Articles
August 1, 2018

Buyer Beware: 5 Ways That Cheap Patent Application Only Bought You a Headache

Low-cost patent applications may cost quality.

It’s no secret that many more clients than in the past are demanding that their outside patent counsel prepare patent applications at a lower cost—often far lower—than their patent counsel recommend. For example, some clients are requiring that patent applications cost no more than $6,500 to $8,500 for moderately to fairly complex applications, when patent counsel knows full well that these applications should realistically cost $9,000 to $11,500 to be of good quality.

Some clients make their demands by outright setting caps on the amount they will pay, while others simply send more work to other counsel that have somehow managed to adapt their practices to be able to provide low-cost patent applications. In both cases, they are sending the message that, from their perspective, cost is king.

So, how are patent counsel able to satisfy their clients’ pricing demands without giving away free work? Here are a handful of tactics I’ve seen patent counsel use to cope with having to prepare low-cost applications without sacrificing the profitability they need to sustain their practices.

1) Your patent counsel used the invention disclosure as the patent application

Some patent counsel take this approach when an invention disclosure is a formal document, such as a prepublication research paper prepared by the inventors. Such invention disclosures are typically well-written and look quite impressive—they will, after-all, be published in highly respected technical journals. Because these disclosures have at least the appearance of quality, to save time patent counsel may simply adapt them to more of a patent-like format and largely use them wholesale for the detailed description section of a patent application. Such adaptation can include adding element numerals to the description and figures and selectively editing the text to make it more in the style of patent applications. Patent counsel then prepares claims that are congruent with the invention disclosure. The result is a patent application that typically looks quite good.

This approach can have pitfalls, though. Often, the type of invention disclosure used for this approach is either limited to a single embodiment or focused primarily on results achieved by the invention rather than the invention itself, or most often, both of these. Patent counsel that focuses on the single disclosed embodiment to save time, will frequently not address the likely existence of a broader invention, and, even if they do, the disclosure may not support broad claims if made. With its concentration on results, the disclosure is more likely than not deficient on details that would likely be needed to support patentability of the invention itself. Indeed, I have firsthand experience with this.

Our firm gained a new client and took over a portion of its patent portfolio, which included a patent application prepared in exactly the manner described above. Prior patent counsel had simply cleaned up a prepublication research paper, drafted a set of claims, and filed the result as the patent application. We took over prosecution after the first Office Action, and the story goes downhill from there.

The examiner rightly rejected all of the claims based on prior art; the original claims were simply too broad. After discussing the rejections with the inventors, it was clear that their invention was indeed patentable over the applied references, so all that was needed was to amend the claims to include the distinguishing features—or so it should have been. However, in reviewing the application as it was filed to see how it addressed the distinguishing features, we found that it did not address the critical features at all. Why not?—because those features were not necessary in describing the results the inventors achieved using their invention, so the inventors left them out of the paper.  On top of that, prior counsel either did not get those features from the inventors or failed to include them in the application for some other reason. In any event and without going into detail, the ultimate result was that a patent never issued because of this omission of important features of the invention.

2) They drafted your patent application using only the initial invention disclosure

Many invention disclosures are not of the same character as the formal-looking invention disclosures discussed above and, therefore, are not suitable for the “clean up and file” approach to application drafted described above. However, these disclosures, too, are often focused on a single embodiment and/or are directed primarily toward describing results achieved using the invention than toward details of the invention itself.

To save time and cost, patent counsel will often use the invention disclosure as a guide to draft a patent application from scratch. This, in and of itself, is not atypical for any patent counsel; rather the issue here is that a cost-saving counsel may not probe the inventors deeply enough to properly ferret out the true breadth of the invention, any missing details of the invention, and/or alternative embodiments. After all, such probing and follow-on work takes time and money that only adds to the cost of a patent application.  Besides, an unsophisticated client that sees a patent application that matches the disclosure will not know that the application is lacking anything.

However, a good-quality patent application needs to include the missing details, alternative embodiments, etc., to give it the best chances of becoming a patent and surviving validity challenges.  The additional probing and resulting additional information are things that provide the client with real value. When patent counsel relies solely, or even mostly, on an invention disclosure when drafting a patent application, they are not providing much value to the client. Patent counsels’ true value to clients lies precisely in their skill of broadening out an invention from a limited number of actual embodiments and properly supporting that broadened-out invention. Unfortunately, deploying these skills cost time and money, and patent counsel often choose to limit deploying these skills to stay within client budgets.

3) Your application got pushed down to a less-experienced junior associate

It is a fundamental fact that, given a fixed budget, a junior associate having a billing rate that is a fraction of a senior associate or partner can spend more time drafting a patent application than the senior associate or partner could. It is also a fundamental fact that patent applications take a significant amount of time to draft at least because of the many formalities involved, not to mention the likely complexity and volume of information that needs to be covered. So, naturally, it seems to make sense to have a low-billing-rate patent professional draft patent applications.

However, this model is rife with its own problems, which are exacerbated by clients demanding low-cost patent applications. For example, while junior associates may possess excellent writing skills, they often have not yet developed a full set of patent-drafting skills, including the skills of probing inventors, broadening-out inventions, and knowing how to properly support broadened claims. Consequently, the applications they draft may look good and read well from a grammatical perspective, but they can be short on the substance needed for them to be deemed of good quality.

With low budgets to work with, a junior associate’s work will likely consume most, if not all, of a patent-application-drafting budget, which leave little time for review by an experienced senior associate or partner. Many times in this situation the experienced reviewer will glance at the invention disclosure and read through the applications for glaring errors, awkward phrasing, formatting, and perhaps some minor substantive issues. However, because they are short on remaining budget, the reviewer will likely not take the time needed to understand the invention to the level they would if they were drafting the application themselves. Consequently, they likely will not know if the application is truly of good quality (i.e., sufficiently broad with properly supported breadth) or not and will not do anything to ensure good quality.

4) The practitioner you hired “doesn’t know what (s)he doesn’t know”

There is a subset of patent counsel that have never been properly trained to prepare good-quality patent applications. This occurs for a number of reasons, such as a neophyte patent attorney leaving a firm too early in their career to start a new firm or join a young firm, or an in-house patent attorney, who hasn’t prepared a patent application in decades, “retiring” and starting a second career in patent application preparation and prosection. Often, though not exclusively, these inexperienced patent counsel are in solo practices or small firms where they never get proper training.

This sort of patent counsel is often more than willing to prepare patent applications at low cost. But the problem, of course, is that this class of patent counsel “don’t know what they don’t know,” and they don’t know that their drafting skills are deficient when measured against experienced attorneys that know how to prepare good-quality applications. The most unfortunate result of this is that most clients can’t tell a good patent application from a bad one, which can lead those clients to believe that if this patent counsel can prepare low-cost patent application, then why can’t everyone else. If you have read this far, you will realize that the two answers to this are 1) others can’t provide low-cost applications without compromising on something (e.g., quality) and 2) others can provide low-cost applications, but something (e.g., quality) will be compromised.

5) Your invention disclosure got run through the “patent application mill”

Some firms, many of which are small- to medium-size boutique firms, have effectively set up “patent application mills” that crank out patent applications in high volumes and at relatively low cost. Some of these firms set flat fees that play the averages, realizing that they will come in under budget on some applications and over budget on other applications, with the averages over time falling close to the flat fees. This type of firm often has large institutional clients that file patent applications in very high numbers. Some high-volume “mill” firms practice some or all of the tactics described above to further help them achieve the low flat fees that some clients are looking for.

Lest this seem overly negative and critical, not every patent application prepared using any one or more of the tactics above is going to be poor quality. Indeed, some will be good quality, especially if the invention disclosures address all of the salient points and/or the invention is simple enough that the drafters don’t need to deploy most higher-level drafting skilled.

To some, the differential in costs mentioned at the beginning of this article may not seem that significant. But when the bulk of that differential allows the patent professional to properly “dig into” the invention, it can make all the difference in the world in terms of quality.

The main point of this article is to caution you that there is a growing disconnect between what many clients are willing to pay for a patent application and what patent counsel recommend for a good-quality application, and this disconnect can result in compromises in quality that patent counsel are not necessarily communicating to their clients. More simply, you might just be getting what you pay for—and not what you are expecting!

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