Cutting Patent Prosecution Costs: Are There any Good Options?

December 15, 2015 Steven Brachmann

iStock_000022525943_Small-231199-edited.jpgThere’s no secret that the ability to protect valuable intellectual property can lead to much wealth. The costs of obtaining a patent securing that technology, however, are not always the topic of conversation once a research breakthrough has occurred. A good hard look at the patent prosecution process and the various costs along the way gives a business or prosecuting law firm a good idea of what it can expect to encounter.

The costs of obtaining a patent do not look insurmountable when scoping out the filing fees charged by the U.S. Patent and Trademark Office. Basic filing fees posted by the USPTO only cost a few hundred dollars. But many aspects of patent prosecution can heap a tremendous amount of additional charges on top of this. Professional drawings, prior art searches and attorney’s fees can add up to totals in excess of $15,000 depending on the complexity of an invention being patented.

Cutting corners in the patent prosecution process to save money is not a good option. Even when a thorough search for prior art is conducted, many examiners still bring forth unanticipated art; not conducting a search in the first place only exacerbates this problem. When a patent prosecution team doesn’t do its homework properly, many amendments must be made to a patent application filing and those costs can add up quickly.

Poorly drafted patents are often targets for rejection by examiners. At that point, an inventor or prosecuting firm has to decide whether or not to take on the heavy cost of filing a request for continued examination (RCE). The USPTO fee schedule for an RCE charges $1,200 for the first filing and $1,700 per subsequent RCEs filed. Final rejections can thus turn out to be a very expensive proposition for someone who feels that their technology is valuable.

The management of patent prosecution costs is crucial for any firm in charge of overseeing an IP portfolio, especially when that portfolio includes dozens of patent applications. Often, a company will seek many patents protecting technologies related to a similar subject area and it’s not always necessary to earn every patent grant for which is filed in order to secure a position in a technological field. A major trick towards successful IP portfolio management involves knowing when to cut losses on an application and abandon it early before it racks up excessive costs for a firm.

The analysis of data can improve the decision-making process for those petitioning the USPTO for patents. There are many variables affecting the process of earning a patent, from the prior art encountered along the way down to the examiner charged with assessing the technology for patentability. Determining how similar technologies have previously fared within the same art unit in which you believe that your invention fits can make prosecution much more cost-effective.

Even the particular examiner assigned to handle the patent application is another factor affecting the final price tag. Excessive delays can draw out an already lengthy process and makes the timeline even longer before an inventor begins to see a recoup of his or her investment. Not all examiners are made alike, but it’s very hard to find information to understand what you can expect from a specific one.

The suite of data analysis tools available through LexisNexis PatentAdvisor® can improve the cost-effective nature of patent prosecution for most. Predictive analytics based on information pulled from the USPTO’s Patent Application Information Retrieval (PAIR) service can guide prosecution by looking at successful or failed applications in your art unit or even getting a better idea on when to expect an examiner will take an action based on their prior work. Having a better perspective of a patent application’s value and potential costs will help those who are actively prosecuting an application budget their resources more effectively.

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