What's the Bottom Line? Estimating the Costs of Patent Prosecution with Analysis Tools

August 30, 2017 David Bennett

In order help one of your clients decide whether it makes sense to move forward with patent prosecution, you sit down and explain to her the ins-and-outs of the patent process. She takes a moment or two to digest the complexities of the patent system, and then leans in to ask you “how much is this going to cost?” You knew this question was coming, but because you are painfully aware of how unpredictable prosecuting a patent application can be, you remain cautious of your need to manage your client’s expectations and respond with an honest “it depends.” As expected, your client is not content with your answer and requires a much more definitive answer.

Few things are certain in patent prosecution, and most of those things are listed on the USPTO fee schedule. You explain that the USPTO requires a fee to file your patent application, and there are fees to cover the cost of your assigned USPTO patent examiner performing a search for prior art and examining your patent application to determine whether or not the invention described is patentable. If things go well and the patent application is allowed, she will have to pay an additional fee to issue, and even more fees periodically through the years to maintain the patented status. By this point in the conversation with your client, you have a good sense for which small or micro entity discounts your client is eligible for, so you have a good sense of how much your client will have to pay to the USPTO. With the exception of a few additional USPTO fees that may arise, the most difficult part of providing your client with an accurate estimate is pinning down the amount of time you, the patent practitioner, will have to contribute. One seemingly innocuous but unexpected office action can set your client back thousands of dollars in attorneys’ fees. Should the need arise to file an RCE or to file for appeal, the cost of patent prosecution will skyrocket.

Fortunately, we live in a time where we can make use of the abundance of patent data within the USPTO archives, and leverage patent application software, to predict, with greater certainty than ever, the prosecution events that will occur. Because the path of a patent application depends so greatly on the individual patent examiner assigned to a patent application, predictions based on generalizations about all patent applications can be extremely inaccurate. However, by using patent analysis tools to investigate the art units that are likely to handle your patent application, you can base your estimates on more relevant statistics, including the average number of office actions a specific art unit issues prior to allowance, the percentage of patent applications that had to file an RCE prior to issuance, and the likelihood that a patent application assigned to an art unit will wind up in the appeals process. Tapping into art unit-specific patent data will help your client understand the pitfalls of the patent prosecution process and to budget more appropriately. Moreover, once your patent application has been assigned to a specific patent examiner, you will have the ability to revisit your estimate with even more relevant examiner-specific patent data and to use this data to develop your patent prosecution strategy to keep the patent expenses to a minimum.

LexisNexis PatentAdvisor® patent analysis tools enable you to make more accurate estimates for your clients. With PatentAdvisor™, you can access and interpret the overabundance of patent data within the USPTO databases to make data-backed predictions of the costs associated with prosecuting their patent applications, and to help your clients understand bottom line.

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