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?
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:
- Patents: A Most Difficult Legal Instrument to Draft
- Tricks & Tips for Describing An Invention in a Patent Application
- Defining the Full Glory of Your Invention in a Patent Application
- Patent Application Costs: You Get What You Pay For
- Describing Your Invention Completely in a Patent Application
- Patent Drafting: Language Difficulties, Open Mouth Insert Foot