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Protecting Innovation:Strategies For Reducing The Costs & Improving The Quality Of Your Patents

Date: 11/7/11

The ideas and products that spring from a company’s research and development efforts are often the company’s most valuable assets.  These assets and the investment in innovation can be protected by pursuing U.S. and foreign patents.  Unfortunately, the cost of preparing patent applications can be substantial.  Applications for relatively simple inventions can cost in the range of $5,000-$7,500 to prepare and file.  This article provides tips on information that a company can compile and provide to the patent drafter that can reduce the cost of drafting a patent application while also improving the quality of the application and the protection obtained for the invention.

Not So Fast My Friends
After months or years of development of a new product and incurring the associated costs, a company reaches where the point the product launch is on the foreseeable horizon.  The product may be new or an improvement on an existing product, but it will provide an additional competitive advantage over the competition.  To protect this valuable asset, the decision is made to pursue patent protection.  Before talking to a patent attorney, the company can invest a little more time and compile information that would otherwise be gathered by the patent attorneys at their billing rates.  Reducing the attorney time reduces the cost of preparing the patent application, and the information provided can improve the quality of the application and the company’s return on its investments in the product and the patent.

State of the Art and Problems Addressed by the Invention
Every patent application begins with a Background of the Invention section describing the state of the art in the relevant technological area of the invention, and how the current products fail to meet the needs of the consumer.  The inventors of the product typically know more about the market and their competitor’s products than the patent attorney, as well as the problems with the existing products that are addressed by the new product.  A written summary of the current state of the art provided by the inventor assists the patent attorney in drafting the Background section and helps the attorney identify the key differences in the new product that may be patentable over the existing products.  The summary does not have to be an exhaustive analysis of all prior products, but should provide information on the most relevant products for the attorney to understand the technology and to only need to ask a few follow up questions for a complete understanding of the problem solved by the invention.
In addition to the summary, any relevant patents, or technical and marketing publications, describing competing products that are known to the inventors can be provided to the patent attorney as well.  It is more common today for competitors to search for patents on their competitors’ products due to the availability of online patent searching on the U.S. Patent Office website, Google Patents and similar sites.  The patents can further show the patent attorney what exists in the market and what aspects of the new product may be protectable by a patent.

Description of the Invention
The Detailed Description section of a patent application focuses on the new features of the product that solve the problem or fill in the gap identified in the Background section.  The inventors should provide as much information as possible about the new product so that the patent attorney can develop a complete description of the product and the improvements that distinguish the product over previous products.  The inventors are the experts on their invention and, if patentable, their innovation by definition is new.  Consequently, the patent attorney must rely on the inventors transferring their knowledge of the product.

A good written summary of the invention is helpful, but most often demonstrative information can save hours of attorney time in understanding the invention and preparing the patent application.  Drawings or sketches prepared during the design of the product or specifically for assisting the patent attorney help the attorney understand the invention and are often used as informal drawings in lieu attorney-prepared drawings.  Schematic and flow diagrams showing process flows and decision logic for electrical and electro-mechanical products are also readily transformable into application drawing figures.

In addition to the description of the product, comparative test results and other test data showing that the new product is an improvement over previous products or solves the problem in the prior art should be provided if available.  In addition to enhancing description of the invention, the data may be helpful in establishing that the improvement is more than an obvious modification of the prior products.

Alternative solutions to the problem, such as earlier prototypes and non-commercialized designs, should be considered for disclosure to the attorney.  The alternative concepts may have value in the patent application in terms of broadening the scope of protection that is obtained and precluding competitors from selling or patenting designs that the company developed but did not market or claim in the patent application.  Disclosing the additional embodiments may add to the cost of the patent application, but they may provide future benefits by keeping competitors out of the market or generating revenue from the patent through licensing or selling the technology.
Commercial Activities

A U.S. patent application must be filed within one year of the first public disclosure, use or offer for sale of the invention.  For most foreign countries, a patent application must be on file before the first public disclosure.  Consequently, it is important to closely track the dates of prior or future disclosures to avoid compromising the company’s patent right.  Tracking the disclosure dates is also important to allow sufficient time to draft the patent application for the invention.  Generally, patent applications are drafted and filed within approximately two to three months from receipt of the disclosure information from the client.  With rush applications up against in impending filing deadline, there may not be time to thoroughly develop the disclosure, to consider alternative embodiments and refine the claims to capture the broadest possible scope of protection, and to insure that critical details of the invention are not missed.  Last minute situations are unavoidable, but timely delivery of the disclosure information to the patent attorney will result in better quality patent applications and protection of the company’s innovations.

Patent applications require a substantial investment for companies in addition to the costs of developing their products, but the companies can reduce the additional investment while increasing the return in the form of patent protection by providing detailed disclosure information to their patent attorneys with sufficient lead time to fully develop the patent application.

Written By:
Scott Baxendale
Miller, Matthias & Hull LLP