The High Value (and Cost) of Patents pt. II

This a follow up post to last week’s “High Value (and Cost) of Patents”, which you can read here.

Another reason patents can be expensive is that they require a lot of one-on-one time with the patent attorney. A good patent attorney is going to work with the inventor every step of the way.  It is not like you are going to submit a form and the patent attorney does the rest.  It is a back‑and‑forth process.  The attorney will draft the patent and send it to the client with questions since the attorney will not understand the invention as much as the client does.  The draft will be edited and revised several times.  Due to the complicated nature, many drafts will be necessary with the inventor adding, deleting, modifying, and correcting the drafts.

A good patent attorney is going to work with the inventor every step of the way.

Once it is completed, the patent application is filed.  At least a year or a year and a half will have passed, at which time, an “Office Action” will be issued.  An Office Action is a rejection in which the Patent Office states the reasons for the rejection, which may be obvious in light of other inventions or could be the same as another invention.  At that time, the inventor is given a period of time to respond to the Office Action.  Almost every patent is initially rejected with an Office Action.  This is another part of the patent process than can be rather costly.

How is your patent different?

The Patent Office will give you a list of patents and you have to argue with the examiner exactly how your invention is different than the existing prior art.  Throughout that process, you can receive more than one Office Action.  The downside is that your patent may become a more narrow with each Office Action.  That means you may be adding claims each time in order to narrow your invention so it doesn’t infringe on someone else’s patent.  It is a difficult process working with the patent examiners in order to explain to them and make them understand how exactly your invention is different than existing patents.  I have seen a lot of people lose claims which I thought they should have been able to keep, essentially because the examiner at the USPTO did not understand what the inventor was talking about.  It is a very complicated process, and a good practitioner will be able to communicate with the examiner and hopefully help the examiner understand what they are trying to get and why their invention is not infringing on another invention.

Why a patent is well worth the investment

While the initial cost of patents may seem high, you can always find news reports in which a company has been sued for patent infringement, and you will see that it is worth the cost to obtain a patent in many situations.  You will see large companies like Apple being sued for patent infringement, even though they have teams of specialized patent attorneys who only work software, semiconductors, etc.  Even they sometimes infringe on other people’s patents.  And we are talking about hundreds of millions, if not billions, of dollars in some of these cases.  Obviously, a small inventor, especially here in New Mexico, is not necessarily going to be dealing with lawsuits of that nature, but you never know.  If you are a company that is creating some kind of small mechanical device, you do not know what that mechanical device could be infringing.  For example, a car would not be patented, but there are dozens, if not hundreds or thousands, of individual patents on each component of the car.  It could be anything from the mechanism in the latch of the door to the air conditioning control system to a regulator on the engine.

So an inventor could have an invention on a small item that he or she thinks nobody else has, but that individual item could infringe on an existing patent that was not foreseen, such as a single item in a car, resulting in a lawsuit by the car manufacturer.  Some very big verdicts are coming out of patent infringement lawsuits.  Large companies take these cases very seriously and, even if you are found to be innocent of patent infringement, patent litigation can cost you hundreds of thousands of dollars to defend.  Most small businesses are not going to have the money to fight such a lawsuit.  Therefore, you really want to do your homework up front to ensure that your invention will not infringe on another’s invention.  At the very least, even if a company decides not to patent its product, a prior art search is necessary to ensure that the product will not infringe on another’s patent.  Consequently, all companies that have any kind of invention should consider patenting it.  As I said though, it is definitely worth the cost to safeguard your invention, and it adds tremendous value to your company.

Should you attempt to write your own Patent?

Lets talk about that next week in a follow up post. If you are itching to get started on a patent of your own, please feel free to contact Kameron Kramer at (505) 246-2880 or email him through our Contact Us page.