Warning: Some of these views are likely unconventional. This is not a post on how much a patent will cost. It's one person's views on where money could be spent effectively and do not necessarily represent the views of other attorneys or patent agents associated with silverlegal.
The hypothetical startup discussed in this post has limited visibility into the future and equally limited funds. Whether such a startup should pursue patent protection in the first place is a difficult decision (for more insight on the decisioning, see this post). Once the patent decision has been made, this post discusses where the startup should and should not spend its money.
Where will a startup get the most value for its investment in a patent application?
Hire the right person. Use a patent professional (i.e., a USPTO-registered patent attorney or agent) with experience. First-time inventors and assignees should never attempt the patent system alone. Avoid promotion companies for securing patent rights.
Skip the provisional application. Those seeking a provisional application usually want a cheap entry point into the patent system and are concerned with sharing their ideas with investors and others. I believe that is a noteworthy concern. However, the concept here is that if you don’t put the effort into doing a quality job the first time, you won’t have anything to show for your investment. Provisional applications have their place, particularly if a public disclosure is imminent or speed matters. Yet a hastily drafted provisional shouldn’t be the default.
Skip the professional patent search. Don’t get me wrong. A professional search can help. Be forewarned that a professional search is never a guarantee that an unknown reference won’t come up later during prosecution or after you receive a patent grant. Broadly speaking, I don’t think a professional search is the best use of your money in all scenarios. Instead, conduct your own patent and reference searching, knowing and accepting it won’t be perfect. You need to become a master of your domain anyway if you’re planning to build a business and outfox the competition. Therefore, I’d argue searching yourself has value to you. Searching yourself is also helpful for learning what landmines are out there and seeing what others were able to get patent protection for to set expectations. Share your search results with your patent professional. I fully acknowledge that a patent professional can draft a better patent application including the claims therein having the closest references at hand. Keep in mind that you should get a good, although not perfect, search eventually. The Examiner’s search is included in the cost of the patent application, and the Examiner should be an expert in the art unit where your patent application will be examined.
Skip the patentability opinion. If you are sure you came up a brilliant invention, focus your money on writing a more thorough application and pursuing a patent instead of having a professional ponder whether you can get a patent. If a patent attorney in good faith is willing to write an application for you, you’re probably not that far off. Opinions are essential in some cases, e.g., if you need to know you can get a specific claim scope.
Hire a second patent professional. Pay to have a second patent professional look at the drafted patent claims and discuss the application and claim strategy with your chosen patent professional before you file your application. The patent claims are the most important part of the application, and it helps to have a fresh, unbiased set of eyes review your claims. (If desired, silverlegal handles this by having experienced attorneys and agents consult on an application.)
Describe extra embodiments. Pay to add other embodiments in your application, even if you don’t claim them now. You may be able to get broader claims or claim the embodiments in a continuation or continuation-in-part application.
Preserve your international rights. Consider a PCT application, even if you don’t have plans to file internationally. A PCT application can be an incrementally expense in terms of patent professional cost if a national stage application has already been well drafted. (Gov't fees are not cheap.) A PCT application buys you a significant amount of time prior to having to make large expenditures including local attorney fees, translations and filing fees in each country. In addition, a later acquirer or investor may appreciate that you have a pending option to pursue international patent protection, and you should have more data at hand by the time you are ready to make these decisions. Also, note that the one-year clock for a PCT application starts at the earliest priority date, so if you file a subpar provisional application the first time around, you have started the clock. International protection depends on which subject matter you are claiming.
Conduct Examiner interviews. Statistics show that patent applications with Examiner interviews have increased rates of allowance. (See support here ) Interviews may help to educate the Examiners on points you find important, enable the applicant and the Examiner to reach an agreement, and set the Applicant’s expectations for what is reasonably attainable.
Drive down the fast lane. Consider one of the forms of accelerated examination, which often require extra fees as well as have other requirements. These may speed up the time to a patent grant.
Meet your business goals. Pay, if extra payment is required, to have your patent professional understand where you intend to take the business and what you intend to do if you are granted a patent.
Fine tune your IP Strategy. While some patent professionals may be able to provide advice on IP strategy, not all can. You need to be able to understand why you are moving forward with a patent application and how this puzzle piece fits into the larger strategy.
Consider alternative forms of protection. Although slightly off topic, consider alternative forms of IP such as design patents, copyrights and trademarks that may further your goals. The incremental costs may be small for certain types of IP with protectability that suits your company’s needs.
I hope this has been insightful. Consider silverlegal to help you on your patent and/or startup journey. Your journey does not have to be the same as advocated here. silverlegal can support your startup or business on whichever journey you choose. Mention this post to get 10% off of a 1-Hour patent consultation from silverlegal.
This is attorney advertising. This is not legal advice for you. You should always consult with a professional with the specifics of your facts and circumstances.