What Patent Attorney's Don't Usually Tell You

The Partner Doesn't Do The Work

When you meet a patent attorney in a large law firm, you are most likely meeting with one of the partners because that is who you contacted first or that is who the firm directed you too. You will meet with the partner, explain your invention, go over all the details and leave. You assume the partner is the one working on your application. However, this is not usually so as the partner will delegate the work to an associate. It is the associate who actually drafts your patent application. Partners claim they review all the associates work, but in reality they don't. When you meet with a partner, ask who will actually be performing the work. Also, ask for the billing rate of the partner and the associate drafting the application and how many hours of each they foresee being required for your job. This will give you an idea of the potential costs. As I previously wrote in another article, costs of patents can vary greatly. At Martino Patent Law, I will meet with you and be the attorney who actually drafts your application.

The Ability to Draft and File a Provisional Application Yourself

It is possible for an inventor to draft and file a provisional and a non-provisional patent application without the assistance of a patent attorney. A patent attorney obviously wants the work, so they are very unlikely to mention it as a viable option for saving costs. When it comes to a utility patent (non-provisional patent) I recommend the inventor never attempt to draft and file it on their own, or what is called filing "pro se." The odds of getting it right are practically zero, contrary to some books you can buy that suggest so. (e.g. "Patent It Yourself" by David Pressman) A non-provisional / utility patent application must be drafted based on experience and skill only a patent attorney can develop over several years of practice. I have never seen a patent drafted by an inventor that I would file without major changes and corrections.

However, a provisional patent application could be a different matter. A provisional patent application is never actually reviewed by an Examiner at the USPTO. A provisional patent application can be done informally and does not have to meet the requirements that a non-provisional patent application does. Also, the filing fees are substantially lower. The risk all patent attorneys will warn about is to include as much information in the provisional application as you can. The provisional application is a basis for determining priority to a later filed non-provisional application. If the provisional application doesn't include enough information to prove you possessed and understood the invention fully at the time of filing, it may fail as a priority basis for the later filed utility (non-provisional) patent application. So in this case, more is better and err on the side of too much information as opposed to too little information.

If funds are extremely low, I recommend the inventor draft a provisional application to the best of their ability and then find a patent attorney to review your work. Inform the attorney you want a review of what changes are required, make those changes, and then allow the attorney to file the application for you. In this case the patent attorney should spend less time than normal and charge a substantially lower rate. When it comes to eventually filing the non-provisional patent application, find a way to hire a good patent attorney as it will actually save costs in the long run.

Provisional to Non-Provisional Double Charge

To keep the numbers simple, let's assume you already had filed a provisional application which cost $2,500. It is now nine months later and you want to file the utility (non-provisional) application before the one year deadline. You have no new embodiments or developments since your original provisional application and your invention is a very simple one. Due to the provisional application being fully prepared, all that needs to be done now is to draft a set of claims and file it. What will the attorney charge you? Most likely the attorney will still charge you $5,000 or so, which is what the attorney would have charged if you never filed the provisional application to begin with. But wait, isn't half of the application already drafted back in the provisional? Yes it was, but the patent attorney isn't going to tell you that as then they can't charge more money. To be fair, sometimes the inventor has made a whole series of changes and the application needs to be rewritten. Sometimes this can actually take more time than starting from scratch. I simply recommend the inventor understand what they are paying for and ask the attorney how the costs are accrued.

I hope that you will find the foregoing information helpful. If you have any further questions, please do not hesitate to call me.

Best Regards,

Marc Martino

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