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Published: 2008-03-26

Cost-Effective Patenting

Ever hear your patent attorney talk about cost-effectiveness? Not likely. Cost effectiveness is great for the clients, but not so good for the bottom line of a law office.

The stakes are enormous. You probably noticed that the cost of protecting intellectual property has risen dramatically in the last several years. From a typical cost of $6,000 to $10,000 to get a patent application on file in the mid-'90s, many firms are now charging $15,000 to even $30,000. That's too much. Foreign filing used to run $100,000 to $150,000, but now runs to several hundred thousand dollars as the original patent application spawns child and grandchild applications. That's also too much. In addition, the true cost is not just dollars, but lost opportunities because funds that should be directed to research and development (R&D) or marketing are being siphoned off to the patenting effort.

You shouldn't feel helpless in all this. You can regain control of the intellectual property budget by insisting on cost-effective patenting strategies.

Understand why patent expenses are so high

Patent costs are high largely because patent attorneys do things that raise costs unnecessarily. Attorneys often don't conduct effective pre-filing searches, or fail to use the proper resources. Not many people know that you can get the US or European patent offices to do the search for you. Attorneys also tend to file utility applications when they should be filing international or provisional applications. The patent claims are the worst offenders. Apparently well-written patent claims often focus on the inventive technology rather the market space from which the competition is to be excluded. Patent attorneys also tend to use way too many independent claims, which spawn numerous divisionals and other daughter applications. All that does is multiply the costs.

Search The Prior Art Cost-Effectively

Effective prior art searching is critical to filing good patent applications. Without effective pre-filing searches, companies waste a great deal of money pursuing applications that result in only very narrow protection. Cost-effective patenting requires conscious decisions as to when to search, what kind of search to perform, and how deep the search should go. Those decisions involve many different factors, from susceptibility of the field to keyword searching, to the impact of the search on research and development efforts. Searching should usually be iterative to avoid unnecessary effort. Although most outside searching services are not worth the money, there are strategies for securing very reliable searches, both from patentability and non-infringement (right-to-use) standpoints. Some of the best strategies involve having the PCT (International) or EPO (European) patent offices conduct your searches for you. More expense is not the same thing as more protection.

Make Good Decisions On What Kind Of Application To File

Most people file a utility application first, followed by a PCT (international) application within the following year. Unfortunately, that strategy often results in long, drawn-out prosecutions, in which large sums of money are spent even before the inventor learns whether the invention is patentable. There are far better strategies. One strategy that is often very effective is to file the PCT application first, naming the United States as a foreign country. If all goes well the inventor can receive the first office action in about four months, and the US patent can issue in about 14 to 16 months. Another good strategy is to file the US utility application first, but accompany the filing with a Petition To Make Special that advances the application to the top of top of the examiner's workload. Provisional patent applications can also be used creatively to dramatically reduce costs, and provide stronger patent protection.

Write The Specification As A Sales Pitch

A patent application consists of a title, specification, at least one claim, and a drawing. The specification is usually at least 10 pages long, and drafted to an engineering audience, from a dry, scientific standpoint. Big mistake! The specification should be written in a concise manner, from a marketing/sales viewpoint, clearly identifying what is new and exciting about the invention. After all, the invention will only get patented if the examiner can be convinced that the invention is an improvement over the prior art. Like any good sales document, the specification should describe the problems being addressed, describe why the prior solutions are not completely satisfactory, and then describe how the present invention solves those problems.

Write Claims Using A Market Centered Approach

The vast majority of patent attorneys write claims from an " invention oriented" perspective. That approach can work well when the invention is a dramatic improvement over the prior art, but is a terrible strategy for the vast majority of inventions that are merely improvements over what is already known. Instead of writing technology driven, invention-oriented claims, patent attorneys should write market-oriented claims that focus on keeping the competition out of a given marketing space. The market-oriented approach provides much, much broader protection for the patentee.

Make Appropriate Use Of Independent Claims

All patent claims are either independent (stand alone) or dependent (refer to another claim). Using a large number of independent claims is extremely wasteful, unnecessarily increasing the cost of the application and prosecution, up to three quarters of a million dollars! In addition, clever use of dependent claims can force a broad interpretation on the independent claims, and strengthen the patent considerably. Excessive use of independent claims is a hallmark of a poorly written patent application, and an attorney who failed to do the heavy mental lifting to properly understand the invention.

Claim With Litigation In Mind

The main goal of patenting is to keep competitors out of your marketing space. This can sometimes be accomplished with threats and cajoling, but from time to time the only way to effectively enforce the claim is through litigation. The litigation route is only effective, however, if the claims are broad enough to cover substantially all of the commercially viable alternatives. The key is to write short claims, use the specification to define key terms tautologically, and use overlapping target claims. From a cost-effective standpoint, it is also important to focus on claims that can realistically be enforced. Means-plus-function claims are an outdated form of claiming that should avoided like the plague.

File Foreign Only Where It Makes Sense

Foreign patent filings are expensive, many times more expensive that US filings. Foreign patents are also generally more expensive to enforce, and much less valuable when they can be enforced. Decisions on filing abroad should generally start with a budget, and then fit the foreign filing into the budget. Although the foreign countries in which an application should be filed differ from technology to technology, there is a general progression of countries in which foreign filings should occur. A caveat is that some types of inventions are not protectable abroad, or are only protectable using claim language that is even more twisted than normal.

Make Sure Everyone Is Pulling Together

A great deal of time and money is often wasted by allowing creativity to languish. In addition to merely drafting and filing patent applications, there are specific areas in which your patent attorney should be actively facilitating the patenting process. He should be (1) working closely with your staff to view the invention in light of the prior art; (2) helping you focus on where you can create unique value; (3) keeping costs in line with the work performed; (4) provide ongoing training, and (5) provide ongoing evaluation of the portfolio. Management can also greatly assist the patenting process by encouraging brainstorming and cooperation among inventors, by providing monetary and recognition incentive, and so forth. In addition, management should provide training in the "process of inventing" itself. There are basic principles underlying the evolution of all technologies, and those principles can be taught to inventors in a manner that vastly improves their inventing skills.