How to minimise patent costs – 2 October 2013
If you don’t have effective patent protection, others may be well within their rights to copy your new products and processes. On the other hand, effective patent protection comes at a cost. Fortunately, there are some straightforward steps to minimise these costs.
Step 1 – To patent or not to patent, that is the question
Just like any other investment decision, it is important to assess the costs and benefits of patent protection before getting started. The biggest cost saving can be not getting started at all.
Making this assessment requires a clear understanding of the expected patent costs. It’s important to find a patent attorney with the experience to clearly foreshadow these costs. Shop around. Make sure you find an attorney you feel comfortable with. Obtaining patents can be a long process – you will be working with this person for the next few years. Also make sure that you discuss costs to come over the years, not just the cost to get started.
It is also important to put emotion aside and focus on the hard figures. The principal purpose of patent protection is to stop others making, using and selling (etc) a product or process. What is the value of this monopoly? Does it justify the projected costs?
Some take great pride in seeing themselves listed as an inventor. Others see a marketing advantage in being able to describe a product as “patented”. If that’s how you feel, that’s fine too, but be aware that you are paying for these benefits.
Step 2 – Look before you leap
As a general rule, it is not possible to patent something that is already publicly known when your initial patent application is filed.
Searching for similar publicly known products and processes helps avoid the costs of pursuing patent applications that are doomed to fail. Searching early on in the process may reveal that your product or process is not patentable (because it was previously publicly known).
As a first step, you might conduct your own search using your favourite search engine even before contacting your patent attorney. If you find something that is identical to your product or process, you need go no further. If you find something that is similar but not quite the same, it may be best to take advice. Be wary about ruling out patentability. Many are surprised by what can be patented.
Also be wary about what you type into your search engine. Your search terms may not be private. It could happen that your product or process is rendered unpatentable because it is considered to be publicly known from your search terms.
Beyond your own preliminary searching, there are a range of professional searching options. Professional patent searching before embarking on patent applications in multiple countries is strongly recommended. On the other hand, if Australian patent protection is sufficient, the cost of the search may not be justified.
Twelve month grace periods available in Australia, Canada and the US are exceptions to the general rule mentioned above, so if you have gone public with an idea within the last twelve months (and patent protection in these countries is of interest) it is important to act quickly.
Step 3 – Brief your patent attorney well
Patent attorneys charge for their time. At the end of the day, it is the only commodity that they have to sell. Anything that you can do to reduce the attorney time required will reduce costs. It will also make you their favourite client.
Preparing a patent application or conducting a search will require a detailed understanding of your product or process and the key features that distinguish it from what is already publicly known. The more efficiently you can convey this information to your attorney, the better. Describe the product or process as crisply, clearly and completely as possible.
A good brief will:
- briefly describe similar products or processes that are already publicly known;
- briefly explain the benefits of the new product or process (e.g. it’s faster, cheaper, stronger, etc);
- briefly explain the new and different physical features that lead to these benefits (e.g. this pipe conveys hydraulic fluid from here to here, or in our process we heat the steel before bending it);
- describe the product or process in detail with particular regard to these physical features;
- include drawings (hand sketches are fine), diagrams and flow charts, etc.
Most importantly, ensure the brief is complete and self-consistent. Attempting to reconcile inconsistent information and reworking draft patent applications in view of new information are both very inefficient.
Step 4 – Be realistic about the countries of interest
Right from the start, be realistic about the countries that you are likely to pursue patent protection in. Keep in mind that if you start on the road to patent protection in a number of countries and then can’t afford to finish the process, you will have no effective rights. The money spent will have been entirely wasted. On the other hand, by being more selective at the start, the same money might have secured effective patent protection in a smaller number of countries.
There are various strategies for pursuing patent protection. The choice of strategy will depend on the countries of interest, amongst other things. One common and costly mistake is to file an international patent application and then proceed in only a few countries.
Filing an international patent application is a good option only if there is a reasonable prospect of proceeding in a large number of countries. It defers selecting the countries of interest and incurring the per-country costs by 18 to 31 months (depending on your patent strategy and the countries of interest). It seems many overestimate their prospects of having funds available by the end of the 18 to 31 months to proceed in a large number of countries
Step 5 – Actively manage your patent portfolio
Over time, your commercial interest may well move out of alignment with your patent strategy and some of your patent applications may no longer be warranted. For example, an application might relate to a technology and/or a national market that is no longer of interest to you.
By keeping a close eye on your patent applications and promptly abandoning any that are no longer of interest, wasted attorney fees can be avoided.
In the years following an initial patent application, there are various ongoing attorney costs (e.g. costs related to processing examination reports and attending to renewal fees). Immediately informing your attorney when a patent application is no longer of interest tells your attorney to stop work and to incur no further charges on that application.
Step 6 – Provide complete and timely instructions
Despite the sensitivity of many to attorney fees, it is not uncommon for attorneys to have to send multiple reminders to clients. When numerous reminders are required, the attorney time adds up and you might expect a larger bill.
Late instructions also lead to additional costs. The patent application process involves numerous deadlines, such as deadlines to respond to examination reports. Even though most of these deadlines are known months in advance, it is not uncommon for attorneys to receive their clients’ instructions at the very last minute. Last minute rushes are highly inefficient – an attorney who is working late into the night due to last minute instructions will not be at their best and will likely be without the assistants available to them during the day.
Just like the brief of step 3, crisp, clear and complete instructions during the patenting process will also minimise costs. A good patent attorney will make clear the information that they require from their clients. Nonetheless, it is not uncommon for attorneys to receive partial responses to their questions, leading to long and costly exchanges whilst the attorney tries to “extract” the information needed. If you are not sure what your attorney is asking for, say so, or pick up the phone – but don’t just ignore the question!
Step 7 – Trust your attorney (or find a new one)
From time to time, your attorney may provide advice that you don’t agree with, e.g. “we are not confident of securing effective patent protection for this invention because…”. It is always appropriate to discuss any concerns that you have with your attorney, but don’t let this turn into a long-winded debate.
Debating with your attorney is a pointless exercise. It won’t change whether your invention is patentable. If, after discussing your concerns with your attorney, you still believe they have got it wrong, it is probably time for a second opinion or a new attorney – there is no point continuing to pay for advice you don’t value.