What is a useful guide for determining your patent budget?
The path to getting a utility is typically filled with challenges. According to this Yale study, nearly 90% of utility nonprovisional patent applications will receive at least one rejection. Almost half of utility patent applications will receive multiple Office Actions. The patent process can get quite expensive as response costs add up. So how do you determine how much money to spend on getting a utility patent?
Need to file cost-effective patents? Contact US patent attorney Vic Lin at vlin@icaplaw.com to explore working with us.
How can a patentability search help you figure out how much money to spend on a utility patent?
A patentability search can help identify potentially novel features of your invention. Also known as a novelty search, the goal of a patentability search is to find out whether key features of an invention already exist in the prior art.
If so, then your utility patent application will need to describe and claim additional features in order to improve your chances of an allowance.
If not, then you might have a shot at getting broader claims. Recognize, however, that USPTO patent examiners can and often will find additional prior art references that were not uncovered in your patentability search.
In either case, the prior art search results will provide helpful insights on the length and expense of the patent process. When the prior art is crowded, expect a higher probability of rejections. Furthermore, any allowed claims will likely be narrower in scope.
How does a patentability search relate to your patent budget?
Suppose the results of a patentability search on your invention show that the prior art is not crowded. Such promising results do not automatically mean that you will get a broad utility patent at a lower cost.
You may still encounter multiple rejections, especially if you are dealing with a stubbornly difficult examiner. The issue is whether it is worth fighting for the broader claims when the prior art does not show your invention.
While a patentability search cannot tell you how many Office Actions you might get, it can provide some guidance on the scope of claims worth fighting for.
How can examiners reject your patent application even when the prior art does not show your invention?
Patent examiners love to reject claims using an obviousness rejection. For example, suppose you want to patent a product with three key features, ABC. Your patentability search results show prior art patents that show AB, but not ABC. So you file a utility patent application with an independent claim reciting ABC.
Let’s assume the USPTO examiner cannot find a prior art reference showing those three features. Instead, the examiner finds a first prior art reference showing AB and a second reference showing C. Guess what happens.
The examiner will combine the two prior art references to arrive at your claimed invention. They take the AB shown in the first prior art reference and combine it with the C shown in the second reference to arrive at the ABC recited in your independent claim.
Should you respond to a first patent rejection?
Since 90% of utility patent applications will receive rejections, it would likely make sense in most cases to respond to at least the first rejection.
Why? Because it would not make much financial sense to invest in a utility patent application hoping it will fall in the 10% of cases that receive an approval without any rejections.
How much money should you spend fighting multiple patent rejections?
The question of whether or not to continue the battle will depend on a few factors.
First, how close are the prior art references found by the examiner? Are you dealing with lack of novelty rejections, obviousness rejections or both?
Second, how reasonable is the examiner? If your patent application has encountered multiple Office Actions, you might consider having your patent attorney hold an Examiner Interview to see if some progress can be made.
Third, would it make sense to file a CIP application to add certain features? Should you file a child CIP application instead of responding to the Office Action in the parent application?
Are you willing to narrow the claim scope to reduce how much money to spend on getting a patent?
Generally, adding more features to an independent claim will increase the chances of allowance. However, there is an inverse relationship between the chances of allowance and the scope of infringement.
When you add more features to a claim to try to get it allowed, the scope of the claim narrows. That makes it easier for competitors to design around the claim and avoid infringement.
What is the scope of the claims you are fighting for?
The value of a utility patent lies in the scope of the claims. If you have to make the difficult decision of whether or not to continue the battle, understand the claim scope that you seek.
Need help with patents? Contact US patent attorney Vic Lin at vlin@icaplaw.com to explore how we can help you get patents that make an impact on your business.
