First time inventors seeking a patent have a difficult task in trying to decide who can best help prepare and prosecute their patent and how much they should spend in the application process. These two considerations are interrelated due to the business structure of the law firms and individual practitioners who provide these services.
It may be helpful to consider practitioners as classifiable into three categories, including large law firms, small firm/sole practitioner patent attorneys, and patent agents. Large law firms generally earn a majority of their profit from litigation. Generally, only larger clients able to pay the heavy costs of litigation are generally sought by the large law firm. Since litigation costs cannot be closely controlled by the client it will always be a high profitability activity, and will always dominate the business of the large firm. Large patent law firms generally consider patent application work as necessary to enable future litigation business which may result, and as such the small business and individual inventor is not a high priority. A significantly higher fee policy may be used by larger firms to exclude individual inventors and small businesses. In some instances, fees as high as $15,000.00 have been quoted for a simple utility patent application.
Further, with a larger law firm, the application is likely to be handled by more than one attorney, with the inefficiencies associated with further explanation of the invention to the attorney who will perform the work. This inefficiency is significant and costly. The inventor or small business is effectively paying for this time, including the communication time between the attorneys.
Patent agents occupy the other end of the range of choice. Many practice part-time or as a source of supplementary income. The quality of work may vary more significantly among patent agents. Since agents are not attorneys, they cannot provide full service to the client. For example, agents are not permitted to express legal opinions about patentability and infringement. However, the fees quoted by patent agents typically range from $1500.00 per case as a minimum, up to about $4000.00. Agents cannot provide certain client protections including the attorney-client privilege and attorney-client confidence. In addition, the technical expertise and experience of the agent as it relates directly to the invention should be carefully examined. If the patent application is not drafted by someone who thoroughly understands the technology and who can adequately express the invention, it will cost the inventor in terms of patent coverage, time, money, and future defendability of the patent.
The small firm/sole practitioner patent attorney may turn out to be the best bargain for the beginning inventor and for small businesses. In addition to the advantages and protections of doing business with an attorney, the cost structure of the small firm/sole practitioner patent attorney is not significantly greater than that for agents.
One objective measure of cost is dollars per page of the patent application including the claims and abstract. The standard attorney fees charged by the small firm/sole practitioner patent attorneys of which I am aware is still about $190 per 82 by 11 inch sheet, double spaced. Rarely can even the simplest patent application be expressed with less than 15 pages. Utility patent applications with less than 10 pages will often run into trouble for not having a sufficient disclosure.
Lastly, the patent attorney should take the time to talk with the inventor or small business about the full range of options available. Many inventors, even those who have applied for patents in past years, still have not been informed about patent basics.
The basic information which inventors should know, include at a minimum (1) the new utility patent term which has been in effect since June of 1995, (2) the petition to make special to hasten the time of first examination by the patent office, (3) the favorable tax treatment afforded inventions, (4) the availability of a filing under the Patent Cooperation Treaty to delay foreign filing of the patent while preserving the filing priority date, and (5) the availability of patent owner's insurance to defray the cost of enforcing the patent against an infringer.
Individual inventors and small businesses should make certain to select a patent practitioner who is genuinely interested in their inventions, businesses and in helping achieve their goals.
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