Saturday, January 8, 2011

Unwise Shortcuts in Patent Preparation: Don't Trust "Cheap" Provisional or Utility Applicationis

One of my favorite blogs, IPwatchdog, has a new post on the costs of patent preparation: "Patent Application Costs: You Get What You Pay For." Well, you may not always get what you pay for, but you certainly aren't going to get what you don't pay for, unless you are working with very generous IP professionals.

Gene Quinn says this about the cost of preparing a patent:
[Y]you have probably seen the ads on the Internet where a patent attorney or patent agent proclaim that they can prepare and file a U.S. nonprovisional patent application for some ridiculously low price, perhaps as low as $1,400. It is my opinion that there is no legitimate way to adequately prepare and file a nonprovisional patent application for $1,400. In fact, the lowest quotes we typically provide are for between $6,000 to $8,000 plus the filing fees and costs of drawings.... So why the great disparity? The first thing to understand is that like everything else in life, you get what you pay for. There is just no way to escape that economic reality.
At Innovationedge, we've done some non-provisional patents for much lower than $6k--when we are interested in taking the invention to corporations we work with for potential licensing or for other sound business reasons. Then it's in our interest to help the client get a strong patent and we're willing to put in a lot of extra effort at low cost to create intellectual assets that we think will lead to licensing success. But the many people who walk in and ask us to do a quick and dirty provisional on the cheap are usually sent away disappointed because I'm not willing to cheat them with a provisional that doesn't actually protect them.

We've had some real heartbreaking moments when a client showed us their cheap $1500 or even $4000 provisional application that was just three or four pages long and barely even described the invention. We've seen companies telling their investors that they had thorough IP for their new product when it was provisional garbage. The false security created by a bad provisional application can lead people to disclose their invention and lose rights thinking they have a priority date when the cheap document they have put their trust in may not even come close to an enabling disclosure.

We do provisional applications all the time, but I generally prefer to craft each one as if it were a utility application, ready to file as such with a full set of claims. I prefer to do a detailed search, then draft a detailed description with many alternative embodiments, considerations of how the invention will be used, recycled, marketed, etc., with implications across the supply chain, with regulatory considerations, etc., as needed to give broad enablement and to provide details and verbiage that can help respond to many unexpected twists and turns in prosecution. Especially for the utility application, a lot of work is required to come up with a reasonable strategy in claim construction and to build in the support disclosure. While our rates are low compared to many, the final cost is not going to be $1500.

If the cost of a good patent is too much, don't patent it. Trying to patent something for next to nothing will usually just give you nothing and waste your money in the end. It may feel good to have a patent filed, but if it is actually worthless, you have nothings (except, perhaps, the benefit of having taught the rest of the world something about your invention, such as how to make it).