting patents, which is why I seek out those skilled in the art who do NOT charge for every staple, hole punch, and need to answer Office Actions from errors on their own part. In a PERFECT world the ONLY OS’s should be from fighting for your claims and NEVER for anticedent issues, spelling, format, numbering problems or the like.