A potential client will sometimes ask:
what’s your fee for filing a provisional patent application?
or sometimes the question will be:
what does it cost to apply for a provisional patent?
Or, by far the worst telephone call to receive in this general category is the potential client who cheerfully explains that he or she has prepared a draft provisional patent application, that the subject matter is “simple” and so the document should not require very long to review, and can I please just “touch it up” and file it with the USPTO? The caller makes clear that whatever bargain-basement price I would have charged to draft a provisional patent application, the caller expects me to quote a still smaller price to merely “touch up” the document.
When this happens, generally I politely refer the potential client elsewhere, but when pressed I will sometimes answer along these lines …
A first problem of course is that there is no such thing as “a provisional patent”.
As I say I generally try to refer the potential client elsewhere. This avoids having to spend anywhere from half an hour to an hour on a conversation that won’t go anywhere anyway.
But sometimes I feel compelled to spend the half hour or hour of won’t-go-anywhere talk time even though I don’t want to. Usually when this happens it is because the caller was a referral from a friend or relative so I feel I have to let them down gently rather than abruptly. In such cases, I tell the caller that the cost for our firm to prepare a provisional patent application will be the same as the cost for our firm to prepare a non-provisional patent application. Depending on the technology area, depending on whether the potential client will or will not fund a decent patent search and will or will not fund the work of drafting a patent application taking into account the references found in the patent search, the cost to prepare the patent application might be $8000 or $10000 or more.
I tell them that the work we would be willing to take on (if we pass the conflict check and if we somehow choke back our general preference not to accept an individual inventor as a client) is the preparation of a non-provisional patent application, and if the client decision is to file the document that was prepared to serve as a non-provisional patent application as a provisional patent application, then that can be the client’s business decision and we can file it as a provisional patent application.
Usually what happens next is that the potential client lets slip that he or she has been shopping around the work and has found a lower bidder. “I was quoted $1500” (a nearby firm in Longmont, Colorado) or “I was quoted $599” (a firm in Maryland that pays Google for its firm name to come up first place or second place in a search about provisional patent applications). The caller hopes, I guess, that in desperation I will knock down the quote to meet or beat the other firms. In which case I politely refer the potential client elsewhere.
When Congress changed the US patent law in 1994 to make it possible to file provisional patent applications, a perhaps unintended consequence was that large segments of the general public got the mistaken impression that by the mere filing of a provisional patent application, an inventor could postpone by almost twelve months the pesky business of figuring out exactly what the invention was, the pesky business of searching the relevant prior art, the pesky business of drafting claims directed to the invention that would somehow avoid the prior art found in the search, and the pesky business of capturing in words and figures all of the information that would be needed to enable someone skilled in the relevant art to practice the invention. All of these pesky tasks, an inventor would mistakenly imagine, could be put off for almost a year by the filing of a simple and (importantly for this discussion) a supposedly inexpensive provisional patent application.
Where did this mistaken impression come from? From many places. One contributor to this mistaken impression was the USPTO itself, which in 1994 and thereafter emphasized to individual inventors how inexpensive the filing fee was (back then, $80) and that the document filed would never be examined by the USPTO for its content or sufficiency of disclosure. The fact that the USPTO would never “reject” a provisional patent application for any substantive deficiency, and the fact that the USPTO emphasized this fact, probably contributed to the mistaken impression that a poor quality document could be filed and there would be no later negative consequence for the inventor.
The USPTO has done better in more recent years, for example reminding visitors to its web site that the provisional patent application will not serve its purpose if it fails to contain substantively all of the same things that need to be provided in a subsequent non-provisional patent application. But probably it is fair to say that no amount of outreach by the USPTO, no amount of outreach by inventor’s groups, no amount of outreach by patent practitioners (or by this blog!) will ever dispel the mistaken impression, held by large segments of the general public, that a provisional patent application capable of properly protecting an inventor’s legal rights, and capable of permitting the inventor to postpone meaningful legal costs by almost twelve months, will cost only a small fraction of what it would cost to prepare and file a non-provisional patent application.
What about “touching up”? Usually after I explain all of this, the caller takes my hint and says that he or she will go elsewhere for patent services. But what about the caller who has already prepared a draft provisional patent application and is looking to hear a truly bargain-basement quote for “touching up” the draft application?
At this point if I feel duty bound to explain the situation, I describe that if I am preparing a document from scratch, then I can keep in mind through the entire process what will need to be included in the document for it to be complete and to serve its purpose.
And I describe that if I am reviewing something that someone else wrote, then what I sometimes can accomplish fairly well is noticing things that the author included that are wrong or are incorrect. But for me at least, the task of reading something that someone else wrote, and somehow detecting that something important is missing… I don’t think I am always good at catching such omissions. If I were writing the document myself from scratch I would probably have thought to include the important thing, whatever it was. But reading what someone else wrote, and detecting that it should have been there but was in fact missing … for me that is not so easy.
So what I tell a potential client is that the professional fee to “touch up” a draft patent application that the caller wrote might well be as much as, or might be more than, the professional fee simply to sit down in front of a blank screen and write the patent application myself. I tell them that yes of course having the client’s draft document will improve the process of learning all of the things that the client has been thinking and hopes to communicate to me. And will probably reduce the risk of some important thing that the client hoped to communicate getting lost in the communication process. But that it is not particularly like to save money on professional fees.
What do you think about provisional patent applications? What do you tell potential clients about what it will cost for you to prepare and file one? I’d be grateful if you post a comment about this.
I’m one of those at the other end of the spectrum from you. I direct people to the USPTO website to see what the USPTO says about provisionals. Then I warn them that they must include EVERYTHING they know about their invention. I will then file what they give me, for no more than about $600.
This sounds rather like the “shovel provisional” that we will sometimes file as an accommodation to an existing client when time is tight and the invention is going to be disclosed the next day. We make a clear record with the client that we are not substantively reviewing the document but are merely “shoveling” it into the e-filing system to get it filed fast. The point of the clear record is that we don’t want to be blamed, years from now, if a patent examiner or a court decide that the provisional application was non-enabling or otherwise defective.
I feel your pain. I get the same calls.
EXACTLY. I have similar experiences myself. I once got a provisional patent application that the inventor had filed for a mechanical invention that had no drawings in it.
The worst call though is the one from the applicant who has filed his own provisional application 11½ months before and now wants you to make it into a non-provisional.
Agree with everything you’ve said, and I’m surprised that throwing the numbers at them doesn’t solve your problem more often. I would add that when it gets to the point that they tell me they’ve been shopping around, I tell them point blank that those other places sound like a good solution. And then say a prayer of thanks that I’m in a position where I can say no to clients I don’t want.
I recently had a client come to me with a nonprovisional application woefully lacking in a Section 112 description both in the specification and drawings. The claims, of course, were likewise poor. It was not worth being converted into a provisional application.
The most dreaded call for me is “I wrote it myself – will you review it.” I have found that I can almost always write the case more inexpensively than I can rework what the inventor has done. Moreover, the inventor is often annoyed when I rewrite their disclosure. Two reasons I almost always tell potential clients I am not interested in taking that kind of work.
When someone tells me that they can get a sub-$1000 provisional somewhere else, I ask them what they would think if they saw an advertisement for a brand new car for $2000. That often, but not always, gets the point across.
I will admit that I have done a couple of ultra-cheap filings when a start-up tells me they are disclosing the invention that day or the next (once they told me two hours before the disclosure and wanted to be able to say it was patent pending). However, I really question attorneys who actually recommend such filings or make them a part of their regular practice.
Great post. We sometimes point out that even a blank page is very likely to be accepted as a provisional patent application.
What we find almost more annoying than the scenario Carl described above are the clients who file their own Provisionals (to save cost … which will eventually cost them a lot more). Often as an unregistered e-filer, so they have no recollection a year later what on earth they uploaded, in terms of inventor/applicant details particularly. At 12 months minus a few weeks (if we’re lucky) they come and want us to file a PCT or other Convention cases. Often it has to be re-written … Nightmare!
Another source of the “provisional fallacy” were a the proponents of the AIA who said over and over “the [worthless] grace period under the AIA won’t hurt anybody because you can file a provisional for only $110 as a small entity.”
This disinformation was spread by AIPLA, IPO, ABA, 21st Century Patent Coaltion, David Kappos… I was at a meeting at the Small Business Adminstration where a representative of 21st C referred to the provisional fallacy to justify the AIA…
The patent bar was asleep at the switch. Why did we let our professional organizations get away with this nonsense? And how do we fix it?
I agree with Carl that the hardest thing in any lawyering is seeing what’s missing.
Another source of the “provisional fallacy” were the proponents of the AIA who said over and over “the [worthless] grace period under the AIA won’t hurt anybody because you can file a provisional for only $110 as a small entity.”
This disinformation was spread by AIPLA, IPO, ABA, 21st Century Patent Coaltion, David Kappos… I was at a meeting at the Small Business Adminstration where a representative of 21st C referred to the provisional fallacy to justify the AIA…
The patent bar was asleep at the switch. Why did we let our professional organizations get away with this nonsense? And how do we fix it?
I agree with Carl that the hardest thing in any lawyering (anything from patents to mergers to real estate) is seeing what’s missing.
I don’t recall seeing such an argument being made, but maybe I missed it.
Keep in mind that in today’s world it is a very rare company that can say in 2015 (and can be correct about it) that the company won’t ever need to pursue patent protection outside of the US. Such companies have, since decades before AIA happened, been in the position of having to make sure they get their patent applications filed chronologically prior to public divulgation of the invention. Such companies never had any “grace period” to lose.
If a potential client asks me early on in a conversation what it costs to file a provisional application (or any type of application), I often ask him what it costs to buy a car. Then I quickly explain that they can buy a car for $500 or $500,000. From this they start to understand that (1) you probably get what you pay for and (2) that without specifics, it is really hard to give a concrete number.
If a potential client asks me later on in a conversation what it costs to file a provisional application (or any type of application), I try to tie it to what he does for a living or their invention. For example, if he is a plumber, then I ask him what he tells his customers who ask them what it costs to repair a toilet. If he is a contractor, then I ask him what he tells his customers who ask them what it costs to add on a room. As with with previous scenario, potential clients will start to understand from this that (1) you probably get what you pay for and (2) that without specifics, it is really hard to give a concrete number.
I do think that you can charge less for a provisional application that is valuable. There are certain shortcuts that don’t reduce the value of the overall application. Sometimes I can use rougher drawings on a provisional than I would need on a nonprovisional. For example, a lot of clients have CAD drawings that wouldn’t be my first choice for a nonprovisional, but work just fine for a provisional. I don’t need to write the abstract or the summary of the invention (they are just variations on the claims anyway) for a provisional. I don’t need to be fanatical on reference numbers. (On a nonprovisional, for example, if there was a rod, I might give the rod a number, the axis a number, the first end a number, and the second end the number. For the provisional, I might just give the rod a number.) Taking all the shortcuts I can AND paying the lesser fee for the provisional can easily save $1500 to $2000 (and more if there are a ton of drawings). (And if a client is still developing the invention, this might not be a bad choice because then we can just add in the new subject matter.) The problem is that these shortcuts don’t reduce my fees “enough” for some potential clients.
As a solo start-up, I deal directly with the calls. When the conversation starts about other attorneys, firms or websites that are less expensive, I just explain that you get what you pay for and if their invention is important to them, they need to think about getting the best protection they can afford. When they tell me that they are starting to sell or in any other way make a public disclosure, I advise them about what rights they be forfeiting and how the clock is starting. When they still continue to negotiate, I advise them to follow the instructions on how to file pro se on the PTO website and start saving money so a real patent attorney can fix it.
Reminds me of the plumber who, when asked about his hourly rate, said: “Well, it is $40 normally, but $50 if you want to watch and $70 if you want to help.”