One of the difficulties entrepreneurs and smaller businesses face with respect to patents is the often prohibitive cost of preparing and filing patent applications. According to the American Intellectual Property Law Association’s 2019 Economic Survey, the average cost to prepare and file a single patent application in the electrical and computer field was nearly $11,000. That can be a staggering amount for businesses of any size. However, with a little planning and organization, patent applications do not need to be anywhere near that expensive. Below are some tips to greatly reduce the cost of obtaining patent protection for your intellectual property.
Prepare an invention disclosure document in advance
After you have formalized your attorney-client relationship, you will need to disclose to your attorney what your invention is, how it works, how it is used, etc. This can require lengthy conversations and back-and-forth communications, which can add significantly to the cost of your patent application. (Particularly if your attorney is billing by the hour.) To reduce the time taken to explain the invention, prepare an invention disclosure document in advance.
A typical invention disclosure is written in the form of a problem and solution statement and has a very simple five-step structure. First, it identifies a problem or challenge within a technological field. Second, it describes currently-known solutions to the problem, highlighting their shortcomings. Third, it describes your novel solution to the problem that overcomes the shortcomings of the currently-known solutions (i.e., your invention). Fourth, it describes any variations of your novel solution. Fifth, it highlights any other benefits associated with using your novel solution.
By providing this short and concise document to your patent attorney, you can eliminate a significant amount of back-and-forth and you will focus your attorney’s attention immediately on the most important features of your invention.
Focus on a single invention rather than an entire product
An invention is not the same as a product. An invention is a single solution to a single problem. A product is a collection of features (possibly including multiple inventions) packaged together into a good or service that can be sold to customers. For example, if I were to invent a swivel chair (assuming such chairs did not previously exist), the invention might be a swivel attached to a chair. The product, on the other hand, might be a complete chair that includes a swivel but also includes upholstery, wheels, a reclining back, etc.
If your invention disclosure focuses on a product instead of an invention, then your patent attorney will have to take time to determine which portions of your disclosure are relevant to your invention and which are not. Portions of the product that are not relevant to the invention may be described in the patent application, adding to its length and bulk. These things can add to the overall cost of the patent application.
Worse yet, features of the product may be incorporated into the patent claims, which could provide competitors with an opportunity to design around your patent. Returning to the swivel chair example, if a patent claim were to recite a swivel attached to a leather chair, then a competitor might overcome the patent by putting a swivel on, for example, a faux-leather chair. By claiming the material of the product, rather than focusing on the invention alone, the value of the patent may be diminished. Even though most patent attorneys will be able to spot issues like the above, correctly focusing the invention disclosure on the invention itself can provide an extra layer of assurance and can assist your patent attorney in providing the strongest possible protection.
Prepare visual depictions of the invention
With the exception of some chemical-based patents, almost all patents have drawings. Typically, your patent attorney will work with a professional draftsperson to develop drawings for your patent application. If you have only provided your attorney with a conceptual description of your invention, developing drawings can be time consuming and costly. You can drastically reduce the amount of time expended in preparing drawings by providing your attorney with system diagrams, flowcharts, schematics, CAD drawings and even hand-drawn sketches that fully depict your invention. Your patent attorney can then pass these visual depictions directly to the draftsperson, avoiding the difficulty and expense of creating new drawings from scratch. Further, by preparing your own drawings for the patent application, you can ensure that the drawings accurately depict the substance of your invention.
Takeaways
A standard practice among larger businesses that regularly file patent applications is to provide their patent attorney(s) with at least two files: (1) An invention disclosure form that relatively follows the outline described above; and (2) a set of four or five presentation slides that include illustrations, charts, schematics, etc. to illustrate the invention and provide commentary to facilitate understanding of the invention. By adopting a similar practice, entrepreneurs and smaller companies who are in the beginning stages of patent portfolio development may greatly reduce the costs associated with preparing and filing patent applications. These practices can also contribute to a patent portfolio that is focused and provides strong protection.
For more information about this or related issues, contact Jim Meaders by calling (208) 562-4900 or send an email to jmeaders@parsonsbehle.com.
