HOW TO SPEND SMART MONEY DEVELOPING YOUR PATENT PORTFOLIO

This article was first published in 2019. The current version has been updated to include our firms current statistics based on more recent data.

When thinking about the cost of patents, people often focus entirely on the immediate (short-term) cost of getting the patent application drafted and filed.

But that’s a mistake. You also need to account for the long-term cost of getting an issued patent. This includes the cost of office actions and other prosecution costs.

By making a proper investment at every step of the filing process, you’ll be better positioned to obtain a high-quality patent that can withstand close scrutiny and will add value to your business.

In particular, engaging a qualified attorney to draft a strong patent application can make a world of difference — and we have the numbers to prove it.

LOOK BEYOND FILING COSTS

If you’re unwilling to make the upfront investment in a well-crafted patent application, you run two risks: first, of incurring higher costs down the line; second, of reducing your chances of getting a patent at all.

RISK #1: HIGHER LONG-TERM COSTS

When you cut costs upfront in the initial patent filing, you can inadvertently create enormous cost for yourself later on.

We could make an analogy to financing a car with “zero down” and an enormous interest rate. It might feel good at first because you get a shiny new car and money in your pocket. But in the long term, you’re really getting robbed, as you’ll end up paying twice as much over the years.

Not into cars? Here’s another analogy: The initial patent filing is like the foundation of a house. If you build it cheap, you’re going to spend lots more down the line on repairing structural issues. But if you build it right from the outset, you’ll spend less overall later on.

RISK #2: REDUCED CHANCES OF GETTING A PATENT

By filing cheaply, you reduce your chances of getting a patent, and reduce the value of whatever patent you do get.

After a patent has been filed, you can never go back and add more to the original application. This means that many mistakes made in the initial filing are often irreparable. For example, omitting (or inadequately describing) technical details can destroy your chances of getting an issued patent.

Certainly, there are opportunities to amend your claims after the application is filed (for example, if the examiner doesn’t find them patentable).

But making these types of amendments usually costs much more in the long run compared to getting it right the first time.

Besides, the quality of amendments that can be made will depend on the quality of the initial filing.

THE NUMBERS DON’T LIE: EXPERIENCED LAWYERS GET RESULTS

When it comes to securing high-quality patent filings, a competent lawyer is an invaluable resource.

At Henry Patent Law Firm, our clients get patents quickly and easily:

• “Quickly” means less time from filing to issuance: We have a track record of helping our clients get issued patents faster, which adds value sooner.
• “Easily” means fewer office actions: We also have a track record of helping our clients minimize office actions. Because responding to each office action costs thousands of dollars, this helps them save significant money.

A bold claim, to be sure — but we have the numbers to prove it. We crunched the numbers from public data for all cases that our firm has handled that have been allowed or issued by the USPTO, and then we compared them to USPTO averages.

Here are our results:

AVERAGE NUMBER OF OFFICE ACTIONS BEFORE ALLOWANCE

Each office action typically costs between $2,000 to $4,000, depending on the number of issues to be addressed.

At Henry Patent Law Firm, we average 1.04 office actions before allowance. The overall average for patents issued by the USPTO is between two and three office actions — that’s more than twice our average! As such, it’s fair to say that our clients are spending much less than average on prosecution.

AVERAGE NUMBER OF RCES BEFORE ALLOWANCE

A request for continued examination (RCE) is filed after a “final” office action, in order to start a new round of examination.

Each RCE can add to your overall cost significantly. For one, the RCE itself has a fairly high USPTO fee: as high as $1,900, which is practically equivalent to the filing fees for a new application.

Beyond the RCE fee itself, going through a whole new round of patent examination could cost you up to several thousand dollars in legal fees.

At Henry Patent Law Firm, we average 0.13 (practically zero) RCEs before allowance. In other words, we very rarely have to file an RCE in order to get a patent application allowed. That shows how cost-efficient we are for our clients.

PERCENTAGE OF CASES WITH AT LEAST ONE CLAIM INDICATED ALLOWABLE IN FIRST OFFICE ACTION

At Henry Patent Law Firm, 68 percent of our cases have at least one allowed claim in the first office action. 

In other words, in almost three-quarters of the cases we file, examiners approve at least one claim during their first substantive examination.

Why is this significant? When this happens, our clients can choose to accept the allowed claims and get an issued patent — without incurring any prosecution cost. Basically, the only major cost they incur is the cost of the initial filing. They do not have to respond to office actions or file RCEs.

AVERAGE TIME FROM FILING DATE TO PATENT ISSUANCE

At Henry Patent Law Firm, our average time from the patent application filing date to patent issuance is 16 months. Compare that to the overall USPTO average, which usually ranges from about 24 to 30 months.

Our clients are getting issued patents very quickly relative to the average. Getting a patent six months to a year earlier can have a significant impact, especially for early-stage companies who are trying to raise funds and get a foothold in the market.

AVERAGE TIME FROM FIRST OFFICE ACTION TO ALLOWANCE

At Henry Patent Law Firm, we move cases quickly through the patent prosecution process: We take on average seven months from the first office action to allowance. This shows, among other things, that even when we do need to overcome a rejection, we’re often successful on the first response, and we’re moving cases quickly through the prosecution process.

IT STARTS WITH OUR CLIENTS

We’re proud of these numbers, but let me pause and acknowledge the obvious fact that every successful patent application begins with the client and their innovative work in creating meritorious, patentable inventions.

Put another way, the sophisticated innovators and savvy tech executives that we serve provide the core substance of every patent application. Our job is to craft patent applications that capture the value of their work and give them the best chance of success in the patent process.

A strong, cost-efficient patent portfolio is the result of strong team, and we’re proud that our numbers show:

1. Our clients are doing important, innovative research and development
2. Our clients are filing strong patent applications
3. Our clients get patents issued much faster than average
4. Our clients get patents issued with lower patent prosecution costs than average

HOW WE DO IT: HENRY PATENT LAW FIRM’S PROVEN PROCESS

To achieve similar results, you should hire patent counsel with a proven track record of getting patents issued quickly, without unduly long prosecution.

Not sure what, exactly, you’re looking for? We’re sharing the process we take when we file patent applications. We hope it’ll serve as a helpful reference for evaluating your patent counsel’s working style.

Without further ado, here are five key factors in our filing process:

1. File thorough, detailed specifications: Because the specification provides valuable context for the examiner to interpret the claims in a patent application, it’s critical to draft it in a way that supports your claims.
2. File lots of strong dependent claims: As we explain in a separate blog post about prior art, narrower dependent claims will hold even if the broader independent claim gets knocked out during examination. By having lots of robust dependent claims, you’ll enjoy a higher chance that at least one claim will be found allowable in the first office action.
3. Speed up the patent prosecution process: You can get your patent application examined earlier by using Track One — the USPTO’s prioritized patent examination program — and the Patent Prosecution Highway (PPH) program.
4. Use examiner interviews: This helps move cases quickly to allowance, by letting you avoid the expense of office actions and RCEs.
5. Make smart arguments and amendments to overcome rejections: Quite simply, it’s our job to help patent examiners understand the merits of our clients’ applications.

If you’re looking for more guidance on choosing the right attorney for your needs, check out our blog post on questions to ask before hiring a patent law firm.

LOOKING FOR A PATENT LAW FIRM THAT GETS RESULTS?

You’ve got a valuable invention on your hands, and you’re ready to make the right investment to protect your IP — you just need to find the right partner.

The team at Henry Patent Law Firm is always eager to hear from the next generation of tech innovators. Find out if we’re the right fit for your needs: Contact us now.