Rethinking Patent Costs

The other day I was speaking to a business owner.  She regretted not seeking patent protection sooner and more often for various innovations developed by her company.  When we discussed average costs, she was surprised that the costs were considerably lower than what she thought they would be. 

Provisional patent preparation and filing costs will depend on the approach you take to filing.  There are basically two approaches to provisional patent filing.  The first is the “cheap and cheerful” approach that requires that basic structure and function of the invention be communicated in the application with appropriate drawings, photos, and/or data or other relevant information. 

The second provisional filing approach is to treat the provisional the same as a utility application.  This means that the application will be written in a more formal, structured style as required for utility applications, including a set of claims, formal drawings, etc.  The cheap and cheerful application can be free if you file it yourself.  The US Patent and Trademark Office website has an inventor assistance center that provides basic information and help with filling out patent filing forms. Costs for provisional applications range from free if you do it yourself to an average of $4000, according to the American Intellectual Property Law Association (AIPLA).  I think this figure is high and would recommend shopping around.   See my previous post on selecting the right patent attorney for your invention.

Regular utility applications will cost more because they are more formal in nature and require drawings that comply with the U.S. Patent Office rules.  However, if you go the more formal route first and file your provisional application as if it were a utility, then you only incur the cost once, except for additions and/or changes.  Memories fade and attentions turn to other priorities.  I believe the best approach is to prepare your provisional one time.  In the long run, if there are few additions or changes, the cost is less than doing it twice.  The average cost of a utility application is $7000 according to the AIPLA.  Again, I would get more than one estimate and look at smaller firms and locations in areas where the cost of living is less. 

At the end of the day, if you are self financing, it is still a significant spend.  However, if your patentable innovation is at the core of your business, you can’t afford not to seek protection. 

What’s the take away here?  Don’t write off your ability to protect your invention with a patent before speaking to at least two or more patent professionals.  Protecting your innovative developments is critical to any organization.  Having the right person to help you make that decision is important.  The Law Office of Kathleen Lynch PLLC is designed to help businesses such as yours keep ahead of the game.   The first telephone consultation is free.  Email us at klynch@kliplaw.com.

Texas Gold and Trade Secrets

Southwest Energy Company recently found itself in the cross hairs of a trade secret dispute.  It seems that a pair of geologists and an engineer created a detailed study of the drilling and fracing opportunities in East Texas.  The team had identified 10 “sweet spots” for development and had begun leasing the targeted acreage so that a plan ready for drilling could be supplied to the highest bidder. 

Apparently, Southwest Energy met with the trio and signed a confidentiality agreement.  After reviewing the information and the proposal, Southwest declined to purchase the drill-ready plan.  However, a year later, Southwest Energy purchased large amounts of acreage in and around the identified “sweet spots.”  The geologists and engineer found this too coincidental and brought an action for theft of trade secrets. 

A Texas court agreed with the trio and awarded a judgment of 40.2 million dollars.  On appeal, the judgment was reduced to 11.4 million for lost profits.  The case is currently pending before the Texas Supreme Court. 

What’s the take away here? Regardless of your industry-protect your confidential information.  It may be a supplier list, a pricing structure, or a manufacturing technique.  Use the tools available to maintain these company secrets.  Whether it is in the form of a confidentiality agreement, restricting physical access within your site, or conducting periodic training sessions to remind employees of the value of certain information, keep ahead of any potential leak.  Once a trade secret has been disclosed, you cannot get it back. 

Protecting proprietary information is critical to any organization.  Having the right person to help you make those decisions is important.  The Law Office of Kathleen Lynch PLLC is designed to help businesses such as yours keep ahead of the game.   The first telephone consultation is free.  Email us at klynch@kliplaw.com.

The Fuzzy Babba Prevails

(I have to admit I picked this case in part on the name, Fuzzy Babba. )

Walmart sells a similar fuzzy slipper under the mark “Fuzzy Babba™.”  Buyer’s Direct sued Walmart and others for infringing their design patent directed to a slipper that Buyer’s Direct sells under the mark “Snoozies”.  In their defense, Walmart and others claimed that the patent was invalid because it was an obvious variation on slipper designs in existence at the time the patent application was filed.

A Federal District Court in New York City found in favor of the accused infringers, Walmart, Sears and High Point Design.  The court found that the differences between the design patent and other slipper designs were obvious variations and that the patent was invalid.

What’s the take away here?  Be very sure of the strength of your patent when you assert it against an alleged infringer.  The first defense is often an attack on the patent itself.  If the accused infringers prevail, your patent may be invalidated and any rights associated with it are lost. 

Advising on intellectual property issues is critical to any organization.  Having the right person to help you make that decision is important.  The Law Office of Kathleen Lynch PLLC is designed to help businesses such as yours keep ahead of the game.   The first telephone consultation is free.  Email us at klynch@kliplaw.com.