Before asking the question, I’d like to state some intentions to avoid answers going in the wrong direction.

  • This question is asking for advice on cost reduction/optimization
  • The purpose of the patents I want to pursue lies more on creating leverage during company valuations than on actually defending them on court (of course there’s a considerable overlap in quality requirements for these, but it’s still not the same)

If I want to patent an Idea for which a working prototype exists but no documentation has been created at this point and the ultimate goal is to have a US as well as a European patent issued, and the price-to-quality of the patent itself should rather correspond to a Ford Fiesta than to a Tesla X, then:

What is the most economical approach at reaching that goal?

Some considerations for example are on how to select the right patent attorney with my priorities in mind or whether to pursue the US patent first or the EU one? (I heard for example that it’s better to work on the EU patent first since they give more sophisticated feedback if the application is rejected than the US office does).

Any advice is welcome but please refrain from statements like “you shouldn’t try to safe money on a patent application” or “if you cut corners your patent may prove useless in an actual court case” - the latter possibility always exists.

  • 1
    This appears to be a question about business decisions not legal issues
    – Dale M
    Jun 21 '19 at 9:24
  • According to law.stackexchange.com/help/on-topic it is fine to ask questions regarding legal processes (which patent applications are) and are more on-topic here than legal questions about specific matters. Jun 21 '19 at 10:07

All patent lawyers everywhere are expensive unless they're you father or mother or uncle or aunt or son or daughter or spouse or you saved their life. Even cousins who are patent lawyers are expensive in the EU or the US.

Without regard to the quality of the end product, just getting through the patent process without a patent lawyer is very difficult. Skilled patent examiners vet applications and challenge any flaws. Maybe 5%-10% of inventors who try to do so without a lawyer (or a non-lawyer patent bar member) succeed in getting a patent issued, flawed or otherwise. Inter partes review of patents prior to litigation also makes it likely that a patent of any potential value would be challenged and invalidated by a competitor.

The economical approach is usually to find an investor to finance getting the patent via a patent lawyer in exchange for a share of any future royalties.

Thinking out of the box, it might be cheaper to enroll in law school part-time, take some of the relevant classes (e.g. legal writing and research, patent law, property, contracts) over a year or so, and then drop out and represent yourself without a lawyer in the patent process, than to hire a parent lawyer. Many inventors are smart enough to do that. Few are bothered to take the time to do so.

Along the same lines, you could pass the exams and take courses aimed at becoming a non-lawyer patent practioner (a.k.a. a patent agent) before the PTO. Again, maybe a year of opportunity cost and perhaps $25,000-$50,000 of instruction related charges.

  • Unless he already has the requisite undergraduate physics and math courses, he also needs to go back to college. Jun 25 '19 at 5:05
  • @GeorgeWhite Not uncommon qualities in inventors with something to patent, although, of course, we don't know about the particular case in question. Also, if someone is pursuing a patent agent course not with an eye to actually successfully becoming a patent agent, and instead with a goal of merely learning enough to represent himself or herself effectively, that doesn't matter.
    – ohwilleke
    Jun 25 '19 at 5:45
  • Of course patent lawyers are expensive and I don’t mind that. My question is about how the process should be tackled to minimize the time one has to rely on them in order to optimize cost. I have certainly enough spare capital for a few patents - but I want to get as many patents out of that spare capital as possible Jun 25 '19 at 7:47
  • Since the question is apparently not contemplating DIY patenting this is moot but to represent themselves without a USPTO registration they would need to be an actual inventor on all applications. Jun 25 '19 at 19:28
  • @GeorgeWhite Agreed.
    – ohwilleke
    Jun 25 '19 at 22:13

If there is a large market in the U.S. for the product you might just apply in the U.S. I would file several patents on various aspects of the invention in the U.S. A crude valuation might just count the awarded patents and pending patent applications. Quantity over quality. You probably know that it can easily take three years for a patent to issue. One way to spend money productively is to pay for a Track I expedited examination for one of your applications. It is just supposed to set the application to the head of queue but, statistically, they have a higher allowance rate.

Regarding Europe, the normally recommendation would be to file with the EPO. If they allow it then you get it validated in whichever specific countries you care most about. It might be better to just go directly to one or two countries. Germany plus the UK would be less expensive than the EPO.

You can save money by working with a patent practitioner that is a solo or at small firm; can save even more if you use a patent agent rather than a patent attorney.

Regarding filing in Europe to first to learn something before filing in the U.S. - Your patent practitioner will tell you that you only have a year to file everywhere from when you first file anywhere. One alternate approach is to file a PCT application, it gets you started in over 140 countries.

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