Preparing 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.
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.
The pages of IPWatchdog.com are full of information, tutorials and resources. To learn more about patents and patent applications please see:
- Why Engineering Companies Get into IP Trouble: Five Tips to Mitigate the Risks
- Distinguishing Colloquial Obviousness and Legal Obviousness
- Your Developers Could Be Publicly Disclosing Source Code By Using Third-Party Code Repositories
- How to Be an Effective Advocate When Responding To Examiners
- Matching Patents to Products: Determining Which Patents Will Be Implemented in Real-World Commercial Products
- Strategies for Preparing Infringement and Validity Opinions
- Mitigating ‘Justified Paranoia’ via Provisional Patent Applications
- Justified Paranoia: Patenting and the Delicate Dance Between Confidentiality and Investment
- Simultaneous Invention as Secondary Evidence of Obviousness
- Combating the ‘Dunning-Kruger Effect’ in Inventors
- Anatomy of a Valuable Patent: Building on the Structural Uniqueness of an Invention
- How Can I Sell an Idea for Profit? Unlocking the Idea-Invention Dichotomy
- Dear Examiner: I am an Imposter
- Keeping a Good Invention Notebook Still Makes Good Sense
- Patent Pending: The Road to Obtaining a U.S. Patent
- Why do you want a Patent?
- Moving from Idea to Patent: When Do You Have an Invention?
- Protecting an Idea: Can Ideas Be Patented or Protected?
- Investing in Inventing: A Patent Process Primer for Startups
- How to Write a Patent Application
- Filing a patent application is still a smart decision for inventors
- Inventorship 101: Who are Inventors and Joint Inventors?
- Patent Search 101: Why US Patent Searches are Critically Important
- 10 Critical Pieces of Advice for Inventors
- There is no such thing as a provisional patent
- Patent Searches: A Great Opportunity for Inventors to Focus on What is Unique
- Should I File a Patent Application Before Licensing the Invention?
- Can cake designs result in intellectual property protection?
- Turning Your Idea into an Invention
- Learning from common patent application mistakes by inventors
- Why Patent Attorneys Don’t Work on Contingency
- Patentability: The Adequate Description Requirement of 35 U.S.C. 112
- Germany Suspends Requirement of Presidential Signature for Formal Ratification of UPC Agreement
- Patentability: The Nonobviousness Requirement of 35 U.S.C. 103
- Patentability: The Novelty Requirement of 35 U.S.C. 102
- Patentability Overview: When can an Invention be Patented?
- Invention to Patent 101 – Everything You Need to Know to Get Started
- The Benefits of a Provisional Patent Application
- What is a Utility Patent?
- Do You Need a Patent?
- Inventing Strategy 101: Laying the Foundation for Business Success
- Patent Prosecution 101: Understanding Patent Examiner Rejections
- Patent Drafting for Beginners: The anatomy of a patent claim
- The Patent Process on a Tight but Realistic Budget
- Patent Drafting for Beginners: A prelude to patent claim drafting
- Provisional Patent Applications the Right Way, the Wal-Mart Way
- Inventing to Solve Problems
- 5 things inventors and startups need to know about patents
- The Quid Pro Quo – How Bad Patents Can Harm A Startup Company
- There is no such thing as a provisional patent