Here, of course with necessary redactions, is the gist of an email that I sent to a patent client today. The main point of the email message was to try to explain why the dollar amount of a bill was much smaller than one would normally expect it to be. There was also a second communications goal for the email, which is to explain how it is that we apparently are going to get an allowance essentially instantly from an art unit that has a First Office Action Prediction that is “pegged” at 30 months and in which the true number, if the USPTO were to be candid about it, is surely a much higher number of months than 30.
The context here is that we had received a first Office Action in a patent case involving difficult subject matter with quite a bit of electronics and some computer software. We had reported the Office Action to the client. We had received instructions back from the client. We then prepared a response to the Office Action, taking into account the client’s instructions, and e-filed the response at the USPTO. We then phoned up the Examiner hoping to smooth the way for whatever would come next. How much might all of this have cost? Depending on the detailed situation I can imagine a bill covering all of these tasks might well be anywhere from $3K to as much as $8K.
Oh and if a client had asked “how much more prosecution expense might there be?” one could easily imagine at least one more Office Action, with some level of expense. We have all seen cases where after that, an RCE is needed to keep things moving along.
Instead, this bill was about $1K. And the context here is that as I will explain, it seems likely that in this particular case, the entire patent prosecution cost, between the Filing Receipt and the Notice of Allowance, might end up being this $1K and nothing else.
So what did I say in this explanation to the client? (Again, understanding that I am redacting some stuff.) Here is pretty much how it went in my explanation.
Dear Client: In this email message I will explain why the attached bill is so small. I will offer some comment on this situation which looks like a nice situation. From my perspective what we see is perhaps three factors that help to explain this apparently nice situation.
The invention being patentable. I guess it is sort of easy to overlook this factor but when we see a situation where the company did not have to spend lots of money paying patent counsel to haggle with a US Examiner to arrive at agreement as to what is patentable and what is not, I guess what we should not overlook is the old-fashioned idea of the inventors maybe having invented something that is patentable. I will take as a starting assumption that this is part of what explains what is going on here.
A clear and usable inventor disclosure. (To the reader I mention that as it turns out, some of the inventors with this particular client are really good at writing clear and very usable inventor disclosures. Imagine what a joy this is for the patent lawyer!) What happened in this case is what has happened in quite a few previous cases as well. The inventors wrote up an inventor disclosure that communicated things clearly. Here the inventor disclosure reduced to a minimum the risk of my running down wrong paths, and helped me do my patent lawyering job as well as I could.
The company bankrolling the PCT path. The filing path that got followed in this case involved PCT filing at a very early stage in the filing process. This incurred somewhat higher up-front costs than a simpler US-only domestic filing path. On the one hand this led to the somewhat higher up-front costs, but then it gave us a preliminary indication as to patentability (the favorable Written Opinion from the Searching Authority) which in turn got us onto the Patent Prosecution Highway at the USPTO. And barring some surprise, this will have meant that we front-loaded some expenses and then this reduced some later expenses (such as today’s bill) to a very modest level.
(To the reader I will mention that of course I wish I could take credit for things going so well. Surely the reason things went well was that I wrote a brilliant patent application, right? But I simply must say how it is. Almost all of the happy situation in this case was from the three factors mentioned above.)
Nine days instead of 2½ years. As mentioned in an earlier email, this is an art unit where the USPTO says that it normally takes 2½ years for a case to reach an Examiner. I think that although the USPTO says the backlog is 2½ years, the true backlog is worse than that. In any event, it took a mere nine days for this case to pop to the top of this Examiner’s in-box, because it was on the Highway.
One of my tasks for yesterday was to telephone the Examiner to let him know that we had filed a response to the Office Action so that he would know that it is on its way to him through the USPTO workflow. (The response has to pass through a couple of intermediate steps that will take at least a couple of days.) I then did a little bit of schmoozing. (That’s a technical term in patent law, just so you know.) I sort of commented to the Examiner on the pendency in his Art Unit being so very long. He cheerfully explained that the technical subject matter for his art unit is actually extremely broad. It is:
measuring, calibrating, or testing (that involves data processing).
He cheerfully explained that this can be measuring, calibrating, or testing absolutely anything. He cheerfully described that the previous case before this one on his desk was measuring the ripeness of fruit, and the one before that was measuring something about pencil erasers. So anyway, because a patent application can end up in his art unit if it is for measuring absolutely anything, then this helps to explain why his art unit has such a big backlog.
I think this does mean that it is good luck for us that we had set up this case to be on the Patent Prosecution Highway, meaning that automatically it would rise to the very top of the pile of work for this Examiner.
So barring some surprise we are going to end up with a Notice of Allowance in an art unit that normally has a backlog worse than 2½ years, and the Notice of Allowance will likely be in hand within just a few weeks of when the case arrived at the art unit. The entire total domestic patent prosecution cost incurred during the time between the Filing Receipt and the Notice of Allowance will likely have added up to something like $1200 rather than a more typical amount of money. Almost all of this happy situation being due to the three factors listed above.
All of this is, I guess, a roundabout way of getting to one of my favorite topics, which is what a fan I am of the PCT-PPH. The client invents something (which I call “the light bulb lighting up over the inventor’s head”). In this case, the client I guess invents something that is patentable. The client then writes up a clear and usable inventor disclosure. We file it as a quick provisional. We write everything up as a PCT application, and we do not age it for 12 months. We try to get the PCT filed as promptly after the provisional as workflow permits. Yes of course this has up-front costs that are higher than simple US-only filing costs. And yes this accelerates some costs to be earlier than if things had been aged to 12 months after the provisional. True enough.
Next thing you know, the Search Report and Written Opinion arrive. Because of the ISA that the client picked, they show up right away. This particular ISA does not age them to “priority date plus nine months” the way some ISAs do. With this ISA, the ISR/WO may be in hand a mere six months or so after “the light bulb lit up over the inventor’s head.”
Now in this case, what we already know in hindsight is the invention was patentable. So you already know the ISR/WO was fully favorable. The standing instructions from this client have always been, if a favorable ISR/WO shows up, enter the national phase and file PPH papers, all before the sun sets. So of course that is what we did.
And eventually the Filing Receipt showed up, and the case went to the art unit, and it landed on the desk of an Examiner, and nine days later we received our Office Action. This happening in an art unit where normally a case will languish for more than two and a half years before it maybe reaches the desk of an Examiner. But in this case, we have an Office Action that basically says “do this and this and you can have a Notice of Allowance”.
So the Examiner is happy, the client is happy, everybody is happy.
All because of the three factors above.