Tips to Reduce Patent Application Costs – Intellectual Property

To print this article, simply register or connect to Mondaq.com.

One of the challenges faced by entrepreneurs and small businesses in patenting is the often prohibitive cost of preparing and filing patent applications. According to the American Intellectual Property Law Association’s 2019 Economic Study, the average cost to prepare and file a single electrical and computer patent application was nearly $ 11,000. This can be a huge amount for businesses of any size. However, with a little planning and organization, patent applications don’t have to be that expensive. Below are some tips to dramatically reduce the cost of obtaining patent protection for your intellectual property.

Prepare an invention disclosure document in advance

After formalizing your lawyer-client relationship, you will need to disclose to your lawyer what your invention is, how it works, how it is used, etc. This can require long conversations and back-and-forth exchanges, which can add significantly to the cost of your patent application. (Especially if your lawyer bills by the hour.) To reduce the time it takes to explain the invention, prepare an invention disclosure document in advance.

A typical invention disclosure is written in the form of a problem and solution statement and has a very simple five step structure. First, it identifies a problem or a challenge in a technological area. Second, it describes the currently known solutions to the problem, highlighting their shortcomings. Third, it describes your new solution to the problem that overcomes the shortcomings of currently known solutions (i.e. your invention). Fourth, it describes all the variations of your new solution. Fifth, it highlights all of the other benefits associated with using your new solution.

By providing this short and concise document to your patent attorney, you can eliminate a significant amount of back and forth and immediately focus your attorney’s attention on the most important features of your invention.

Focus on a single invention rather than an entire product

An invention is not the same as a product. An invention is a unique solution to a unique problem. A product is a set of functionalities (possibly including several inventions) grouped together in a good or a service that can be sold to customers. For example, if I were to invent a swivel chair (assuming such chairs did not exist before), the invention could be a swivel chair attached to a chair. The product, on the other hand, can be a complete chair that includes a swivel but also includes padding, wheels, reclining back, etc.

If the disclosure of your invention focuses on a product rather than an invention, your patent attorney will need to take the time to determine which parts of your disclosure are relevant to your invention and which are not. Parts of the product which are not relevant to the invention can be described in the patent application, which increases its length and its bulk. These elements can increase the overall cost of the patent application.

Worse yet, product features may be incorporated into patent claims, which could give competitors the opportunity to design around your patent. Going back to the example of a swivel chair, if a patent claim were to recite a swivel attached to a leather chair, then a competitor could overcome the patent by putting a swivel on, say, a leatherette chair. By claiming the material of the product, rather than just focusing on the invention, the value of the patent can be diminished. While most patent attorneys will be able to spot problems like the ones above, properly focusing the disclosure of the invention on the invention itself can provide an additional layer of assurance and may assist your counsel in the process. patents to provide the strongest possible protection.

Prepare visual representations of the invention

With the exception of some chemical patents, almost all patents contain designs. Typically, your patent attorney will work with a professional designer to develop designs for your patent application. If you have only provided your lawyer with a conceptual description of your invention, developing designs can be time consuming and expensive. You can dramatically reduce the time spent preparing drawings by providing your lawyer with system diagrams, flowcharts, schematics, CAD drawings, and even hand-drawn sketches that fully describe your invention. Your patent attorney can then forward these visual representations directly to the designer, avoiding the hassle and expense of creating new designs from scratch. Additionally, by preparing your own drawings for the patent application, you can ensure that the drawings accurately describe the substance of your invention.

Take away food

A common practice among large companies that regularly file patent applications is to provide their patent attorney (s) with at least two files: (1) an invention disclosure form which relatively follows the pattern described below. -above ; and (2) a set of four or five presentation slides that include illustrations, graphics, diagrams, etc. to illustrate the invention and provide comments to facilitate understanding of the invention. By adopting a similar practice, entrepreneurs and small businesses that are in the early stages of developing a patent portfolio can significantly reduce the costs associated with preparing and filing patent applications. These practices can also contribute to a targeted patent portfolio offering strong protection.

Originally posted September 14, 2021

The content of this article is intended to provide a general guide on the subject. Specialist advice should be sought regarding your particular situation.

POPULAR ARTICLES ON: United States Intellectual Property

Trademark Comparison Guide

Obhan & Associates

Trademark comparison guide for the jurisdiction of India, see our comparison guides section to compare multiple countries

Top intellectual property issues to watch for in 2022

Cadwalader, Wickersham & Taft LLP

Developments in U.S. intellectual property law continue to impact many industries, including the tech and pharmaceutical sectors, 2022 promising to be no different.

About William G. Patrick

Check Also

Localized Sportswear Market Global Movements and Applications and Key Players – Xtep, Marmot, LULULEMON ATHLETICA, PEAK – Shanghaiist

Sports clothing The sportswear market The Report 2022 report provides the latest industry data and …