I suspect that I am not the only Patent Attorney whose local clients complain about the bills. Particularly when we simply report some development from abroad.
I have a well-liked, good client, who gives us trademark, design and patent work, and some enforcement as well, and who regularly refers potential clients, that generally result in pro bono one-off meetings, but one may be a useful lead.
He recently moaned about the associate’s fee and our fee for correcting some figures in a design application.
I responded by listing the activities that my office has to perform with regard to every development:
- Receiving notice of the development
- Querying costs of responding
- Looking up exchange rates and filing date
- Reporting to client
- Receiving client’s authorization to proceed
- Instructing client to proceed on behalf of client
- Receiving report of response and invoice
- Billing client
- Receiving payment
- Paying the associates invoice by filling out forms, visiting bank, etc. making declarations that we are not money laundering
These ten items are the minimum.
Sometimes we need clarification before we can report to client.
Sometimes we also have to send reminders to client and / or associate.
Sometimes the client phones or emails wanting a clarification.
Even if the client is simply moaning, one has to respond and that also takes time.
Sometimes the associate runs a draft response past us for our approval. This adds additional exchanges.
With substantive office actions, we may spend hours reviewing prior art and case-law and creating arguments. These may need translating into Hebrew for client, or client’s instructions may need translating into English for associate who may then have to translate to local language such as Korean, Japanese, Chinese, etc.
Is it any wonder, that we charge a minimum of an hour’s work for every iteration? With 10-15 actions, things do take at least an hour. Of course some actions can be delegated to paralegals and secretaries, etc. but then one incurs supervision costs and additional hands and so there are internal transactions that take up more time, albeit at lower cost.
Although the Madrid Protocol can help lower trademark costs, and PPH and the like can lower patent prosecution costs, IP services are and will remain expensive for the foreseeable future.
Unfortunately, statistically over 90% of patent applications do not bring in any income to the Applicant and with the benefit of hindsight, should not have been filed. Obviously some inventions are more promising than others, but I’ve seem really good ideas become obsolete due to competitors inventing a better solution.