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Volume 4 - Number 2 -- Winter 1995
[H.R.359][Return to Part I]
More Contributions: Curt Harrington's Latest Insights to the Legal World of High Technology Intellectual Property
By Curtis L. Harrington
First time inventors seeking a patent have a difficult task in trying to decide who can
best help prepare and prosecute their patent and how much they should spend in the
application process. These two considerations are interrelated due to the business structure
of the law firms and individual practitioners who provide these services.
It may be helpful to consider practitioners as classifiable into three categories, including
large law firms, small firm/sole practitioner patent attorneys, and patent agents. Large law
firms generally earn a majority of their profit from litigation. Generally, only larger clients
able to pay the heavy costs of litigation are generally sought by the large law firm. Since
litigation costs cannot be closely controlled by the client it will always be a high profitability
activity, and will always dominate the business of the large firm. Large patent law firms
generally consider patent application work as necessary to enable future litigation business
which may result, and as such the small business and individual inventor is not a high priority.
A significantly higher fee policy may be used by larger firms to exclude individual inventors
and small businesses. In some instances, fees as high as $10,000.00 have been quoted for a
simple utility patent application.
Further, with a larger law firm, the application is likely to be handled by more than one
attorney, with the inefficiencies associated with further explanation of the invention to the
attorney who will perform the work. This inefficiency is significant and costly. The inventor
or small business is effectively paying for this time, including the communication time
between the attorneys.
Patent agents occupy the other end of the range of choice. Many practice part-time or
as a source of supplementary income. The quality of work may vary more significantly among
patent agents. Since agents are not attorneys, they cannot provide full service to the client.
For example, agents are not permitted to express legal opinions about patentability and
infringement. However, the fees quoted by patent agents typically range from $1000.00 per
case as a minimum, up to about $2500.00. Agents cannot provide certain client protections
including the attorney-client privilege and attorney-client confidence. In addition, the
technical expertise and experience of the agent as it relates directly to the invention should be
carefully examined. If the patent application is not drafted by someone who thoroughly
understands the technology and who can adequately express the invention, it will cost the
inventor in terms of patent coverage, time, money, and future defendability of the patent.
The small firm/sole practitioner patent attorney may turn out to be the best bargain for
the beginning inventor and for small businesses. In addition to the advantages and protections
of doing business with an attorney, the cost structure of the small firm/sole practitioner patent
attorney is not significantly greater than that for agents.
One objective measure of cost is dollars per page of the patent application including
the claims and abstract. The standard attorney fees charged by the small firm/sole practitioner
patent attorneys of which I am aware is still about $100 per 8 by 11 inch sheet, double
spaced. Rarely can even the simplest patent application be expressed with less than 15 pages.
Utility patent applications with less than 10 pages will often run into trouble for not having
a sufficient disclosure.
Lastly, the patent attorney should take the time to talk with the inventor or small
business about the full range of options available. Many inventors, even those who have
applied for patents in past years, still have not been informed about patent basics.
The basic information which inventors should know, include at a minimum (1) the new
utility patent term which has been in effect since June of 1995, (2) the petition to make special
to hasten the time of first examination by the patent office, (3) the favorable tax treatment
afforded inventions, (4) the availability of a filing under the Patent Cooperation Treaty to
delay foreign filing of the patent while preserving the filing priority date, and (5) the
availability of patent owner's insurance to defray the cost of enforcing the patent against an
Individual inventors and small businesses should make certain to select a patent
practitioner who is genuinely interested in their inventions, businesses and in helping achieve
By Curtis L. Harrington
Patents rights are a valuable part of the business of innovation and improvement. Small
businesses and inventors need to have an understanding of patent procurement cost and timing
in order to adequately budget such expenditures. It is helpful to consider the patent process
in three stages, including application preparation, application prosecution, and patent issuance
The costs for preparation of a utility patent varies depending upon the number of pages
needed to describe the invention, the number of claims needed to adequately claim the
invention and the number of drawings, if any, required to illustrate the invention. The utility
patent application includes a background, summary, brief description of the drawings, detailed
description, and claims written in a specialized format.
One objective measure of the attorney fee cost is dollars per page of patent application
including the claims and abstract. This should cost no more than $100 per 8 by 11 inch
page, double spaced. Rarely can even the simplest patent application be adequately expressed
in less than 15 pages, and a simple patent seems to average about 20 pages to cost a total of
about $2000 in preparation fees.
The current utility patent filing fee, based upon the minimum number of claims, for an
individual or business having less than 500 employees, known as a small entity, is $375.
Quality drawings, if required, are about $150 per sheet. The average minimum electrical or
mechanical application may have about three sheets of drawings, so an estimated cost of about
$450 for drawings is reasonable. Note that most chemical applications do not require
drawings. Based upon these assumptions, the cost to get a simple patent application filed is
about $2825. This initial cost is normally paid prior to the filing of the application.
The prosecution of the patent application may involve one or two responses to an
examiner in the U.S. Patent Office who rules on the allowability of the patent. Based upon an
average of about 2 responses, it may require from 3-5 hours of attorney time at a cost of $1000
representing the cost of prosecution. This cost occurs from about six months to more than a
year and a half after the patent is filed. Of course, unusual situations can require more
involvement, but the examples given tend to express a minimum to average case.
One option which has been increasingly used since the change in the potential patent
protection period to 20 years from filing, is the use of a petition to enable the application to
be examined right away. Since every day of delay before patent issuance costs the owner a
day of patent monopoly lost, the time of pendency of the application occurs at the expense of
the patent protection period. The cost of such a petition varies widely based upon the basis
for application and will not be considered in this budget.
Once a case is allowed to issue, the government will charge an issue fee which is $625
for a small entity. An attorney fee of $300 for the time to take care of any problems left in the
case and processing the issue fee is added to bring the issue cost to $925.
The government charges post issuance fees due at 3, 7, & 11 years, which are
currently $495, $995, and $1495, respectively, for a small entity. The inventor can arrange
at case issuance to pay these costs directly or he can have the attorney docket the issued patent
and handle the post issuance fees in future. If the maintenance fees are paid directly by the
inventor, the maintenance fee phase adds to $2985.
Based upon the above estimates, the costs throughout the life of the patent total $7735.
Remember however, that the inventor may interrupt the patent process, as well as the payment
of the maintenance fees, at any point during the pendency of the patent application or during
the life of the issued patent. As such, the inventor need only commit to the funds necessary
to take care of each phase in the patent process if possible and as it occurs. With regard to the
issued patent, the patent owner need only continue paying the maintenance fees if the value
the patent monopoly during the next maintenance period exceeds the next maintenance fee.
Remember that the above costs relate to a 20 year period which includes the pendency
of the application and the life of the resulting patent. The projected costs should be justified
by considering the possible additional income made possible by an issued patent. Having a
patent can not only form the basis for an income royalty stream, but can enhance product sales
By Curtis L. Harrington
This article was received earlier this year and we only now have had a chance to publish it
-- thanks for the patience Curt! Maybe Curt will fill us in on what transpired with H.R. 359, in the near future.
Inventors everywhere have lamented the introduction of the new
patent term under the General Agreement on Tariffs and Trade
(GATT). An important change to our patent law, but which was
generally unrelated to the main provisions of GATT, was included in
the agreement to limit the term of United States Patents to no more
than 20 years the date of filing of the patent application. Prior
to GATT, inventors were granted a 17 year term from the date of
issuance of the patent, rather than from the filing date of the
The problem with the "20 year from filing" rule to be
implemented under GATT is that some patents require years to make
it through the examination process. The reasons for lengthy
examination can vary, and include instances where the Examiner
performs a new search. The new search may be for a reason that the
Examiner, based on his technical experience, feels that the
references he originally cited against the patent applicant are not
sufficiently representative to allow the case in view of the
applicant's arguments. Under the "20 year from filing rule," such
an occurrence would shorten the period of the patent at its
issuance to the number of years left from 20 after subtracting the
time required for Examination.
The resulting shortened patent period resulting from the above
rule currently will take effect on June 8, 1995. We are currently
in a six month interim period where patents filed will be afforded
a validity period of 20 years from the date of filing or 17 years
from the date of issue, which ever is longer. This interim period
is for the purpose of easing patent applicants into the new patent
However, the real pinch point will occur just before June 8,
when inventors will want to have their patent applications drafted
and filed by that deadline date in order to take advantage of the
expanded "either/or" period of patent enforceability. The frantic
press of the deadline date may be put off permanently, however, by
the heroic efforts of Dana Rohrabacher.
His proposed bill H.R. 359, as well as its companion Senate
bill S-284 introduced by Robert Dole, will effectively give the
interim period rule permanent status. The bill will delete that
portion of the original language of GATT which read "and ending 20
years from the date on which the application for patent was filed
in the United States..." and inserting "and ending- (A) 17 years
from the date of the grant of the patent, or (B) 20 years from the
date on which the application for the patent was filed in the
With regard to patents applications which refer to or depend
from earlier filed applications, the GATT agreement as passed would
have limited later filed applications to 20 years from the date of
the earlier filed applications. With the "17 or 20" language of
H.R. 359, the patent applicant is still guaranteed at least 17
years of enforceability. About the only negative result possible
with the wording of H.R. 359 is that applicants who file
applications which depend from earlier filed applications will
effectively be foreclosed from obtaining 20 year protection for the
later case simply by operation of the slowness of the U.S. Patent
This bill is a winner on all fronts. Inventors win because
they will be able to keep a term of enforceability of at least 17
years. Of course if they speed up prosecution of the patent by
filing a special petition they may be able to obtain a period of
patent enforceability of up to about 19 years, assuming that the
time consumed by the U.S. Patent Office is less than a year.
Patent practitioners will win, if H.R. 359 is passed and put
into effect by the June 8, 1995 deadline date, since there will not
be a press of inventors trying to obtain a filing date before the
On another front, the bill contains a provision which provides
for the "laying open" for public inspection of patents which depend
from a previously filed patent where the earliest such patent was
filed more than 60 months previously. The "laying open" of
applications is important to business and investment interests,
since it is competitively helpful to know what your competition is
doing. Admittedly a 60 month threshold is less desirable than the
18 month threshold available in Japan, but it is a first step in
the right direction.
In theory, it would be nice if the U.S. Patent Office could do
its job of Examination and application denial or approval in a
single day. In this way, businesses could have a fairly instant
look at the risks of investing in a project. After all, pouring
money into a project in which someone else asserts patent rights
later on is not a happy state of affairs. The 60 month "laying
open" provision was meant primarily to squelch the "submarine
patent" criticism. A "submarine patent" is an issued patent based
upon an original application filed many years earlier and therefore
based upon early technology. This can be economically disruptive
where business continues based upon an assumption that the rights
in this early technology has been settled. For a visceral, but far
fetched example, imagine a patent issuing tomorrow on the
transistor, and the accompanying chaos it would cause in the
In conclusion, H.R. 359 is needed and is good for our patent
system. The bill currently has over 123 cosponsors, and the
current administration has indicated that it would support this
bill. With a little luck, it will be in effect before the June 8,
CURTIS L. HARRINGTON, is of Counsel to the Newport Beach law firm of Hawes &
Fischer (714)374-9549 and practices in the areas of Patent, Trademark, Copyright and Trade
Secret law, and is an Adjunct Professor at the University of Phoenix in Southern California.
He is admitted to practice before the state bars of California, Texas, and Arizona, and admitted
to practice before the U.S. District Court, the U.S. Court of Appeals, Fifth and Ninth Circuits,
the U.S. Supreme Court and registered to practice before the U.S. Patent and Trademark
Office. His education includes a B.S. Chemistry (Auburn University, 1974); M.S. Chemical
Engineering (Georgia Institute of Technology, 1977); M.S. Electrical Engineering (California
State University - Long Beach, 1990); a Master of Business Administration (University of
Oklahoma, 1985); and Juris Doctorate (University of Houston, 1983). He is a member of the
Long Beach Bar Association Board of Governors, the Orange County Bar Association and the
Japan America Society of Southern California.
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