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Lowering Patent Costs

    • 1 posts
    September 2, 2014 11:03 AM EDT
    My name is Arash Behravesh and I am a partner at Harvest IP Law, LLP (www.harvestiplaw.com), an intellectual property law firm in Washington D.C. Many start-ups have ask me how they can reduce their intellectual property costs and also the difference between filing a provisional patent application and a utility patent application.

    Before getting into this subject matter, please note of the following: The opinions expressed in this publication are for the purpose of fostering productive discussions of intellectual property issues and do not constitute the rendering of legal counseling, opinion, or other professional services. No attorney-client relationship is created, nor is there any offer to provide legal services, by the publication and distribution of this advisory. This publication is designed to provide reasonably accurate and authoritative information about the subject matter covered. It is provided with the understanding that the publisher is not engaged in rendering legal, counseling, accounting or other professional services.

    LOWERING PATENT COSTS

    There are several steps that can be taken to reduce the overall cost of drafting and filing a patent application. These steps range from filing a utility patent application instead of first filing a provisional patent application to providing the patent attorney with a solid, detailed description of the invention at the beginning instead of piecemeal the information to him/her.

    Provisional Patent Application vs. Utility/Non-Provisional Patent Application

    There seems to be a misconception that filing a provisional patent application lowers the patent drafting cost. The cost of drafting a provisional patent application is lower than drafting a utility (also referred to as a non-provisional) patent application because the application has reduced formality requirements. Unlike a utility patent application, a provisional patent application does not have to include the following requirements:

    1. Specific formatting or organization;
    2. Formal/computerized text and/or figures;
    3. Discussion of the prior art;
    4. Summary or an abstract; and
    5. Patent claims.

    The provisional patent application MUST only adhere to the following two requirements:

    1. The specification (the written description of the invention) must provide a complete explanation of the invention, including how to make and use all embodiments of the invention as claimed, and
    2. Any drawings necessary to understand the invention.

    In addition, it is important to note that a Patent Examiner at the United States Patent and Trademark Office (USPTO) never examines a provisional patent application. The purpose of a provisional patent application is simply to secure a fixed date for purposes of both United States and foreign priority. When a provisional patent application is filed, the filing date of its corresponding utility patent application in both United States and in foreign countries can get the benefit of the earlier filing date of the provisional patent application instead of the filing date of the utility patent application.

    Although a provisional patent application may cost a fraction of drafting a utility patent application, it is only the first step in securing patent protection, as an applicant still must pursue a utility patent application in order to obtain a patent. After filing a provisional patent application, an applicant has 12 months to file a utility patent application. If the applicant files the utility patent application 12 months after filing the provisional patent application, the utility patent application cannot claim the benefit of the filing date of the provisional patent application.

    When Should an Applicant File a Provisional Patent Application?

    As stated above, to receive the benefit of the filing date of a provisional patent application, the applicant must file a corresponding utility patent application within 12 months of the provisional application filing date. Accordingly, a provisional patent application has limited benefit for an applicant. Below are three scenarios in which filing a provisional patent application may be appropriate:

    1. Deferring the more substantial costs of drafting a utility patent application for 12 months due to finances;
    2. Conducting research within the 12 month period to determine if there is a market for the inventive product; and
    3. Obtaining a filing date has urgency and there is insufficient time to draft a utility patent application and/or prepare formal drawings.

    How to reduce the Costs of Preparing a Provisional and/or Utility Patent Application

    Whether you want to file a provisional patent application or a utility patent application, you can reduce that cost by decreasing the amount of time a patent attorney spends drafting the application(s). The following steps and/or information may reduce the patent attorney’s time:

    1. Provide your patent attorney with a solid, detailed description of the invention, including the advantages of the invention and the characteristics that makes it different from prior inventions.
    2. Tell your patent attorney whether the invention has been described in a published paper or embodied in a product sold or offered for sale.
    3. List the names, residential addresses, and citizenship of all of the inventors.
    4. List and provide a copy of all of the relevant publications and patents.
    5. Retain counsel in advance of any filing deadlines.
    6. Provide your patent attorney with drawings, ranging from highly conceptual ones to ones having minute details.
    7. If multiple individuals are reviewing the attorney’s draft of a patent application, attempt to provide all comments at one time and in one document.

    Arash Behravesh is a partner at Harvest IP Law, LLP, an intellectual property law firm in Washington D.C. He has been named as one of the top patent prosecutors in The U.S. by Patent Buddy.

    Copyright 2012. All Rights Reserved. No distribution or reproduction of this issue or any portion thereof is allowed without written permission of the publisher. The opinions expressed in this publication are for the purpose of fostering productive discussions of intellectual property issues and do not constitute the rendering of legal counseling, opinion, or other professional services. No attorney-client relationship is created, nor is there any offer to provide legal services, by the publication and distribution of this advisory. This publication is designed to provide reasonably accurate and authoritative information about the subject matter covered. It is provided with the understanding that the publisher is not engaged in rendering legal, counseling, accounting or other professional services. If legal advice or other professional assistance is required, the services of a competent professional person in the relevant area should be sought.
    • 27 posts
    November 13, 2014 8:08 PM EST
    For people with first hand experience, it might be hard for them to find ways to lower a patent cost. But with the right guidance from the expert, they will be able to file a patent without spending too much.