5 Things You Must Ask Your Attorney About The Patent Cost

5 Things You Must Ask Your Attorney About The Patent Cost

It is often difficult for small to medium sized enterprises (SMEs) to estimate the cost of patenting an innovation, due to unforeseeable events that arise in the course of registration and maintenance. However, you can get a fairly accurate estimate by asking your attorney the right questions. Here are 5 questions you must ask your attorney about the patent cost:

  • The billing options for the attorney’s fees 
  • The attorney’s billing rate
  • The component of the attorney’s fees
  • The attorney’s years of experience
  • The end-to-end cost of registering and maintaining the patent

This process aligns closely with understanding strategic approaches to patent filing to optimize cost and efficiency.

The Billing Options

Attorneys generally charge fees based on a flat fee or hourly rate fee structure. With a flat fee structure, you would pay the attorney a fixed sum of money for specific services. Gaining insight into cost estimates for filing utility patents globally can help in choosing the right fee structure. On the other hand, with an hourly rate fee structure, you would pay the attorney an agreed hourly rate for the time spent on your patent registration. 

Startups generally prefer a flat fee structure, because of the certainty of costs. The patent process is highly complex and unpredictable. At an hourly rate, you may spend thousands of dollars for the time spent by the attorney resolving spurious events. Moreover, IP attorneys tend to have hourly rates that are 50% more than other attorneys. 

Where an hourly rate is agreed upon, it is typical for the fees to be capped at a predetermined limit. The benefit of this is the assurance that you would not spend beyond a certain limit. This helps you manage your costs efficiently and budget appropriately. 

Bear in mind that the type of patent and complexity of the invention may influence the attorney fees. For example, provisional patents are cheaper than non provisional patents. In addition, learning about ways to control patent costs is crucial in budget planning. Also, a mechanical patent may be cheaper than a chemical patent. A request to write a patent application may also range from a fee of $10,000 to $12,000, depending on the technology involved. It is important to ask questions and choose the most suitable billing structure. 

The Attorney’s Billing Rate

Generally, a lower billing rate means lesser attorney fees. However, this is not always the case. A lower billing rate may be misleading if you have an attorney that takes a lot of time to get the job done. 

Alternatively, if you have a high volume of work, such as a patent registration in multiple jurisdictions or a patent of several innovations, you may request a discounted fee from your attorney. 

When granted a discount, it is important to carefully read through the terms and conditions. Some firms will start out with a very high billing rate and then, give a discount, which when applied, equates to the original attorney fees the firm charges its clients. For some other firms, their fees are so high that even with a discount, the discounted billing rate is more than what other firms would charge for a similar scope of work.

The Components of the Bill

Selecting an appropriate billing structure is half the journey. Knowing what the bill covers and does not cover is also essential. You don’t want to receive an invoice from your attorney for every new request from the IP Office. 

Therefore, an agreed fee structure should come with a clearly defined scope of work. It is important to agree with your attorney upfront about expectations for the registration process. For example, the quotation for the initial preparation and filing of a utility non-provisional application should clearly state what will be covered and what will not be covered by the fees.

Some startups prefer to negotiate a fee, usually a few thousand dollars, for all potential matters that may arise during the registration process of the patent. Such matters may include requiring the attorney to execute an additional document, adding a new matter to the initial patent draft, or responding to additional office actions.

The Attorney’s Experience 

Generally, the more experienced an attorney is, the higher the attorney’s fees. However, a more experienced attorney will be able to give a more accurate estimate, depending on the vagaries of the process. A more experienced attorney will also be able to better anticipate spurious issues that may arise during the registration process. 

End-to-End Cost

It is not uncommon for startups to abandon a patent midway, because of the cost involved in registering and maintaining one. One way to have visibility on the cost of the entire process before filing for a patent is to ask your attorney about the end-to-end patent cost.

Patents will usually require miscellaneous fees and issue fees to be paid to the government. The amount will generally depend on the size of your startup and whether you’re expediting the registration process. There are also other ongoing fees to be paid after the issuance of the patent, such as annuity fees.

It is also typical to have 2 to 4 rounds of arguments with the patent office. Each one of those rounds may cost $2,000 to $3,000. To manage the cost, you should ask your attorney to give a practical estimate for the entire registration process. For example, $10,000 to write the patent application, $10,000 to argue the application and manage communications with the patent office, and $10,000 for issuance of the patent and government fees. 

The TIP Tool

The TIP tool eliminates the uncertainty that comes with your attorney taking a guess on the patent cost. By relying on data, the TIP tool is able to predict the patent costs and registration timeline.

With the TIP tool, you can estimate how many rounds of arguments would likely be involved in your application through the tool’s analysis of your idea. This will help you know when your attorney, on an hourly rate billing, prolongs the argument to raise the attorney fees. 

Source: Triangle IP

Knowing up front what it would cost to patent your idea helps to build your patent portfolio strategy and not abandon some applications along the way. The TIP tool also helps you know your chances of getting your patent approved by giving you a percentage of patentability. If this percentage is low, you may consider foregoing registration or modify your patent application. 

Key Takeaways

You must ask questions about patent costs to achieve the protection you desire within the budget you can afford. However, you can only get the right response if you ask the right questions. This is more so where the patent process is subject to unpredictable vagaries that may impact the budget of SMEs.

The fees you’re paying have to make sense and the services you receive must be of value for the money you’re spending. The TIP tool simplifies the cost estimation process for SMEs by relying on data, leading to greater accuracy for budget management.  Try the TIP tool today!

5 Innovations In IP Domain To Empower Patent Attorneys

5 Legal Tech Innovations to Empower Patent Attorney

Digitalisation Everywhere

Today I wish to share with you guys an interesting instance that happened with me last week. One of us was sneezing non-stop & it was a weekday. You can imagine how difficult it is to squeeze out time on a weekday for a doctor’s visit. The long queues and fear of catching the coronavirus at the doctor’s clinic. 

So, instead of going physically to a clinic, we tried something new. We consulted the doctor over a video call using a mobile app. And received the medication within 3 hours of the call. It took us just a few minutes to connect and speak to a doctor. It saved us 2 hours of the day which we would have otherwise spent on visiting a clinic. Thanks to digitalisation!

PC: Vecteezy

Digitalisation | Innovations in IP

Digitalisation is happening everywhere be it education domain or medical. And Covid-19 has acted as a strong catalyst to fuel it all up. This made me curious to know how digitalisation is transforming the legal domain. And my search began. This exploration highlights the significance of modernizing patent mining processes in the digital era. 

I started looking for innovations in the IP domain leveraging digitalisation. While searching I stumbled upon a podcast channel -“Technically Legal”. The channel talks about innovations aimed to empower IP attorneys. I found exactly what I was looking for.  

Technically Legal” is a podcast channel hosted by Chad Main that revolves around tech innovations in the legal field. Chad has worked as a litigator and is now a founder of a legal tech services company.

I found a lot of interesting innovations spoken about in different episodes on the channel. Most of the innovations are targeted to automate mundane stuff that eats up a lot of time of legal professionals. Some innovations are based on AI (Artificial Intelligence) while some leverage VR (Virtual Reality). I believe that with innovations like these, the legal professionals can truly benefit & save time to pursue “real legal work”.

I was also hoping to find something that strengthens the patent mining process  at an organization. After all, we belong to an industry that’s centric to innovations. Innovation capture is the first step to patent mining which inturn brings a competitive edge to enterprises. Based on years of experience in the IP domain we felt a lack of business process that supports the complete workflow from ideas to patents. And that led the conception of a tool that specifically caters to capturing and collaborating over innovations.

This post speaks about 5 of my favourite innovations from different episodes of the podcast. Hope with this post, you’ll be able to make the much needed next move in digitalisation.

PC: Vecteezy

LegalMation | AI-Powered Automation Of Routine Litigation Tasks

The legal professionals lose a lot of time in certain mundane routine litigation tasks but with the advancement of technology, here is a time saviour on their way. LegalMation, an AI powered tool, automates document creation, promotes consistency and conserves the use of resources. 

LegalMation automates a lot of repetitive drafting of standard documents along the spectrum of litigation tasks such as:

  • Discovery responses,
  • RFPs (Request for Proposal),
  • RFAs (Regular First Appeal), 
  • Pleadings.

AI is bound to change the face of the legal industry. However, AI is not ready to perform a task without spoon-feeding it the details. The samples or specimens ought to be put by way of a supervisory process as it never forgets what you feed it. 

For example, at LegalMation, it took the AI tool about six months to understand and prepare suitable results for employment discrimination. 

One thing is set in stone that AI can never be an attorney’s replacement, and only be a compliment to attorneys. If you feed the AI with the correct and requisite information, then as the founder of LegalMation says “it will make attorneys do the ‘real legal work’ and not the routine or grunt work”.

Several law firms are using LegalMation for handling high stake litigation and also coming at par with the bigger law firms by leveraging automation to save time and conserve resources. 

CRM & Chatbots | Automation to Improve Client Communication

“Attorneys fail to respond to more than 60% of inquiries from prospective clients.” –  Clio’s Legal Trends Report.

60% sounds staggering. But, it can be brought down!

In this episode from the ”Technically Legal” podcast it was interesting to hear from Gyi Tsakalakis, founder of Attorney Sync,  on how certain parts of client communications can be automated to reduce this number.

Email automation or auto-responses can be set if the majority of your work is taking place on emails. Autoresponders help to set the client’s expectations for a follow-up. The automation tool has been designed for nurturing a client. 

For some of the common questions like fee structure or kinds of services available, a virtual assistant may be placed by the firm. A firm can add questions and answers to the hotline or virtual assistant and it further grasps the method on how to answer the queries. 

PC: Vecteezy

Using technology to improve responsiveness and strengthening client relationships ought to be at the forefront of legal professionals as it is often said that “old clients are untapped resources and they generate the majority of the work as compared to the new clients”. 

Client Relationship Management (CRM) tools are user friendly and are very well appreciated in maintaining relationships with clients by enabling the legal professionals to be more responsive to client queries, winning new business, tracking and answering calls, etc. 

CRM also takes potential client queries by way of preparing client lists, tracking leads, and managing the schedule.

On a side note: Would you want to know how your patent application is progressing at the USPTO compared to other applications in the same domain? 

The TIP tool offers statistics of the law firm and the examiner handling your case. Once the application is filed at the USPTO, and an examiner is allotted to your case, the tool indicates the relative performance of the law firm handling your case. The statistics revolve around the number of arguments, grant rate, and grant time. The tool also indicates the case health, for instance, it can tell you if a case needs your attention. There is a whole bunch of insights that you can gather from the TIP tool for strategic patent prosecution.

Request insights for any of your cases at the patent office using the form below.

PacerPro | Automating The Distribution & Data Capture From Federal Court Filings

An attorney always runs after saving time as doing that would provide him with an extra period of time to spend on “real legal work”.  

For example, somebody on the team receives notice for filing from the court via email. Afterward, everybody will download the document to see the court order, and doing this will take 6-7 minutes of everybody’s time. From the record department, paralegals, attorneys, to junior associates on the team, everybody will download the document and follow the process to label the pdf file and further, distributing it to the team on the case. This takes up everybody’s time in question which can be potentially saved.

Pacer Pro Manifold - Streamlined case management and automated data capture

To solve the above problem, Pacerpro is an application that streamlines and automates the distribution and captures data from the federal court website. 

Pacerpro does a one-time backend setup wherein the application adds the software’s email address to the attorney Electronic Court filing (ECF) profile and then on a going-forward basis, the attorney or legal associate will automatically receive the email after 1-2 minutes of the court notice that has the labeled pdf attached. 

Further on, the staff associate or the junior associate on the case can easily distribute the court order among the legal team in real-time. By way of this application, everyone will save time and distribute the court order to everybody on the team without them downloading the court order individually. 

The Pacerpro founders conducted a study on several law firms wherein they found out that automating the distribution and processing of federal court filings saved nearly 50,000 hours of human time.

Slack | Automating Legal Workflows And (Not) Using Email

Another problem which attorneys often face is the exchange of a plethora of emails and the availability of the staff or clients to receive emails. There is a lot of hassle in back and forth email conversations and keeping all data in one email trail mail. 

To counter this problem, many firms and organizations have started using Slack as a platform for their virtual workspace or to keep the entire work product in one place. The productivity and effectiveness of the legal team have also increased. 

Slack as a platform is not limited to being a communication hub. It possesses features such as workflows and bots which the legal departments can use to automate common legal tasks. 

Slack workflows are majorly utilized for answering field questions, review documents and agreements as well as to close sales deals. 

Email Killer | Slack

Slack is known as the email killer or replacement for email. There are multiple channels for different work or teams. One can easily put the information, announcement, or any other important document for everybody to read on a multi-party channel. It gets rid of the traditional way of sending emails to everybody individually to send one particular message or announcement. 

Channels are defined as building blocks of work. Different channels will have different people in them and they can view the whole inbox trail. If a new person gets added to the channel, then they can easily view the previous conversation by way of the archive on the said channel. 

One can also connect with external stakeholders on Slack. The Platform also provides the option of creating public/private channels wherein anyone can enter or get added on a public channel but there are private channels available for one particular team or for the client for maintaining attorney-client communication by the Attorney. Nobody has access to the conversations on the Private Channel. 

You may easily turn off the notifications on weekends or as and when you please. You can also correct typos or other information as there is an option of editing a message on Slack. Whereas you need to double or triple check the content you type in the email body because you cannot retract the Email or edit the typos if you have any. 

ESI | Virtual Reality As An Aid in Patent Cases

Litigation in high stakes cases often lacks scientific accuracy.

To resolve the problem of lack of scientific accuracy in complex legal cases, one Virtual Reality (VR) technology by Engineering Systems Inc. (ESI) has emerged which tends to help jurors clearly understand what happened in a case and under what circumstances.

PC: Vecteezy

Virtual Reality is a technology that can aid in patent cases, tort cases as well as in personal injury cases. The court of law and legal practitioners appreciate the visualizations and demonstrations which help the case reach its verdict faster. 

For example, in patent law, courts are facing a surge in the amount of litigation over patents that only exist by way of prototypes. VR patents help those patents come to existence by utilising the patent specifications and claims. Afterward, they are presented before the courts as evidence which help reach the verdict faster and in a more effective way. 

VR technology is very accurate in capturing measurements or dimensions through the process of laser scanning. 

In a few cases, drones are also used to capture imagery and model the property virtually to eliminate the list of events that cannot occur and figure out events that may have occurred.

The creation of 3D models and virtual reality applications help attorneys to better argue their case after understanding the case in depth. The technology also demonstrates to the judges and juries how exactly the situations occurred.

Let’s Sum It Up

Law firms all over the world are now being disrupted by the changes provided via technological developments. All these innovations and softwares are bound to change the nature of legal practice and bring efficiency. 

Law firms and attorneys ought to opt for these changes and be at the top of their game to maintain their competitive edge. Below we have summarised the 5 innovations we spoke about in the post.

LegalMation helps the attorneys by automating a lot of repetitive drafting of standard documents. 

Gyi Tsakalakis, founder of Attorney Sync proposed utilisation of technology to improve responsiveness and strengthen client relationships. 

Pacerpro as a software streamlines and automates the distribution of federal court websites, thereby capturing the relevant data. 

Slack comes off as an effective alternative to email communication for automating the legal workflows. 

VR technology has contributed vastly to the legal industry through its scientific accuracy.

We are happy to join the battalion of innovators in the Intellectual Property (IP) domain. At Triangle IP, we have created an innovation capture and tracking tool to empower patent portfolio managers, inventors, patent prosecutors and startup founders.

We look forward to seeing you go digital wherever possible. Wishing you good times ahead! 

Note: The preceding is general business advice and not to be construed as legal advice. IP laws vary by country and retaining licensed legal counsel is advised to confirm this information. Any expressed or implied opinions are of the author and do not necessarily reflect the views of Triangle IP or any other entity who might be associated with the presenter. We hope this content is helpful to you, but should not be relied upon without confirming the advice and accuracy with local legal counsel. Any comments or inquiries are not confidential so please discuss your issues directly with counsel.

TIP Tool is free for your whole team

No credit card required. No setup fees. No need to download.

Get Started Now

How to control patent costs without compromising on your patent?

Controlling patent cost without compromising on patent

Filing a patent application has long been known as the best protection for an invention, but it has become extremely expensive. Some of the costs are unavoidable to have the best chance for an issued application. Balancing these costs with the need for quality can be achieved by leveraging tools discussed in assessing idea management solutions. Other costs might seem like they are required as well, but they can actually be limited or even avoided, saving you considerable money when protecting your innovation.

Seek Out Problems First, then Innovate with Something New

There is always a need to solve a vexing problem in a unique way. But, how do you know that your innovation is unique?  If your idea cannot be found in the market or after a little searching, it might be novel. To ensure uniqueness and avoid infringement, delve into strategies for effective patent filing. And you might consider filing a patent application. The technical process of confirming novelty is to perform a “patentability” search of the “prior art” but it is difficult to be sure. Prior art is just anything published earlier than the priority date of your patent filing.  Patents take 18 months or more to publish so a patent search may not find an earlier filing in quickly evolving areas.  

The patent search is also invaluable because it can uncover competitor patents before your design solidifies to allow for designing around to avoid later infringement suits when your product is released. Search firms will take your description and search for anything similar so you can be sure to have something unique. The identification of similar patented solutions is an early and low-cost warning of your market competition. With advance notice, your commercial offering can be changed to improve your idea’s uniqueness without treading on another’s patent rights. Most patents have some way to design around them, especially if found early in your product development cycle.

When is the Right Time to File your Patent Application

Once you have your unique solution to the problem and understand the value with respect to what others have done, it is time to have your own patent application prepared. Navigating the complexities of global patenting requires understanding global patent portfolio strategies. You can file an application once your innovation is ready for patenting, but often your design is a moving target. Procrastination can be your worst enemy as it is a “race to the patent office” because the first to file will almost certainly have priority over a later filing.

Also, your own disclosure of the innovation prevents filing in most countries even though the U.S. has a one-year grace period. Hot areas buzzing with interest coincidentally have parallel development at different companies as thought converges on the best solution. The best practice is to file early and often as your design improves with any additional innovation.  If you think the innovation will evolve, you might consider a serial set of provisional filings as things crystalize toward your commercial embodiment.

Reduce the Costs with Preparation Work

Once you have your unique solution to the problem and understand the value with respect to what others have done, it is time to gather information for your own patent application.  Any details on the design (even if not completed or built) will help with the drafting. An innovation capture tool like the idea manager offered by Triangle IP allows describing the innovation and attaching any supporting information (e.g., photos, recordings, presentations, papers, CAD files, etc.).  Gathering implementation details on the innovation along with a description of how your innovation solves a problem in a manner different from prior art attempts. Alternatives and sub-innovations are important too. 

Often, inventors do not work alone.  When gathering details on your innovation it is important to brainstorm with other inventors or colleagues.  This collaboration can be done by sharing the invention disclosure form online with the idea manager or another tool.  Any identified inventor is given access to the invention disclosure form to add their own thinking and documentation.

Typically, a patent attorney or agent (“patent prosecutor”) has to be found to write your application.  Strategies for selecting counsel are described in this article.  After digestion of the information uploaded a good patent prosecutor normally conducts an interview to ask for additional details and further clarification.  More information you prepare in advance of the patent prosecutor getting involved will save legal fees.

Review the Drafts and Think Creatively

A good patent application knows what innovation is unique and describes the differences that create your value proposition.  Corners should not be cut on the contents of your application. Your unique part of the product forms what is called “the heart of the innovation” and is part of each independent claim to define your rights.  Describe in great detail how that heart would work and any alternatives that might have the same value proposition.

Almost every time a patent application is filed, the examiner will reject your claims.  Having additional detail in the filing allows crafting fall-back positions for amending the claims to gain your issuance.  A narrow claim can still block your competition if that is the only practical way to accomplish the innovation. A great patent has as much detail and alternatives as possible when it comes to the heart of the innovation.

Reducing Litigation Costs By Being Strategic

Half the problem with patent litigation is how much time needs to be spent trying to prove with documentation that your patent was in place before someone else’s alleged idea hit the market. You can anticipate this problem and its solution by filing as many complete drawings and concepts with the U.S. Patent Office as possible for basic filings and base designs. 

Generally, the party who has the earliest history stands on the strongest ground legally, and that leads to a far higher success at summary judgments where the court literally stops a case from going further because your argument of ownership is so obvious.

Avoid disputes with competing ideas by securing an early review that includes competing concepts and images in a decisive determination. Patent legal review can be just the basic preparation for patent filing success or it can also include the additional work in making sure no one else had the same idea prior, or very similar. 

The few dollars spent as you develop the application could save you 10 times the cost in litigation that you end up losing because you never had a win in the first place.

Insurance is not a dumb idea either. As a preventative step, you can take out a patent insurance policy that covers defense of your patent up to a specific level of cost, which can also include settlement or judgment financial risks as well. That insurance plan can end up being your safety net financially to the extent you have to fend off a patent attack or pursue enforcement of your approved patent.

If you do have to litigate, stay on top of the proceedings and your legal representation with weekly meetings and status checks. Lawyers billing for work versus retainer charge all kinds of activities by the hour, but if your status checks reign in activities approved, then the billing can’t pad in unknown expenses so easily. This, in turn, cuts down on your legal costs over the duration of the litigation by avoiding charges you have no responsibility for in the first place.

Finally, not every lawsuit has to end in a trial and 50/50 chance of winning a judgment. You could salvage a patent loss or major legal cost by finding a way to settle and still hold onto some of the value of your invention and holding. Compromise has built and sustained more than one company and inventor by combining forces in cooperation versus direct fighting. Settlements shut down lawsuits permanently, stop the cost bleeding for continuing, and may very well be cheaper in the end than a full-blown fight to the end.

Spread Your Costs With Teamwork Help

If you have a great idea that really can work and be successful as a patent, why not bring in partners who can help bear the cost of the application process and potential enforcement costs? There are plenty of investor partner potentials who can find a profitable path to get on board and join your venture. Where this is possible, the overall cost to you for bringing your idea to patent can be reduced significantly in exchange for a share of the success and related licensing revenue stream. Not everyone makes a great partner, but it’s an option definitely worth considering.

Don’t Cut Costs Just for the Sake of Money or You Will Pay

Trying to save money on patent approval or enforcement just for the sake of the financial impact alone is poor planning. Don’t do it. The fact is, not paying for the critical review and legal costs to create or enforce a patent almost always ends up costing more in the long run. If you are going to seek savings in your patent project, you do need to make sure every step is part of your overall strategy towards your patent success. Again, some costs are worth the trouble when measured against the overall gain or loss in total.

In Closing, Don’t Expect Things to Get Cheaper On Their Own

The simple fact is, the patent protection world is not going to become more affordable anytime soon. There is simply too much demand for invention protection with too few qualified patent prosecutors. As a result, most providers are going to continue to charge high costs at a premium over the rest of the legal market. The greatest control you have is to be prepared and avoid wasted effort. In the beginning stages, you can make a significant difference in reducing costs while pursuing an uncompromising patent to protect your innovation.

Note: The preceding is general business advice and not to be construed as legal advice. IP laws vary by country and retaining licensed legal counsel is advised to confirm this information. Any expressed or implied opinions are of the author and do not necessarily reflect the views of Triangle IP or any other entity who might be associated with the presenter. We hope this content is helpful to you, but should not be relied upon without confirming the advice and accuracy with local legal counsel. Any comments or inquiries are not confidential so please discuss your issues directly with counsel.

TIP Tool is free for your whole team

No credit card required. No setup fees. No need to download.

Get Started Now

6 Things to Know Before Hiring a Patent Attorney

6 Things to Know Before Hiring a Patent Attorney

So, you want to hire a patent attorney to protect your new innovation. It could be for AI, Blockchain, Machine learning, IoT, or some other cutting edge technology that you are developing.

You have already met an attorney but had no clue whether you were receiving the right advice. Lawyers are not inexpensive and IP attorneys tend to have hourly rates that are 50% more than others

It takes around 3 years for a patent to be granted with hot technology generally being slower.

According to US Patents and Trademark office 629,647 total patent applications filed in the year 2015.  On average, about two thirds of those applications will issue eventually, but the likelihood of receiving a patent varies wildly with certain technologies having only a 10% chance of success.

Although it might be impossible to find one who will admit it, but not all patent attorneys are equal.  

None can predict exactly how difficult it will be to get your application allowed after filing and each round of argument is expensive.  Depending on the technology area, it can take 2-4 rounds of argument on average, but there are some who take far more or less with you paying for each round.

So you better hire the best attorney who understands your innovation, business needs, and looks out for your best interests.

But, how do you know which patent attorney or firm is right to hire for your innovation?

Can you hire a attorney with any kind of background for your technology?

Well, for starters, you need to hire a patent attorney who is registered to practice before the US Patent and Trademark Office by having passed the patent bar exam. To do so they need to have a technical background demonstrated by a degree in science, engineering, or equivalent to even qualify to take the patent bar exam.

You can also hire a patent agent who is authorized to represent inventors pursing their patents before the Patent Office by taking the same patent bar exam and having a technical degree without also being a lawyer. Patent agents can administratively pursue your patent, but cannot represent you on appeal or in front of a judge so their help is somewhat limited.

But more often that not, hiring just any random patent attorney is leaving too much to chance. There are a host of other important factors that you need to consider such as

  • Appropriate technology background
  • Strategic guidance
  • Experience with patents
  • Success rates
  • Speed of patent prosecution
  • Value measured in overall cost

In this article, I am going to talk about these factors and share the strategies for hiring the best of the patent attorneys learned over two decades of practice in the field.

If you want to download this article to read it at a later date, download the pdf below:

Never hire an attorney without an end-to-end cost estimate

Patent rights last for up to 20 years from the date the idea was first filed. And it could be 3 or more years before a patent is granted. Given such long time frames, it is in your best interests to ask your patent attorney to give a ballpark estimate of the costs that you would incur during this entire period.  

Often, attorneys simply quote the cost for drafting the application without the argument costs, government fees, etc.  It is typical for an attorney to say it will be $10K for your patent, but they are forgetting the $2K government fee for filing, $4K per round of argument, annuity fees of $7-13K, etc.

A more honest answer is $30-40K spread over the 20 year period of the patent term.

These are the questions you should be asking your patent attorney before engaging their services

  • How much do they charge to obtain a patent on my type of innovation on average?
  • What techniques are used to minimize or avoid churn in the argument phase?
  • What’s the cost curve over the lifetime of the process?
  • Can you give me an estimate for this year and through expiration of the patent?

Inventors have no idea what innovation tends to be expensive to obtain a patent and you would be surprised to find that simple technology is often more expensive to patent.

Typically your end-to-end costs would include

  • Any patentability searching which is optional before drafting
  • Legal fees for drafting your application
  • Government filing fees
  • Legal fees for each round of argument along with an estimate on the number of rounds
  • Government fees for more than two rounds of argument
  • Miscellaneous attorney and government fees throughout the process
  • Government issue fees
  • Government maintenance fees after issuance

Moreover, all these costs, including the attorney fees, would vary depending upon

  • How complex or simple the invention is
  • The type of patent application (provisional or non provisional)
  • Technology area with some requiring twice the writing budget over others

The patent office favors complexity over simplicity, so easy to understand innovation often requires a deeper explanation of the underlying technology which leads to the counter intuitive notion that simple innovation is more expensive to patent.

Similarly, utility patent fees (non provisional) differs from provisional patent fees as seen below.

Patent Application Filing FeesLarge EntitySmall EntityMicro Entity
Provisional Filing Fee$280 $140$70
Utility Filing Fee (Non-Provisional)$1,720$785$430
Design Filing Fee$960$480$240
Reissue Filing Fee$3,160$1,580$790

Also Read Foreign Patent Filing: 5 Strategies to Develop an International Patent Portfolio

Not listed above are the maintenance government fees to keep the patent in force after allowance that accrue at 3.5, 7.5, and 11.5 years into the patent term and total to $12,600 for a large entity, half that for a small entity, and half again for a micro entity.  

A good attorney can provide you with a complete breakdown of the estimated costs over the life cycle of your patent so that you can plan your finances before diving into the patent process.

Don’t fall for cheap hourly rates

Many inventors and tech companies hire attorneys who charge low hourly fees, but the real analysis is more complex.  

Let’s say you have two attorneys, one charges $250 an hour while a more experienced attorney charges $500 an hour. Often the higher rate comes with better efficiency such that a better draft might be done in far less time. Both options typically will promise a similar writing cost of $8K-15K depending on technology area and complexity or lack thereof.

While the lower billing rate may seem beneficial, this is a fatal mistake.

Your patent application draft is often the most important part of the process so is not the place to cut corners.

Most attorneys charge within 20% plus or minus to draft a patent application of each other regardless of hourly rates.  

The better draft from the more experienced attorney will typically have less difficulty gaining allowance at the patent office.  

That initial savings from a less experienced attorney will cost you as the patent application is excessively churned at the patent office. Alternatively, the flaws in your patent drafting could make assertion difficult or impossible such that the strategy may result in a worthless patent.

Billing rate is a factor but total drafting costs, minimizing churn, and an enforceable patent are equally important in making a decision.

Hiring a better patent attorney, while expensive hourly, is in your best interests and should be seen as an investment in your IP assets.

Similarly, don’t just hire a patent attorney who picks up your phone when you call a law firm. Usually, these are the least busy ones and may not be a right fit as your patent counsel.

Instead, seek a referral from a mentor or look up the firm’s website and find the best technology fit for your innovation. Don’t hesitate to contact them as most patent attorneys are happy to meet with you, free of charge for an hour or so prior to any commitment.

Tip: Another way to find the best patent attorney in your field of invention is to look for people who are most active in the tech scene. Experienced and respectable attorneys often write papers, publish articles, conduct seminars, and speak at important events.

Look for innovation attorney fit

You know how important it is to find a product-market fit before scaling up the business.

Similarly, you should find innovation-attorney fit before allocating the low five figures for the patent filing.

For example, you are an AI startup that is revolutionizing health care by reducing drug discovery times by predicting how molecules are likely to react with each other. That’s cutting edge AI.  

So, you would want to hire a patent attorney who has expertise in AI & healthcare that understands the technology you are developing and can draft a winning patent application.

Because attorneys charge hourly, a patent attorney who is slow to learn your technology is costly and probably results in poorer work product.

Let’s take another example.

You are a company working on developing a blockchain based securities platform that connects issuers and investors in a peer-to-peer network with settlement times a fraction of the conventional wait times.

Now, you would want a patent attorney who has experience dealing with blockchain & financial services to quickly understand your innovation over what the big financial firms have already filed in this space and, if so, what should your filing strategy be.

Point being, hiring an experienced, reputable patent attorney is just not enough. Finding an attorney that can quickly understand your innovation is key to efficiency.

Therefore, a rule of thumb is to ask yourself the following questions when vetting a patent attorney

  • Does the patent attorney has expertise in the technology you are developing?
  • How familiar are they with the part of the patent office examining your cases?
  • How many patents have they filed in your technology area and what results are typical?
  • If you lack inside legal counsel, can they describe the process using terminology you understand?
  • Are they experienced working with companies of your size or funding cycle such that they can explain the strategies?

Tip: Many law firms share their attorney profiles which includes their technical background and the areas of expertise. Additionally, you can look up their LinkedIn profile to get a sense of their technical background and experience along with the articles they have published.

Know your attorney’s strategy

You would be surprised to know how many enterprises do not have a well thought-out patent strategy, impacting the success of their businesses.

More budget is lost in pursuit of the wrong patent strategy than any hiring choice.  

The strategy joke in the patent industry is “If you are going to ask your attorney on how many patents you should file, your attorney would ask how many can you afford.”  Seriously.

Meaning, they be biased toward a gold-plated approach only throttled by your ability to afford it. (Patent attorneys tend to be risk averse).  

Plus, there is the obvious moral hazard with any vendor that realizes more profit in an aggressive approach.  

For example, attorney may file patents in areas that the patent office rarely rewards with a patent. Also, they may not invest the time and effort to draft a patent application that will fly through the process.

Impossible patent odds with very determined effort will quickly zap your legal budget.

There are tools available to empirically predict the likelihood of allowance for different technologies. Triangle IP for instance can predict the likelihood of allowance which will help you know your odds of getting a patent issued.

So, make sure your attorney understands

  • Why you need a patent (attract funding or exit, licensing revenue, competitor threat, etc)
  • Ask what are the different options to best utilize your budget this year while understanding the costs through completion of the process
  • The competitive landscape for your industry to scale your patent portfolio

A good attorney would listen to all of the above, ask questions about your business model, review the landscape to find out what your competitors are doing, what kind of patents are they filing, and would then come up with a pragmatic patent strategy to provide the most value for the least cost.

Find the one who is empathetic to your success.

For example, today AI and Machine Learning is being taken very seriously all over the world and is on the way to becoming a mainstream adoption in the years to come.

No wonder that startups dealing with AI technology in different domains are working fast to get patents to capture a lion’s share for their respective products in the market.

                                                Image Source: CBINSIGHTS

If you are a startup in the AI field, reviewing the above list for familiar competitors will provide a guidepost for how aggressively you might invest in capturing your innovation with patents.  For example, if you are entering the cognitive computing space knowing that Digital Reasoning has 6 patents will signal that you may also want that many or even more if they continue to file patents.  

Therefore, knowing how many patents to file and the likelihood of success along with a strategy focused on achieving your goals inexpensively will provide the most value from your patent attorney.

Choose an attorney who success rate is greater than industry average

Patent attorneys are abundant and most perform within industry norms, but attorneys with high success rates are scarce.

In difficult technology areas, it is not uncommon to find attorneys with substantially higher allowance rates with far less rounds of argument with the patent office.

For instance, for a business method client we were getting patents granted over 90% of the time when the industry average was a mere 10%. Which means, from a yield perspective others had to file 10 patents to get one granted whereas we had to file 1.1 patents to achieve the same.  

In terms of costs, most counsel are within 20% of each other when writing a patent and doing each round of argument, but the better performing attorneys will always cost less when yield is taken into account.

Therefore, success rate matters.

While a good patent counsel would transparently share success rates, few clients will even ask since they presume that all patent attorneys achieve the same outcomes. But that is not the reality.

And this is where the Triangle IP tool can help you by accurately predicting the success rate of your attorney for your technology along with other analytics.  

Since success rate can swallow all other factors in choosing a counsel, find a patent attorney who has a track record of winning.


Say no to attorneys who excessively churn during the argument phase

There are some half million patent applications waiting for examination and even more if you count those being actively argued.

Some patents are approved quickly while others take much longer. It depends upon many factors such as how simple or complex your innovation is, the quality of your patent draft, the advocacy skill of your attorney, the patent office stats for that type of technology, the scope of your innovation etc.

Having said that, the skill of your patent attorney plays a far important role in deciding how quickly you can get a patent with the best counsel averaging one round of argument until allowance.

A genuine, skilled attorney can estimate the number of rounds to patent allowance and will see that your innovation is in condition for allowance within the estimated number of rounds.

With each round costing $3-5K on average, saving one round results in substantial cost savings as well.

For example, my patent practice involves taking over prosecution gone bad. In a recent case, prior counsel was still unsuccessful after 14 rounds of argument with the patent office costing the client over $50K in legal and government fees.

For that same client, we averaged a little more than one round of argument and were able to resolve that over-churned case in just one more interaction with the patent office.

The best attorneys understand the real issues and quickly get it so that they can be fixed for quick results. Meeting with the examiner, for example, is extremely helpful, but rarely done with paper argument being favored by those with worse statistics.

But how do you know if your attorney is a skilled negotiator when arguing your cases?

After all, the patent office does not provide these statistics.

Triangle IP tool can accurately estimate the number of rounds to patent allowance for each of your cases. With the help of the tool, you will know how much effort to expect in arguing your case through the patent office.

If you like this article, join us where we share patent information that matters to you. Don’t worry, we only send emails that we feel are highly relevant for you. 🙂

Note: The preceding is general business advice and not to be construed as legal advice. IP laws vary by country and retaining licensed legal counsel is advised to confirm this information. Any expressed or implied opinions are of the author and do not necessarily reflect the views of Triangle IP or any other entity who might be associated with the presenter. We hope this content is helpful to you, but should not be relied upon without confirming the advice and accuracy with local legal counsel. Any comments or inquiries are not confidential so please discuss your issues directly with counsel.