7 Ways to Save Thousands of Dollars on Patents and Legal Fees

by | Oct 18, 2016

Before you consider applying for any form of intellectual property, you need to understand the game that’s being played. How are you going to establish perceived ownership over your innovation? What’s your strategy? We have a lot of tools to choose from in our arsenal, and patents are one of them. Unfortunately, many of the inventors I encounter file patents out of fear, and not because they’ve made a calculated business decision. The best thing you can do for yourself is to learn what these tools are and how to use them. Not knowing the process will result in you being at a disadvantage. So, don’t panic. Slow down.

Most patent attorneys I’ve met have loved my ideas. But I don’t really care about patents. I care about protecting innovations that are going to make money. Don’t waste your time patenting an idea that is never going to see the light of day. Don’t make the mistake of asking an attorney for business advice, either. You’re the businessman. The best advice I have ever received from an attorney is, “Protection is easy. The hard part is selling.” What I’m saying is, it’s up to you to determine whether or not your idea has market potential. The easiest way to save yourself thousands of dollars is to do your homework up front! Don’t forget that speed to market, excellent customer service, and strong distribution are also forms of protection. Even large, powerful companies struggle to crack down on copycats.

Start forming your IP business strategy after you have determined that your idea does indeed have market potential. If you’ve innovated a simple idea, an idea you believe is only going to be on the market for a short while, consider filing a provisional patent application, a trademark, and trade secrets. Obtain a URL while you’re at it as well.

But, what if you stumble upon a big idea? You’ll need a wall of protection to effectively claim it as yours. Remember: You have to be the expert. Your job is to supply the attorney you hire with all of the information they need to draft your patent application. So, you must be the one who thinks about workarounds, who thinks about other materials and manufacturing processes that could be used. That’s your role, not theirs.

A patent can easily run you between $10,000 and $20,000. To keep costs from escalating out of control, do the following.

1. Communicate as much as possible using email. For example, before each of our discussions on the phone, I make sure to set an agenda in print. I don’t want to make small talk! When it comes to attorneys, time is money. Email is more efficient.

2. Hire an attorney who has successfully worked with patent examiners. A patent examiner has rejected every single patent I’ve ended up receiving. Yes, you heard that right. (I have more than 15 patents.) The process works a little something like this. A patent examiner rejects your claims, most likely due to prior art. Then it’s up to your attorney to convince him or her that your claims shouldn’t be rejected. It’s a painstaking process–one I could barely stand. Your attorney has to be able to work with the examiner to get your patent issued. In other words, he or she has to have the right temperament.

3. Always have a budget in mind. Before you hire an attorney, ask him or her what getting the patent issued is going to cost you, including office actions. If the project goes over budget and you have a quote, he will adjust it. Make sure your patent attorney knows you’re on a budget. Ask him what you can do to reduce the overall cost. Understand his billing practices. How does he charge? Hourly? By the half-hour? Etc.

4. Each time you receive an invoice, look it over carefully to see whether any mistakes have been made. You never know.

5. Read some of the patents he has written. Do you understand what the claims are saying? If you don’t, that’s a problem. I learned the hard way that the only way ownership is ever truly determined is in a court of a law. If you don’t understand what the claims are saying, there’s a good chance a judge or jury might not either.

6. Be prompt. If your attorney asks you for something, provide him with it as soon as possible. On that note, make a point of filing your office actions on time. Filing an extension is an option, but doing so will cost you.

7. Consider hiring a patent attorney who belongs to a smaller firm or an independent practitioner. They are more affordable than big firms. Firms in smaller, less populated states will be more affordable than those located on the East and West coasts. After all, it’s not as if you’re going to have to meet your attorney in person. I rarely have. However, I have never regretted hiring a powerful firm, because I did end up going to court to stop a company from infringing. The lawyers who wrote my patents had litigation experience, which certainly came in handy. They knew exactly which words to use. And going to court is ultimately a big battle of words.

I love my patent attorneys. They’re my best friends! I need them. But from time to time, we experience conflict. Your attorney will try to protect you the best that he can, but he doesn’t always know best. Remember: You’re in charge.

Originally published on Inc.com April 28th 2015.

Author

  • Stephen Key

    Stephen Key is an award-winning inventor, renowned intellectual property strategist, lifelong entrepreneur, author, speaker, and columnist.
    Stephen has over 20 patents in his name and the d...