I’ve recently been examining the costs of prosecuting patent applications through to allowance in different jurisdictions on behalf of one of my corporate clients. What is clear is that for the same client, the costs of prosecuting different applications has varied widely, with one case recently being allowed with no office actions, and others having taken several rounds, two RCEs in the US and Appeals and continuations in Korea with no sign of progress.
Sometimes new clients, particularly entrepreneurs, want an indication of how long prosecution of an application will last and how much will it cost. I am unable to give much guidance and suspect that my more honest competitors can’t either.
I can quote a fixed sum for drafting an application once I have an idea of complexity, and for companies with large portfolios, I am willing to draft for a standard rate on the understanding that sometimes it is profitable to me as the application may be simple, and at other times, it is very time-consuming due to complexity. I can and do provide fixed price searches. After all, so does the PCT search authorities. One hopes that the cases which are knocked out over a cup of coffee by finding killer prior art that are highly profitable will, on balance, compensate for the cases that take a couple of days of searching and then, to make sure, I may even end up paying a search expert to do an independent supplementary search to give an additional layer of security.
Clients may desire filing applications without a search as a pending application can help raise capital, can deter competitors, and can be used for advertising purposes by advertising improved products as patent pending. If government or venture capital investors want to see patenting activity, applicants may file applications knowing that they have little chance of issuing. Novelty is absolute, but non-obviousness or an inventive step are subjective and sometimes we surprise ourselves that we manage to convince the Examiner that an invention is non-obvious and patent-worthy.
However, prosecuting pending applications is different. It is a two-way process with an examiner who may be intelligent or less so, diligent or lazy, strict or lenient, good or bad-tempered. I am aware that one can obtain statistics for individual US examiners regarding what proportion of cases are allowed with one office action, what proportion of cases require one or more RCEs (Requests for Continued Examination) and what proportion of cases never issue. I have never bothered to check these statistics. It is certainly not impossible that the Examiner is an idiot, an anti-Semite or both. However, examiners are supervised and can’t arbitrarily reject an application. Generally speaking, office actions are relevant, and the Examiner is correct to refuse the claims as drafted. Sometimes a clearer recitation of the invention will move things forwards. At other times, the requested monopoly may have to be narrowed. Sure it happens that sometimes examiners make mistakes. If the first citations are wrong and the Applicant explains why, in the Examiner’s next attempt they issues raised are usually relevant and need to be addressed carefully to make progress.
One client has a very colorful vocabulary that he uses to describe the cognitive abilities of the examiner, and sometimes of the associate or even of yours truly. We communicate by email, and sometimes in response to the written rant, I ask him if other than respectfully telling the examiner that he is mentally deficient, he has any other input for me to consider using in the response.
I have had patent applications allowed in Israel and in the US without any office actions whatsoever. It is a rare occurrence, but it happens.
Patent Attorneys are tailors. The better attorney can make a well cut suit with strong seams. However, the inventor is responsible for the quantity and quality of the material. If the invention turns out to have been invented by another or previously published by the inventor, there is little that the patent attorney with great advocacy skills can do to successfully prosecute the best written application.
Sometimes, one encounters formal issues only. Typos can creep in due to the pressure of filing in tight deadlines. On a recent occasion the Examiner wanted a comma changed to a semicolon and the words part 1, part 2, etc. removed from the bottom of the drawing pages relating to a flowchart that spanned several pages. Apart from that, he had no issues. Usually, however, the Examiner cites prior art against some or all claims and alleges a lack of novelty or that the claims are obvious.
Novelty is objective. The Examiner is either correct or he / she is wrong. However, since claims can be cancelled or narrowed by adding an additional element of feature, formal issues and novelty ones can usually be dismissed in a single round.
What is time-consuming, is where a combination of citations, possibly also combined with established case-law principles, is alleged to render claims obvious. Here there is room for legitimate disagreements as to what is obvious to the person of the art. The inventor, whose loved one is on the operating table, is rarely objective and often accuses the Examiner of being an idiot or worse. The Attorney is also blamed on the tried and trusted principle of shooting the messenger who brings bad news.
Clearly the Examiner and / or the Patent Attorney may be responsible for the impasse, but there are other possibilities that should be considered. Firstly, often the Patent Attorney can cobble together a claim that will be considered allowable, but many Applicants do not merely want a patent, but want a patent that stops competitors. Fighting for broad protection in a competitive field of endeavor will invariably be costly and may develop into a war attrition.
This is a major reason why fixed cost prosecution is not a good idea. If the Attorney is paid the same regardless of whether he/she compromises for an allowed fallback position or fights for maximum coverage, there is no incentive to fight. It makes more sense to inform the client of options and costs (or range of costs) for a particular action, and let the client chose how much he / she is prepared to spend or capable of spending.
It not infrequently happens that a client wants four or five narrow applications for different aspects of the same system or for different applications of the same general principle to create a family of patents. This is perfectly legitimate, but will invariably increase the costs of drafting and prosecution.
I have a number of clients that I’ve worked with over a number of years. I’ve noticed that sometimes the earlier applications are examined and allowed fairly smoothly and quickly but later applications become knocked out or bogged down. What has happened is that as the industry matures there are more competitors who face similar challenges and adopt similar solutions. The client may have a unique platform, but that may have been patented years earlier. When trying to patent an additional feature added to the unique platform the Applicant may run into his earlier patents combined with a competitors using the new solution. Where the company has a genuine breakthrough, sometimes with a radical new product or process, it can still be examined quickly and efficiently.
Some attorneys believe in picking up the phone to the Examiner. Others prefer to respond in writing. I suspect that this reflects how well the attorney writes and how competent he/she is at holding face to face interviews. The written record can work against one, but it is sometimes helpful to have the arguments clearly stated. One of my associates recently made great progress with the US Examiner in a telephone interview and they quickly came to an understanding of what was allowable. The problem was that they’d amended the main claim to exclude what the Applicant was actually doing and created a situation that a knock-off one for one copy would not be within the scope of the claims. We had to carefully instruct the Associate on what exactly we wanted, why, where it had textual support in application as filed and then had to have additional interviews with the Examiner and with the Examiner’s supervisor to get a claim-set allowed that taught away from the prior art the Examiner was bothered with, and which claimed exactly what the Applicant wanted.