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.