Patent Attorney: Maximizing Your Patent Protection with the Right Attorney

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Patent Attorney: Maximizing Your Patent Protection with the Right Attorney

So, in order to safeguard your new invention, you want to engage a patent attorney. It might be for an innovative piece of technology you are building, such as AI, Blockchain, machine learning, IoT, or another.

You’ve already spoken with an attorney, but you weren’t sure if you were getting the correct counsel. IP attorneys typically charge hourly rates that are 50% higher than those of other lawyers since they are more expensive.

A patent is granted in around 3 years, with hot technology typically taking longer.

In 2015, there were 629,647 total patent applications filed, according to the US Patent and Trademark Office.  In general, roughly two-thirds of those applications will eventually issue patents, but the chances of doing so vary greatly, with certain technologies having a 10% chance of being successful.

All patent attorneys are not created equal, despite the fact that it may be tough to find one who will acknowledge it.  

Nobody can accurately estimate how challenging it will be to have your application accepted after submitting, and each round of appeal is pricey.  It may require 2-4 rounds of discussion, on average, depending on the field of technology, while some may require much more or much less time, with additional fees for each round.

In order to protect your interests, you should select the greatest lawyer who can grasp your innovative ideas and business requirements.

  • But how can you tell which firm or patent attorney is best for your invention?
  • Can you employ an attorney for your technology with any kind of background?

To begin with, you must appoint a patent attorney who has passed the patent bar exam and is authorised to represent clients before the US Patent and Trademark Office. For them to even be eligible to sit the patent bar test, they must have a technical background proven by a degree in science, engineering, or an equivalent.

By passing the same patent bar test and possessing a technical degree without also being a lawyer, a patent attorney is qualified to represent inventors pursuing their patents before the Patent Office. Patent agents can pursue your patent administratively but they cannot defend you in court or on appeal, so their assistance is relatively restricted.

How to Hire a Patent Attorney

Hiring a random patent attorney, however, almost always entails too much of a risk. There are a number of additional crucial elements that you must take into account, including

  • requisite technological background
  • Strategic direction
  • knowledge of patents
  • % of successes
  • Pace of patent application
  • Value as determined by total cost

Never hire a patent attorney without first getting a full price quote.

From the day an invention was originally filed for a patent, those rights may continue up to 20 years. And before a patent is obtained, it could take three years or longer. It is in your best interests to ask your patent attorney to provide a rough estimate of the charges you would incur throughout this entire period given the lengthy time spans.  

When an attorney says it will cost $10K for your patent, they usually forget to include the $2K government filing fee, the $4K per round of argument, the annuity fees of $7–13K, etc. Instead, they only include the cost of drafting the application without accounting for the argument costs, government fees, etc.

A more accurate response is $30–40K dispersed over the 20-year patent duration.

Before retaining their services, you should ask your patent attorney these questions.

  • How much does it typically cost to get a patent for my kind of innovation?
  • What strategies are employed to lessen or prevent turnover during the debate phase?
  • What is the cost curve over the entire process life?
  • Can you estimate the cost for this year and up until the patent expiration?

The cost of obtaining a patent for a discovery is unknown to most inventors, and you might be shocked to learn that basic technology is frequently more expensive to patent.

Typically, your total costs would consist of

  • Any optional search for patentability before drafting
  • expenses for solicitors to draught your application
  • Government filing charges
  • An estimate of the number of rounds will be included with the legal expenses for each round of the argument.
  • Government payments for discussions lasting more than two rounds
  • Various government and attorney expenses during the procedure
  • Governmental charges
  • after issuance, government maintenance fees
  • Additionally, each of these expenses, including the attorney fees, 
  • How sophisticated or basic the invention is
  • application type (provisional or non-provisional) for a patent
  • Some technological fields demand twice as much money for writing as others.

Simple innovations frequently require a fuller explanation of the underlying technology since the patent office prefers complexity over simplicity. This leads to the counterintuitive belief that simple innovations cost more to patent.

Similar distinctions between utility patent fees (non-provisional) and provisional patent fees are shown below.

  1. Fees for Filing Patent Applications Large Entity Small Entity Micro Entity
  2. Fees for Provisional Filing $280 $140 $70
  3. Utility Filing Fee ($1,720, $785, $430, non-provisional)
  4. Fee for Design Filing $960 $480 $240
  5. Filing Fee for Reissues $3,160 $1,580 $790
  6. Also read Five Techniques for Building an International Patent Portfolio: Foreign Patent Filing

The government fees for maintaining the patent’s validity after allowance, which accrue at 3.5, 7.5, and 11.5 years into the term of the patent and amount to $12,600 for a large entity, half that amount for a small entity, and half again for a micro entity, are not included in the above list.  

In order to help you prepare your finances before starting the patent procedure, a qualified patent attorney can provide you a detailed analysis of the projected costs over the course of your patent’s lifetime.

Do not be fooled by low hourly charges.

Although the actual analysis is more sophisticated, many IT companies and inventors choose to work with attorneys who have inexpensive hourly rates.  

Consider a situation where you have two solicitors, one of whom bills $250 per hour and the other bills $500 per hour. The increased rate frequently results in more efficiency, allowing for the completion of a superior draught in a shorter amount of time. Depending on the technological area and complexity (or lack thereof), both solutions commonly guarantee a writing cost of $8K–15K.

The decreased charging rate could appear advantageous, but this is a grave oversight.

You shouldn’t skimp on your patent application draught because it’s frequently the most crucial step in the procedure.

Regardless of hourly fees, the majority of attorneys charge within 20% plus or minus of each other while drafting a patent application.  

Usually, the superior draught from the more knowledgeable attorney will have less trouble getting accepted at the patent office.  

As the patent application is processed by the patent office inordinately quickly, the early savings from a less qualified attorney will cost you. Alternately, the errors in your patent writing could make assertion challenging or impossible, rendering the plan useless.

Billing rate is a consideration, but total drafting expenses, reducing churn, and having a patent that is enforceable are also crucial when making a choice.

While more expensive per hour, hiring a superior patent attorney is in your best interests and ought to be viewed as an investment in your intellectual property.

Similar to this, you shouldn’t just employ the first patent attorney who answers the phone when you call a legal office. These are typically the least busy and might not be the best choice for your patent lawyer.

Instead, locate the finest technology for your idea by asking a mentor for a recommendation or researching the company’s website. Don’t be afraid to get in touch with them; the majority of patent attorneys are willing to talk to you without obligation for around an hour.

Observe those who are most involved in the tech sector when searching for the best patent attorneys in your area of invention. Respected and seasoned lawyers frequently publish papers, give seminars, write articles, and speak at significant gatherings.

Look for an attorney who can innovate.

You are aware of how crucial it is to establish a product-market fit before growing the company.

Similarly, before allocating the low five figures for the patent filing, you should identify an innovation-attorney fit.

For instance, your AI startup is revolutionising healthcare by speeding up the drug discovery process by anticipating how molecules would interact. That is state-of-the-art AI.  

Therefore, you should employ a patent attorney with experience in AI and healthcare who is knowledgeable about the technology you are developing and can create a strong patent application.

A patent attorney that is slow to understand your technology is expensive and most likely does subpar work because attorneys bill by the hour.

Take yet another illustration.

You run a business that is creating a peer-to-peer securities platform based on blockchain that connects investors and issuers while cutting settlement times in half compared to current methods.

Now that the major financial institutions have already filed in this area, you would require a patent attorney with experience dealing with blockchain & financial services to rapidly comprehend your invention over what they should submit strategy if they do.

The point is that retaining a skilled, recognised patent attorney alone is insufficient. Efficiency depends on finding a lawyer who can grasp your invention immediately.

As a general rule, when vetting a patent attorney, ask yourself the following inquiries.

  • Does the patent lawyer have experience with the technology you’re working on?
  • How well-versed in your cases are they with the area of the patent office that examines them?
  • How many patents have they submitted in your field of technology, and what are the typical outcomes?
  • If you don’t have access to outside legal advice, can they explain the procedure in terms you can understand?
  • Are they qualified to describe the methods because they have expertise working with businesses of your size or funding cycle?

Advice: A lot of legal firms share information about their attorneys’ backgrounds in technology and their areas of specialisation. Additionally, you may view their LinkedIn page to learn more about their technical training, experience, and published papers.

Understand your Patent Attorney’s approach

You’d be shocked at how many businesses don’t have a well-thought-out patent strategy, which negatively affects their ability to succeed.

The cost of pursuing the incorrect patent strategy is more than the cost of recruiting.  

In the patent field, there is a popular joke that goes, “If you are going to ask your attorney on how many patents you should file, your attorney would ask how many can you afford.”

That is to say, they will be biassed in favour of a gold-plated strategy, limited only by your ability to pay for it. Risk aversion is common among patent attorneys.  

In addition, there is the clear moral hazard associated with any vendor who makes more money through an aggressive strategy.  

Attorneys might, for instance, submit patent applications in fields where the patent office rarely grants patents. Additionally, they might not take the time and effort necessary to create a patent application that will be approved quickly.

Your legal budget will be soon depleted by impossible patent odds with intense effort.

Tools for empirically predicting the possibility of allowing for various technologies are available. Triangle IP, for example, can forecast the possibility of permission, letting you know your chances of obtaining a patent.

Select a lawyer whose success rate exceeds the industry average.

The majority of patent attorneys perform at levels that are consistent with industry standards, yet successful attorneys are hard to find.

It is not unusual to find patent attorneys in complex technological fields who have far better allowance rates and require far fewer rounds of discussion with the patent office.

For instance, we received patents for a client’s business process over 90% of the time when the industry average was only 10%. This indicates that from a yield standpoint, others had to file 10 patent applications before one was awarded, but we only needed to file 1.1 applications.  

When preparing a patent and conducting each round of argument, the majority of lawyers are within 20% of one another in terms of expenses, but when yield is taken into account, the better performing attorneys will always be less expensive. So, success rate is important.

Although a good patent attorney would openly disclose success percentages, few customers will even inquire since they assume that all patent attorneys produce similar results. But the truth is different.

And this is where the Triangle IP tool can help you, not only by providing various metrics but also by precisely forecasting the success rate of your lawyer for your technology.  

We averaged slightly more than one round of deliberation for the same customer, and we were able to settle that over-churned case with just one additional encounter with the patent office.

The finest lawyers recognise the true problems and act promptly to correct them for speedy outcomes. For instance, meeting with the examiner is very beneficial but is infrequently done because individuals with worse statistics tend to favour paper arguments.

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