This morning an email message came in from a patent firm in a foreign country. The email message was from a patent firm that we have not worked with before. The email message told us that the patent firm has a client that filed a PCT application and is now interested in entering the US national phase. The email message said:
Therefore, we would appreciate if you please provide your fees with a breakdown of firm’s fees and government fees, and any other fee that the client would incur, from the filing to registration as soon as possible.
I will tell you what I wrote back to this patent firm.
First a bit of background. A first problem with inquiries of this general type is that very often, the inquiry is fishing for “reciprocity”, that is, a commitment that we will send back plenty of work to the patent firm. Sometimes the inquiry is very explicit about this. My personal view is that for me to serve one of my clients well, when I send my client’s work to some foreign firm, I should select the foreign firm because it does good work, not because it sends money to me under some “reciprocity” relationship.
A second problem with inquiries of this general type is that quite often the sender of the email is lazy and has not gone to the trouble of looking to see that our firm’s web site has a wealth of web pages detailing such things as “what things cost” and “what we need from you to carry out this task or that task” and providing fee schedules for various categories of work. Had the sender of the email bothered to look, it usually turns out that every question in the email is already answered on our web site.
A third problem with inquiries of this general type is that quite often the sender of the email seems to be interested only in being quoted a price, and seems to be oblivious to the notion that there might be a higher or lower quality of work provided depending upon the firm doing the work or other factors. It is simply a fact that some cases are bronze and some are gold. A corporate filer might file a hundred cases per year, of which maybe 95 are bronze and 5 are gold. If the instructing counsel were to speak frankly, he or she might say that from the company’s point of view, the bronze cases are the cases that are expected never to get litigated, and are to be prosecuted at the lowest possible cost consistent with just barely not committing malpractice. Meanwhile, if speaking frankly, the instructing counsel might say that the definition of a gold case for that company includes the notion that there is a goal of arriving at a patent that has the best possible chance of surviving attack in litigation, and with the best claims that can be devised by smart patent counsel. One assumes that if an email arrives in one’s in-box from a foreign patent firm that one has never worked with before, and if the email asks for nothing other than “what is your cheapest price?”, then likely as not, the case is a bronze case. But the email message invariably fails to come out and say such a thing.
A fourth problem with many inquiries of this general type is that often, the writer fails to reveal the application number of the PCT application that is the candidate for the US national-phase entry. This puts me in the position of wondering if the PCT application was poorly drafted and will require a lot of work merely to get it into shape for US national-phase entry.
Having provided this background, let me quote from the email that I sent in response.
Thank you [person’s name redacted] for your email message and for your interest in our firm. The brief answer is that we are unable to assist you with the task that you have inquired about. A more detailed response follows.
Oppedahl Patent Law Firm LLC (“OPLF”) has carried out this task of entering the US national phase leading to issuance of a US patent from a PCT some thousands of times for hundreds of clients located on every continent except Antarctica. OPLF thus draws upon substantial experience. You can see two books on Amazon that benefit from this experience:
- Oppedahl on PCT Forms and PCT Docketing
- The 2022 Schwegman Advanced PCT Training: the presentation slides
On a quick look in Patentscope it appears that the due date for US national-phase entry for your application [application number redacted] is probably [date redacted] which is a mere nine days from now.
It looks to me as though your client has asked you to make inquiry among several US patent firms with a goal of finding out which US firm will charge the lowest professional fees. I will save you some time by letting you know that there certainly are many US patent firms that will be glad to offer to carry out your work for professional fees that are cheaper than whatever we at OPLF would charge. I imagine that some if not most of the the other US patent firms to which you made inquiry on this client matter will quote cheaper professional fees than our firm charges.
Your email message also asks for a quotation of “any other fee that the client would incur, from the filing to registration”. By “registration” I imagine you mean the issuance of a granted US patent. We are unable to offer any assurance that any particular US patent application will actually proceed to issuance of a granted US patent. We are likewise unable to predict whether the path “from filing to issuance” will be smooth or tortuous and we are unable to predict the fees that would be incurred along such a path. We are thus unable to provide the information that you are asking for about the total fees that would be incurred.
We are best able to serve an instructing patent firm when we are working on a third or fourth or fifth application together, and by then it is easy for the instructing firm to have a good sense of what things will be likely to cost. By then we at OPLF sometimes reach a point of earning a profit on the work. Sometimes it works out that we are able to find ways for the two firms to work together in an efficient way, and sometimes we can pass along some savings to the instructing patent firm. What we find, however, is that when we at OPLF work with an instructing patent firm on a first or second application together, we usually lose money on the work no matter what professional fees we might charge.
Returning to your question about cost. We sometimes charge a professional fee of about $1200 for the work of filing papers for entry into the US national phase from a PCT application. The result of this work is that the client has a pending US patent application. At that point it is anyone’s guess how much money might need to be spent later to try to get that US patent application through the US patent office and to reach the point of obtaining an issued US patent.
It is necessary to file an Information Disclosure Statement disclosing any known prior art. This incurs a professional fee of at least another $200. I see that in this particular PCT application, the applicant and inventor are one and the same. So maybe in the US case, there might not be the need for an Assignment of ownership from the inventor to the applicant. (Normally such an Assignment would also incur a professional fee.)
You didn’t say whether the applicant in this particular case would qualify as a “small entity” for US purposes. This makes a big difference in the government fees that would be incurred. For now, assuming that the applicant would be a non-small entity, I can guess that the government fees incurred at the very beginning, merely to enter the US national phase and to reach the point of having a pending US patent application, would be at least $1660.
From all of this I can guess that in a very simple case the total costs incurred at the very beginning, merely to enter the US national phase and to reach the point of having a pending US patent application, would be at least $2880.
This is however not a simple case. As I say, it looks like there may be only nine days remaining before the last possible day for US national-phase entry. Our regular firm practice is to respectfully decline to take on a first piece of work with a non-US firm when there is very little time remaining before the last possible day. Sometimes we will agree to deviate from our regular firm practice and take on a first piece of work on a rush basis if we also charge a rush fee. The situation right now, however, is that all of our people are already committed to many tasks for existing clients during the next few days. I must let you know that in this case, we are not in a position to deviate from our regular firm practice of declining such work, even with a rush fee.
With all of this in mind, I must let you know, as I mentioned at the beginning of this email message, that OPLF is unable to assist you with the US national-phase entry task that you are asking about.
We wish you and your client the best in your search for suitable US patent counsel.
Oppedahl Patent Law Firm LLC
If this inquiry had come to your firm, would you have responded differently? Please post a comment below. Oh, and if you’d like to get in touch with this firm, drop me a note. Maybe they would like to retain your firm for the US national-phase entry!