Independent Inventors: Five Ways to Reduce the Cost of Patenting and Get a Better Patent Application

Patent Attorney Mark Bergner provided the following five points that may help independent inventors control the cost of their patent application.   

Many small inventors contact me for preparing a patent application and asking that costs be kept to an absolute minimum. Recognizing that most such inventors do not have a great deal of money, I usually offer the following advice:

1) Provide me with the best write-up that you can up front with some illustrative (even hand-sketched) diagrams, along with any design documents you may have.

Often, inventors will provide a one-page summary or a sales brochure of their invention that leaves out a significant amount of detail. It is going to drive up costs if I have to drag each and every relevant aspect of the invention out. Additionally, there may be ample design documents that are provided to me after a significant amount of work has already been done. It will take much more effort for me to integrate this newly added information with a nearly complete draft specification than it would have taken if all information had been provided up front.

2) Try to do as much of the work as you can yourself.

I tell clients that I am knowledgeable in patent prosecution, but generally not knowledgeable about the subject matter of the invention. It will cost considerably more if I am required to do extensive research in the field of the invention in order to fill in a sparse invention disclosure. I will often point inventors to a patent in their general field and suggest that the detailed description and figures shown in the patent provide roughly the level of detail needed for their patent application. While I am not expecting draftsman-quality drawings and use of the words “wherein” and “said” in their description, I am expecting something more than a 3-block single figure illustrating a complex client-server architecture.

Also, there are many inventors who are wonderful technical people, but simply cannot communicate well in writing (that’s why they majored in physics and not journalism). It might be a good idea for such an inventor to work with someone (under a confidentiality agreement) who can write well to prepare an initial description. I had an inventor who enlisted the support of a graduate student at a significantly lower hourly rate than I charge. Although I can get all of the relevant information by talking with the inventor in person and over the telephone, if that is the sole means that I have of obtaining descriptive information, it is going to cost more. If the inventor has difficulty in communicating ideas and concepts both in writing and orally, it is going to be a very expensive patent application–no two ways about it.

3) Provide me with a nearly completed concept of the invention.

Nothing drives up costs more than to have the inventor continue to invent as the application is being drafted. One common issue: if a patent attorney does a good job with the subject matter, the draft of the patent application may be the first time the inventor has ever seen his idea expressed in such a clear and organized manner. This may spawn the inventor to come up with alternate embodiments or to provide other features that might prevent a design-around. While I generally expect some minor refinement of an inventive concept during the course of preparing the application, the addition of completely new or different embodiments will substantially increase costs.

4) Answer any questions provided in a draft clearly and completely.

Often I will prepare a draft application with a number of questions or comments, requesting clarification or additional detail. Some questions are intended to solicit lengthy responses, but only a bare minimum is provided or, worse, the information provided is completely non-responsive. Example: “You indicated that a series of messages flow between the client and server in order to implement the invention, but you have not provided any description as to what these messages are or what they contain. Can you please provide me with a detailed description of these, possibly with a table or diagram?” The entire reply received back: “The messages contain information that allows the server to act on client requests.” Very often I have an inventor who promises to do most of the work themselves, only to put forth a minimal effort when asked to provide additional information.

5) The costs of obtaining a patent, even a relatively complex one, pale in comparison to the costs you will encounter in trying to commercialize your product.

I know I’m in trouble with an inventor if I throw out a fair cost estimate for preparing an application and the inventor breaks out in a cold sweat and starts suggesting a cost that is 50% of the estimate. It’s one thing for an experienced business professional to haggle for lower costs, but in most situations involving the individual inventor, there is a significant lack of appreciation for what it will cost to do prototyping or pilot production runs, legal costs associated with non-disclosure agreements, trademarks, production and supply agreements, Underwriters Laboratories certification, FDA approval, etc. In the vast majority of cases, it is very expensive to bring an inventive idea to the marketplace, and the patent costs are typically a minimal part of those costs. If the inventor is not prepared for the entire undertaking, he is probably not going to willingly and cheerfully pay the bills, regardless of the quality and efficiency of the work done.

51 thoughts on “Independent Inventors: Five Ways to Reduce the Cost of Patenting and Get a Better Patent Application

  1. This is a great topic. Many inventors are simply delusional about inventions and business, and are emotionally attached to a perceived value of their inventions. There is nothing wrong with that, they might get a lucky punch. But they should be advised of the long odds and hurdles of commercialization, as aptly described in this article. I have come to appreciate that the patent system was not really set up for individual inventors, but for corporate interests having some amount of capital on hand to invest commercially(despite small entity fees). Some clever few may get valuable claims allowed.

    Also, many inventors want a patent application for marketing or other purposes, to give the appearance of possible value in a company. Is this a valid reason? I am not sure that such persons want to listen to sound advice, but would rather get caught up in the fever of entrepreneurship, however ugly it may turn out in the end.

    If the inventor still wants to proceed, I am here to help preserve their interests, as with any other client. But lowering fees for a client that will require extra work, and will not bring repeat business, does not make much business sense.

    Also, to Actual Inventor, while you may feel clever having filed your per se application, and you may feel that the money spent on quality patent counsel is burned, I can assure you that neither of these feelings are genuine. There is a great deal of skill involved in actually crafting an enabled set of claims that is infringable, but yet patentably distinct, while broadly covering the technical aspects. In fact, rather than follow your advice, I respectfully submit foregoing such an application will yield the same result, but much faster. Saving money for litigating a patent that has been fatally damaged by poor prosecution is hardly a winning IP strategy.

  2. Someone wrote, “You know, the biggest shame about provisionals is that it allows apps that would have had to have been published much earlier to have put off that publication. ”

    Duh what?

    Still pubs at 18 mos from earliest priority.

  3. As an “Actual Inventor”, I would advise another inventor that the easiest way to reduce costs is to simply write and prosecute your own patent application. Save your money down the road for a top patent litigator when your invention is challenged in court.

    And if an attorney should use the old cliche that doing it yourself will only cost your more down the road, don’t believe it. There are no objective research studies, stats, or proof of any kind that patent applications written and prosecuted by attorneys are better in anyway than applications written and prosecuted by “Actual Inventors.”

    Of course if you have the money to burn then hire an attorney to write the application and prosecute it. But don’t complain when you get the bill.

  4. Mr. Bergner, in your post, you state:

    “Although I can get all of the relevant information by talking with the inventor in person and over the telephone, if that is the sole means that I have of obtaining descriptive information, it is going to cost more.”

    In my opinion, the “means” that you discuss (i.e., personally interviewing the inventor, and speaking with the inventor over the phone) are two of the most efficient ways of conveying information.

    All other forms of communication involve reading, which requires more time than listening. Stated differently, typically, the person who is trying to convey information can speak much faster than the person who is receiving the information can read.

    Thus, why would patent prosecution cost more if speaking to the inventor is the only means of communication???

  5. Having worked as a prototype engineer for an independent inventor, I have to say “Thank You” for this post, but “good luck” trying to get the nutcase indie inventor’s ego to listen.

    As an inventor myself also, I try to get my stuff together enough to explain to an attorney what needs to be explained and let them work out the language. I work across a broad band of agriculture to mechanical to electronics and software. I think that in the modern age, the indie inventor might as well just stay home and if they want to make some money by inventing, just build things and sell them to their friends. The world has moved on from the lone inventor like Philo Farnsworth to picket fences and subclaims on subclaims. To paraphrase an old saying, “Anything that can be invented by an individual has already BEEN invented.”
    Just as the school counselors no longer recommend “farming” as an occupation, they should no longer recommend “inventing”. All of the PIY stuff and “business success for inventors” is just marketing schemes to take your mortgage.

  6. Having them all read David’s (Pressman) excellent PIY book (as I did) first is a great idea…and it wouldn’t hurt for them to spend some time reviewing (and keeping up on) all the latest patent developments here on PatentlyO as well.

    Though I chose the pro se route, knowing what I know now (and what I’ve been through), I wouldn’t likely have done so … though I’d still have read PIY so I could talk more intelligently and work more effectively with my hired gun.

    You professionals are worth every penny, and then some.

  7. Max, Pressman’s “Patent it Yourself” is published by Nolo Press (Nolo.com), and should be available on Amazon. (Professionals aren’t supposed to confess these sorts of things, but I keep it within arm’s reach.)

    Body Punches is right. Porsche was hyperbole. I’m still driving a bummed-out old Sentra.

  8. Max, I have received revenue from the patents.

    After much effort, I was able to commercially develop the product and get it placed in a high end consumer catalog and website. It sold out from the website even before the first of three catalogs shipped!

    I don’t have the resources to build the business, but I am working on a presentation for healthcare manufacturers for licensing.

    And 6, thanks for the giggle.

  9. What I love about the Pressman book is the title, “Patent It Yourself”. Great eye-catcher for an individual inventor because that equates to money savings in their mind. And then upon reading it, they discover that Pressman doesn’t really recommend doing it yourself. (He is a patent attorney after all.)

    My stock letter to crazy uncles and friend-of-friends is to buy this book before disclosing anything to anybody, myself included. That and an approximate cost estimate, from filing to issuance, scares 95% of ‘em away.

    And for the remaining 5%, a few minutes searching (6 style) usally crushes the dreams of most individuals pretty easily. And that is cheaper and less time consuming for everyone than exanding the search into a full 6 or 8 hour patentability search.

    As an aside, within the search world, individual inventors used to be our cash cow in the pre-internet era (just 10 years ago!). Oh, those were the days…

  10. I agree with both Babel Boy and Snake Fist, except that “the honest practitioner” is more likely to have a Chevy than a Porsche.

  11. Nina what do you say to us cynics, who expect you to make no money, even after the patent issues. May I ask, are you already enjoying royalty flow or are you, dare I say it, expecting it to begin tomorrow?

  12. I completely agree with Babel Boy. I tell my prospective clients that, given the PTO’s current anti-patent bias, they will very likely spend many thousands of dollars and not get patents, or at least not patents with a great deal of valuable scope. And, what’s more, even if they get patents, they’ll very likely never make a dime off of their inventions. If they still want to go forward, fine; but at least I can sleep at night.

  13. I am a small inventor and have been fortunate to receive 3 patents working with a large, expensive law firm. They did an excellent job. The reason I could afford it was the law firm set up a team of a junior and senior partner to work on my applications and prosecution. The junior member, charging a much lower hourly, did most of the work and was my primary contact. The senior member reviewed the work and was brought in for strategic decisions in the prosecution. The system worked great.

  14. “Pressman”. That sounds like a handy resource. I guess I can buy a copy from Amazon can I Babel. Thanks for the tip.

  15. If there was an honest one among us, he would first advise the poor sucker, Irvin Inventor, that: 1) the whole thing is a fraud; 2) he has a better chance of winning the lotto than making a dime, even if he does get the patent; and 3) if he were all that smart he’d spend the retainer money on a 2-week holiday to Ireland.

    If Irvin persists, the honest practitioner would tell him about what a srcew job he’s going to get from the examiner and how it’s going to cost him $3000 more just to answer a bunch of junk 102 rejections that cite art that only discloses half of the claim elements.

    The honest among us would tell the pigeon about all the PTO – CAFC trash we discuss on these blogs every day, and how he’s the one who’s going to foot the bill for us to take on incompetent examiners and administrative/CAFC judges who keep shifting the posts.

    The honest advice to Irvin would be that his case is likely to drag on for 5 years and even if he does eventually get a patent he could never afford to assert it in court anyway, so it’s a wasted exercise.

    And when Irvin Inventor asks “So what’s the point?” the honest practitioner would answer: “The point, dude, is my Porsche.”

    BTW, when I represented “independent” inventors, my first advice was: spend $40 on Pressman. Read it. Come back. For $40 they can get more good advice than I could give them in 10 hours, and they can learn enough about the procedures to have a half-intelligent conversation about what they’re getting into.

  16. “…and have filed hundreds of patent applications…”

    And how many of these have you gotten issued in the three years you’ve been licensed to practice before the PTO?

    I didn’t find many. In fact, I didn’t find any.

  17. Mason–

    I think you’re over-reacting.

    Every patent attorney upon first meeting a potential client is “generally not knowledgeable about the subject matter of the invention.”

    Unless the attorney is the inventor, of course.

    I think we are all generally knowledgeable about the field of the invention, otherwise we wouldn’t take the job for ethics and liability issues.

  18. “Did you mean to say his first post that actually made sense?”

    JAOI,

    Pretty good. I didn’t realize the potential double entendre.

  19. MM wrote:

    “This problem can be avoided by advising the inventor not to attempt to draft his/her own patent application but merely to describe, in detail, what it is that the inventor made, how it differs from the art, what its advantages are, what work has been testing the invention, what results have been obtained thus far, and what remains to be done. And warn the inventor in advance: this is for reference purpose and won’t necessarily be included in the application.”

    For once, you and I are in complete agreement. This is the usual shpiel that I give to new clients as their “action item” following the initial meeting.

    Credit where due – that was well-written, MM.

    – David Stein

  20. David: “Invariably, when I try to rework a client’s efforts into a patent application that I’m comfortable signing, I end up starting over from scratch.”

    I’ve been there. This problem can be avoided by advising the inventor not to attempt to draft his/her own patent application but merely to describe, in detail, what it is that the inventor made, how it differs from the art, what its advantages are, what work has been testing the invention, what results have been obtained thus far, and what remains to be done. And warn the inventor in advance: this is for reference purpose and won’t necessarily be included in the application.

    As usual, what’s needed/desired is going to be very art-dependent. In the chem/bio area, its not uncommon to receive results in the form of graphs or slide presentations without accompanying descriptions of how the experiments were performed or how the data was measured/massaged. It’s expensive at best, impossible at worst, to fill in the blanks without more input.

    So, I must agree with Mr. Bergner overall: more information up front is better, provided the information is comprehensible and not a raw “data dump.”

  21. “I find this statement shocking”

    Patent prosecutors truly are some of the most bizarrely uptight attorneys on the fricking planet.

  22. From Mr. Boswell’s website:

    “I am working with clients throughout the United States on some of the most cutting edge technologies, and have filed hundreds of patent applications in a wide variety of technical areas.”

    From Mr. Boswell’s post:

    “I worked as a developer at Microsoft for 7 years before I became a patent attorney, and I don’t take cases outside of my area of expertise.”

    So precisely what wide variety of technical areas are inside your area of expertise?

  23. I find this statement shocking, “I am knowledgeable in patent prosecution, but generally not knowledgeable about the subject matter of the invention.” If you don’t know what the hell you are doing, then why would you take a case? I worked as a developer at Microsoft for 7 years before I became a patent attorney, and I don’t take cases outside of my area of expertise. While everyone isn’t going to have that level of experience, some expertise in the area should be expected. I am regularly appalled by the applications that I take over for attorneys that took an inventor’s hard earned money without a clue how the invention works and wrote a horrible application. I also don’t see how you can shift that burden to the inventor. Without understanding the subject area, you don’t even know the right questions to ask to uncover the things you do not know about the invention that the inventor may neglect to tell you.

  24. jules — it was a very good 102b reference. After he refused to pay his bill, I sent him a few reminders and then wrote the balance off.

  25. Does the author have a model engagement letter he’d like to share incorporating all of the caveats necessary to CYA and adequately warn indie inventors of everything they will deny they understood? Cash in advance for each task in prosecution obviates many compliants.

  26. “2) Try to do as much of the work as you can yourself.”

    I couldn’t disagree more.

    Inventor-drafted specifications – particularly from small inventors – are often filled with:

    * Extremely limiting language (“the invention is…”)

    * Negative language that gives rise to estoppel (“this step must occur”)

    * Estoppel-raising references to prior art (“people have long known how to do (x)”)

    * Colloquialisms (“my invention is…”)

    * Inconsistent terminology

    * Either overly specific/limiting or overly vague language

    * Improper structure, poor organization, or a simply unreadable specification

    The problems are twice as bad with the figures, and ten times as bad with the claims.

    Invariably, when I try to rework a client’s efforts into a patent application that I’m comfortable signing, I end up starting over from scratch.

    Worse – a client might get upset if you ask him/her to do some work up front, and then don’t use any of it. Clients (particularly first-time applicants and sole inventors) can be sensitive about their inventions (and write-ups!) … and may feel sort of slighted or disrespected if you alter or don’t use their work.

    Instead, I ask the inventor to focus on explaining the invention to me, and to answer questions that I can refer to while drafting the application. In general, that’s all I need.

    – David Stein

  27. And that is a problem with the ESD requirement. Requiring Applicants to perform the same search as an Examiner is a Catch 22. The requirement is not fulfillable on its face.

  28. “client complained that it was not fair because he did not have access to the same prior art data base that the examiner had. and the client refused to pay the balance of his bill.”

    Out West, we simply shoot these troublemakers at the table and leave a tip for the bartender.

  29. carnac … That’s hilarious. What happened after he refused to pay the bill? Also, did the reference actually provide support for a good rejection, or did he just say it was 102(b) and that was the end?

  30. a solo inventor, a PhD, had done an extensive prior art search before we prepared and filed a very long application. The examiner found a 102b reference from India or Pakistan. client complained that it was not fair because he did not have access to the same prior art data base that the examiner had. and the client refused to pay the balance of his bill.

  31. Another thing that small inventors should do to reduce costs and get a better patent application is not skimp out on doing a search. While inventors at Universities and Corporate R&D Labs tend to be on the cutting edge and quite familiar with the closest prior art, the basement inventors of the world are often not in the loop in the field where they are inventing. I’ve found that a $1500 search knocks out a small inventor’s idea about 50% of the time, and stops them from wasting money on filing an application. And if there is a patent to be had, the search will focus the claims and reduce the longterm expenses of prosecuting the patent after filing. That is why I always recommend a search for small inventors, even the one’s already shocked at what it will cost to prepare and file the application.

  32. be wary of bringing a solo inventor to a personal interview. I made that mistake early in my career and the inventor starting yelling at the examiner and was very proud of himself for yelling. (I called the examiner later and apologized)

  33. ask — how did you conceive of your invention

    (I had one client who said that he saw it at a small store in Cambodia, and that no one would ever find out that it was really not his invention. I read the patent laws to him.)

  34. While you guys were talking google was just splashin another invention with a beautiful 102a/e that took literally 2 minutes to dig up.

    I bet someone paid 5k+ just to have this written. And with as much NPL that is cited someone obviously searched it. One can only wonder why that same someone didn’t choose to put six words into google and click the very first hit.

    The disclosure is 48 pages in length, there are 70 some claims, and almost all of them are in the 102, the remaining ones are trash easily 103’d.

    I will admit I like this patent app a lot, I will keep it for my collection of art. They babbled on and on about certain things in my art that it is always nice to have art for.

    You know, the biggest shame about provisionals is that it allows apps that would have had to have been published much earlier to have put off that publication. In the present case, this reference would have easily had to be a 102b if not for them being able to file a prov for the reference application and then dally about on filing the nonprov.

  35. First of all excellent post,
    I have worn many hats in the prosecution world. A pro-se inventor, agent in a law firm and now agent with a medium sized corporation. I think your advice is great. Two points of your points I’d like to stress. The nearly completed concept is very important. As a pro-se inventor, I’ve caught myself “inventing as I was drafting”. At some point, you have to say enough is enough. This is as far as this invention goes at least for this application. The second point from the point of view of an inhouse patent agent drafting applications reinforces point #1. Send as much detail as you have at the time. I’ve found inventors reluctant to give me details (or let me put details in) because they are afraid details are limiting. Let the patent attorney do his job and turn your details into broad patent claims. That is one of the special skills you are paying him for. This gives the patent attorney more information to work with.

  36. upfront — provide attorney with all prior art aware of and comments as to how invention differs

    — anyone else help with invention

    — anyone else might claim interest/rights in invention

  37. I would add an additional point to inventors to start the patent preparation process early and complete the filing before going through the process of actually reducing the invention to practice in a specific context. I just think it is a lot easier and less expensive to meet the burden of disclosing the preferred embodiment before it becomes overly specific and detailed, and that the resulting patent tends to be broader in scope. Plus, there is the earlier filing date. And a CIP can always be filed to capture the endless details of the specific implementation that is the final product. I just know my job is always harder and the patent more expensive and limited when the discloure is 60 or more single spaced pages with 60 or more figures. I always wish I’d had the opportunity to write and file the patent application before the product was implemented.

  38. When I first started practicing, I liked the personal relationships I had with small clients that I didn’t have with big clients. When I opened my own firm, I was grateful for the small clients who allowed me to pay my bills. But dealing with small clients, especially the incessant hand-holding and unrealistic expectations, gets old fast. These days, I avoid future aggravation by requiring a very large retainer from prospective small clients.

  39. One of the first things I do is find out if the potential client has, or is willing to set up, the required business structure into which the patent can fit.

    Future costs associated with the patent and associated business activities cannot be underestimated. That is why I tell the independents that they need to be prepared to enter into partnership with somebody, enlarge their business structure and bring in investors, find dedicated funding for certain activities, etc..

    They can’t generally afford the costs to “go it themselves”, and they generally don’t have the business knowledge to do so anyway.

    At the same time, they are generally loathe to cede any control, or to share decision-making having to do with the patent.

    I tell them to think of these things as the “costs of ownership” of a patent.

    Of course, I end up talking most of them right out of filing! But it usually takes a couple of hours of giving them (non-billable) business advice (some of the “hand-holding” mentioned earlier) before everybody is comfortable with their decision.

  40. Very good advice.

    Although working with solo/small inventors can be rewarding (they are usually much more excited about their invention than the institutional client), they’ve rarely done this type of thing before.

    It is much easier to bring an institutional client within budget because either the inventors and/or inhouse attorneys know much of what is written above. Constant interaction with the client is what drives up cost. If I have to hold the hand of an inventor (e.g., explain to them why a claim doesn’t have every feature among a host of others), then the client costs are going to increase.

    What was suggested above is basically a way to have the inventor provide all the relevant information upfront so the attorney does not have to keep dragging the information from him/her.

  41. “You indicated that a series of messages flow between the client and server in order to implement the invention… Can you please provide me with a detailed description of these, possibly with a table or diagram?” The entire reply received back: “The messages contain information that allows the server to act on client requests.”

    Sounds like a typical independent claim in a software application. ;)

  42. This is a great post. I can especially relate to this:

    “Often I will prepare a draft application with a number of questions or comments, requesting clarification or additional detail. Some questions are intended to solicit lengthy responses, but only a bare minimum is provided or, worse, the information provided is completely non-responsive.”

    As attorneys, we are trained to ‘dot the i’s’. If someone sends me a list of questions, I answer them all. Before I send my response, I make sure that each question is answered. I re-read the questions to make sure that I understand what is being asked and, if possible, I provide alternate answers where a question may be interpreted in different ways.

    And then there are those clients who, for whatever reason (“too busy” is the classic excuse) simply can not be bothered. Nothing burns me up more than taking the time to set out a carefully worded list of four questions to a client and then getting the answers to three questions back, without any indication even as to whether the missed question was perceived.

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