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Do your shopping: Not all patents are equal

Employ smart shopping tactics to the patent acquisition process


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Every three to 10 years, the average consumer embarks on the process of buying a shiny new (or new-used) car. There are many decisions to be made as to the type of vehicle, amenities desired or considered essential; and the buyer's budget. Considering price alone, there are few who would suggest there is no difference between a new Mercedes Benz S600 and used Yugo GV. And yet, when it comes to hiring legal counsel to write and file a patent application, many don't see the difference in hiring one attorney over another, shy of price.

In March 2017, the World Intellectual Property Organization (WIPO) reported that 2016 represented a record-breaking year for patent application. Moreover, the U.S. retains its No. 1 ranking for number of patents filed. That means more people and entities are creating more intellectual property that is potentially patentable than ever before.

Yet, patent seekers often don't dedicate the amount of time spent while car shopping to secure the best financial investment, as they do when it comes to patent acquisition.

One myth patent seekers often subscribe to is the notion that a simple online form does the trick. A patent, however, is a complex written document typically comprising anywhere from 2,500 to 7,500 words, and there are usually significant reasons why one attorney may quote a price considerably higher than another attorney.

Several factors affect the price of preparation and filing of a patent application:

1. The time the attorney intends to devote to the project

2. The attorney's level of experience and skill

3. The attorney's overhead.

Not surprisingly, for a similar level of experience, the attorney who spends more time writing and preparing the patent application is likely to charge more than an attorney who spends less. All other things equal, a $7,000 patent application is going to be more complete, more detailed and usually of much higher quality than a $2,000 patent application.

The more detailed and complete an application is, the more flexibility the attorney will have in working with an examiner at the United States Patent Office to gain allowance of a patent that offers reasonably broad meaningful protection to the patent holder.

Broader patents are more difficult for would-be copiers to design without infringing the patent. In contrast, hastily drafted low-cost patents are often narrow in scope and consequently very easy for copiers to design without infringing the patent. Over the years, I have seen patents written by so-called mills (firms dedicated to obtaining inexpensive patents over quality patents) that are at best wall decoration offering very little protection for the core aspects of a particular invention. 

Skill and experience are most often reflected in an attorney's hourly rate. A more experienced attorney can write a quality patent more quickly than a less experienced attorney. The amount an attorney can charge for his or her services is dictated by both market forces and the attorney's own perception of self-worth relative to other attorneys in the marketplace. Be wary of an attorney who claims his hourly rate is well below market for his/her years of experience. Usually, there is a reason. 

Even if you receive flat fee quotes to prepare and file your application, knowing the attorney's nominal hourly rate is instructive in determining how much time he/she intends to spend on your application, and it can give you insight into whether something may be amiss.

For example, attorneys with many years of experience who have abnormally low rates, attorneys that have high rates but charge relatively little to prepare an application, or attorneys who decline to share their hourly rate because the application is prepared for a flat fee should all cause one to raise an eyebrow.

Overhead can also have a significant effect on cost. High-rise downtown offices, personal secretaries, and a cadre of docketing, research and operations support are all expensive. The services offered by large firms are not without value to Fortune 500 companies that rely on the staff to manage their extensive patent portfolios. However, for the entrepreneur or small business with one or at most a handful of patents and patent applications, a large support staff only adds to the cost of an application without any significant benefit. 

If your purpose for obtaining patent protection is less about creating value and more about having a fancy plaque to hang on the wall, a low-cost patent mill will likely serve you well. Just as a Yugo is a car, a patent mill patent is a patent, but don't expect much from either.

If your company has an extensive portfolio of patent and patent applications that need to be managed and maintained, a large firm with a large staff is likely the better option. Just as with the Mercedes you will have all the bells and whistles at your disposal. The key is to pick a firm that best matches your needs.      

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Kurt Leyendecker

Kurt Leyendecker is a founding member of the intellectual property law boutique, Leyendecker & Lemire. Leyendecker & Lemire specialize in patents, trademarks and related complex civil litigation. Kurt Leyendecker can be reached directly at 303.768.0123 or kurt@coloradoiplaw.com. Visit www.coloradoiplaw.comfor further information, including Leyendecker & Lemire’s weekly blog, “Control, Protect & Leverage.” 

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