Here are my answers a few of the most commonly asked questions by clients and potential clients. The material posted here does not constitute legal advice and absent an engagement agreement between BSTZ and any other person or entity, legal representation should not be assumed or construed.

Corporate Clients:

Our corporate clients tend to have much larger portfolios, commonly utilize multiple firms to service their patent portfolios, and ask that we conform to their “Outside Counsel Guidelines.” This section is directed to such clients. If, however, you are interested in retaining BSTZ as IP counsel, then give me a call and I will come visit you at your location to answer whatever questions you have. Based on your technology area, I may also bring one or more colleagues with relevant technical expertise. We would welcome the opportunity to introduce ourselves and pitch our value proposition.

Will you participate in a competitive bidding process and/or respond to a RFQ?

Yes. We are happy to participate in such processes before entering into a formal representation agreement, but only after completing a conflict check to ensure our potential representation would be permissible and proper.

How and when are services billed?

We bill for services upon project completion or at major milestones (e.g., upon the filing of a new application, upon the filing of a response, upon the submission of an Appeal Brief, when a Foreign Associate files in their jurisdiction, etc.). General litigation support is typically billed out monthly unless other milestones are established. We can invoice you, use pre-approved purchase orders, or submit through your existing e-billing system. We are happy to accommodate just about any system and billing practice that you request.

We have an established cost schedule for patent prosecution items. Will you adhere to our cost caps?

Yes, of course. We can tell you well in advance whether or not we can accommodate your cost schedule and billing caps. Some of our corporate clients use caps based on the action (e.g., new patent, reply to OA, Appeal Brief, etc.), while others have us bill a fixed fee, and yet others ask that we bill straight hourly per matter. Some clients ask that we cap matters inclusive of all USPTO fees, others ask that we cap for attorney fees and list USPTO fees separately. We are happy to accommodate whichever billing practice you prefer.

Generally speaking, new patent filings will cost between $10,000 to $12,000 plus USPTO fees and Office Actions will cost between $2500 to $3000, plus USPTO fees. Multiple related cases can reduce the cost slightly. For large projects with multiple inter-related patent filings (e.g., for a new product roll out or acquisition of another company with still-eligible IP) we can negotiate a total budget ahead of time or simply maintain a per-app budget, whichever you request.

Please also keep in mind that we will not charge you for incidentals, such as travel, paper, postage, docketing, reporting, etc.

Who will manage the portfolio and who is our contact?

I will personally manage the portfolio and I will be your contact for questions regarding the portfolio. Obviously we have billing support personnel, docketing support personnel, foreign filing personnel, and so forth, but if I manage your portfolio on behalf of BSTZ, then you may always contact me directly and I will facilitate any inquiry that you may have.

For larger volume portfolios, we will form a team to service the portfolio, in which case we can arrange to have the individual attorneys communicate with you directly or I can remain as the single point of contact for all matters, based on your preference.

Can you help us establish a framework for our IP portfolio and idea submissions?

Yes, of course. We can help you establish appropriate employment agreements with language protecting your IP rights, we can help you establish an invention submission and review process, we can help you formalize employee submissions with appropriate templates, we can help you craft employee honorariums for patent submissions to encourage disclosure and innovation. We’ve seen it all. Just ask and we can help you get the appropriate procedures in place.

Small Business Clients:

This section is for our small business clients including individual inventors. We understand that you have limited exposure to the patenting process and may therefore require extra guidance and counsel specific to your particular needs. We enjoy participating in the growth of small businesses and are more than happy to assist in such a process.

Don’t hesitate to give me a call with your specific questions. However, below I have provided answers to some of the more common inquiries that I receive.

Can you give me a ballpark estimate to prepare and file a patent application?

Yes. I would estimate between $10,000 and $12,000 in attorney fees to prepare and file a typical software patent application, plus USPTO fees. Simplistic (non-software) applications will cost between $6,000 and $8,000, plus USPTO fees. This will get you a comprehensive application professionally prepared and filed with the USPTO. You can find all USPTO fees listed at this link. USPTO fees for a new application will range between $1200 and $2800 depending on entity size and claim counts. I can quote you a single flat fee price inclusive of all costs and fees if that is your preference.

If you need multiple patent applications filed at the same time or in close succession, then we can typically benefit from economies of scale and reduce the estimate slightly, especially if the applications overlap as to subject matter. Also, I am happy to work with a hard budget cap that is inclusive of all fees so that you have a firm grasp on exactly what you will be billed. Agreed caps would, of course, be in line with the above estimates.

That sounds awfully expensive. Does it have to cost that much?

No, it does not. You can prepare and file a patent application yourself for very little. This is called filing pro se, and there are books and materials on-line that will explain precisely how to do so. You may also seek out “patent agents” who may be less costly than a “patent attorney” or you may seek out other law firms, some of which will prepare and file an application for you at a lower cost, others at a higher cost.

What happens after I file?

You wait. The USPTO has a massive backlog of patent applications and new applications will typically wait three years before being examined. Some technologies take less time, some take more time.

What is “patent prosecution?”

Patent prosecution is the process of working with the USPTO to get your patent application allowed and issued as a patent.

Preparing and filing a patent application does not get you a patent. It only means that you have a patent “pending,” by virtue of the fact that you filed an “application” for a patent. The USPTO will examine your application and almost assuredly, reject it. The USPTO represents the public’s interest and they seek to ensure that you do not claim as your own, anything which rightfully belongs to the public domain. For these reasons, they take an adversarial position and will look for reasons to reject your patent application.

The rejections come in the form of an “Office Action” from the USPTO, and they can look and sound overwhelming. Part of what I do for clients is argue and negotiate with the patent office to advance a patent “application” to an issued “patent” with enforceable rights.

How much does it cost to “prosecute” a new patent application?

It’s highly variable, but I can give you averages. As a general rule of thumb, whatever you spend to prepare and file the application, you should budget about the same amount to prosecute the application. So for a typical software patent, you would expect to pay $11-13K to prepare and file with fees, and then another $10-13K to prosecute the application to issuance, with fees, but not including the USPTO’s “maintenance” or “renewal” fees which are paid after the patent has been issued at 3½, 7½, and 11½ years. Thus, I advise clients to budget approximately $20-$26K in total, on average, over the course of about 3-5 years.

• Simpler patent applications cost less to prepare and prosecute, more complex patents cost more;
• Sometimes patent applications very quickly advance to issuance with little argument or negotiation, thus drastically reducing the cost to prosecute them;
• Sometimes patent applications become embroiled with problematic references, multiple iterations of argument and amendment, appeals, etc., which, of course, increases the cost to prosecute an application through to issuance.
• For continuations, divisionals, and CIPs, I would estimate about half of the cost of a “new” application to prosecute through to issuance.

Can I give you a legal interest in my patent or future profits in lieu of payment?

No. Others will do this, but I will not.

Can I write up the patent application using a template and then pay you to review and file?

No. Others will do this, but I will not.

I just need a “provisional” application and I have all the materials ready. Will you file it?

No. Others will do this, but I will not unless you are an established client of mine.

How many patent filings does your typical client have?

It’s a bit of an odd question to me personally, but I do get asked this question quite often. Nonetheless, dozens of filings for a single client is most typical. Generally a team with appropriate skill sets will handle such a portfolio within the firm on behalf of the client. I have several small clients with only one or two patent filings and that work is not divided. Our firm also represents several large institutional clients with many hundreds and sometimes thousands of patent filings. These large client portfolios tend to span multiple law firms.

I heard the patent office does not allow “software patents?”

That’s why you hire a qualified patent attorney with expertise in software patents. There is an ongoing controversy at the USPTO with respect to so called “software patents” as well as many other new technologies. The law in general has difficulty keeping up with change, be it technological innovation or societal changes, and the USPTO is no different. I can counsel you on these matters and prepare a patent application that is well suited to survive scrutiny by the USPTO Examiners.

You don’t talk, look, or act like a normal attorney. What’s going on?

I am not a “normal attorney” nor are most patent attorneys you will meet. To become a registered patent attorney you must have a science based undergraduate degree or coursework as well as a law degree. To be frank, most engineers and scientists find the idea of returning to law school and arguing about constitutional constructs, civil rights, contracts, and other legal doctrine simply abhorrent. It is a necessary evil to become a patent attorney. On the flip side, most law students assuredly do not have science based undergraduate degrees, and thus, simply do not qualify to practice law as a patent attorney which has special requirements beyond that of other “normal” attorneys.

When you discuss your innovation with a patent attorney, some of the time will be spent discussing the law, your legal rights, legal obligations, etc. Another portion of the time will be spent discussing highly technical nuance specific to your innovation necessary to document and support your patent application.

This dichotomy results in patent attorneys that more often that not, have anything but “normal” professional backgrounds compared to other attorneys.

I personally worked in various engineering roles at high-tech manufacturing companies for many years. Because of my technical background, I am well at home discussing pseudo code, programming constructs, scripting, GUIs, cloud computing, database techniques, networking, and so forth.

Do you really have five kids?

It is simply amazing how often I get asked this question. Yes. I do. Three girls and two boys.