Frequently Asked Questions
1. How do you justify your costs?
We provide excellent, responsive customer service at a fair price. We show up at your lab, talk to your team every month, and manage your IP budget. In addition, we deliver results - usually 3 patents per application filed. Finally, we have a lifetime of experience. Our fee compared to the value we provide is a no-brainer.
2. What does an average engagement with Painless Patenting feel like?
It starts with some uncertainty. You are likely stressed out, as there are lots of rules in patenting and you have a business to run, capital to raise, and a product to develop. We reassure you and ask for documents, drawings, flow charts, CAD models. We ask questions, we listen, and we remind you we know the path to a patent's allowance.
We start regular monthly meetings with your team to break it down for each other. We know you haven't told us everything about your innovative concepts yet. We also know you are likely not yet finished inventing, so we keep asking questions. After sifting through the information you provide us, and looking at what others are doing in the same field (by reading their patents), we propose a list of your product's potentially novel features we believe are patentable. You may agree with some, and not others, but you'll likely feel just a bit more informed about what can be protected by patents. We present a draft patent application based on the information you provided, and explain that this patent application may result in five or more issued patents. You can feel relieved and proud of your work. We become part of your team and we trust each other.
Fast forward five years, and you feel confident. You have four or five issued patents, you have products on the market, and you are seeking a much larger investment to improve your existing products and expand your market to other countries. You are happy.
3. What is the advantage of having a patent?
Having a patent is like having an insurance policy. You don't like paying the premium and hope you never have to use the insurance, but when you need it you're really glad you have it. A patent gives the patent owner the right to prevent someone else from making, using, selling, or importing the claimed invention. Without a patent, your invention is essentially freeware; anyone can use it without recourse.
4. Why should I hire Painless Patenting?
Painless Patenting's infrastructure is designed to identify novelty and build a patent portfolio. Patent portfolios protect revenue, and that improves investability.
Our monthly meetings are autonomous novelty discovery sessions: we don't wait for you to call us when you have a new invention, we stay up to date on the progress of your invention's development and help you identify points of novelty.
We have fixed monthly billing, meaning no surprise expenses, just billing predictability.
We develop a deeper understanding of the business model, technology, and patentability.
We ensure confidence that a patent will be issued even before it is filed, as opposed to finding out three years down the road that the invention you thought was patentable is not.
5. What problems are you solving?
The most important problem we solve is educating founders and/or senior management as early as possible. Product development teams tend to be unfamiliar with or misinformed about patent law, and patenting is not usually a high priority relative to inventing the product itself. Development teams can be daunted by the patenting process, and often don’t think what they are doing is patentable. Once informed, we help teams make patenting a priority.
Another problem we solve is to increase the likelihood of investment by providing our customers with at least one patent application prior to raising capital. Investors, including large corporations looking to fund product development teams, often require patents before they will even consider an investment. This is especially true in life sciences, energy storage devices, network security, and consumer goods. Once teams have even one patent application on file, they are more likely to get a call back from investors.
6. How long do clients usually retain you for?
Our oldest client has been with us since 2008, and during that time the original client company has been divided by two acquisitions and a spin out. Now, the two different companies (both our clients) have a combined total of 46 issued patents in various countries, and they each continue to file five or more patent applications per year. A typical scenario is to work with one client for two to three years until that client is bought by a larger company, then the larger company becomes our client. In other words, once signed, our clients stay with us for the duration of their company, no matter the iteration.
7. What is the financial value of my patent?
Short answer: it depends. A patent's present value is proportional to the revenue it protects. Remember, a patent gives the patent owner the right to prevent someone else from making, using, selling, or importing the claimed invention. When there is no revenue, there is no reason to stop anyone, and the patent has a low present value.
A patent can have a face value, e.g. a US patent issued today might have a face value of about $24,000 simply because that is what it cost the owner to get the patent issued. However, such a patent is also a liability because the new owner, in order to keep the patent enforceable, will be required to pay about $14,890 in maintenance fees over the remainder of the patent's twenty-year lifetime.
Then there is the patent's intangible value, e.g. when a potential competitor stays out of your market based on concern over potential patent infringement, or when an investor doubles down on a new round of funding, or a larger company buys your company in part because your company has the best patent position in the market. So, like we said, it depends.
8. What is a patent agent?
A patent agent is someone who has passed the patent bar and is admitted to practice law before the US Patent and Trademark Office (USPTO). There is no requirement to attend law school or to pass a state bar exam to become a patent agent. However, anyone requesting to take the patent bar exam must have a Bachelor of Science degree in a science or technical field.
9. How much does a patent cost?
The cost of a US patent over its 20-year life is about $34,160. This includes fees paid to the USPTO (filing fees, issue fees, and maintenance fees) and fees paid to a patent service provider (e.g. a reputable patent law firm, for preparing and prosecuting the patent application and managing maintenance fee payments.) Expect to pay about 45% of the total cost up front, to prepare and file the patent application. These numbers are based on the following assumptions:
Cost to prepare and electronically file a complex patent application (e.g. an 80-page description with 10 figures), with the USPTO: about $15,000 not including a patentability analysis.
USPTO fees for a small entity (under 500 employees), over the life of the patent is presently $8,160.
Cost to prosecute the application (assuming three office actions or patentability arguments with no late fees), is about $7,500
And the cost to manage the payment of the maintenance fees is about $3,500.
For international patents, expect to pay more. In high-cost countries like Japan and the European Union, you'll pay up to 2X the lifetime cost of a US patent. Translation cost also needs to be factored in, not only for the translation of the patent application itself, but also all of the correspondence during prosecution. Additionally, some countries begin to collect annual fees even before the patent is granted. Still, there are some relatively inexpensive countries in which to file patents, such as Canada, Singapore, and Australia, none of which require non-English translations.
10. How long does it take to get a patent issued?
The short answer is, a minimum of three years. The USPTO is divided into examining groups based on the technology being examined for patentability. As might be expected, some technology groups receive more patent applications to examine than others. The typical backlog in most examining groups is about 24 to 30 months, ranging up to 36 months in busier groups. Once an application has been examined the first time (first action, or start of prosecution), even an easy prosecution might last an additional six to twelve months, and some can take seven or eight years. International patents take much longer in part because patent owners often delay international examination until they receive a first action in the US.
11. Why should I file an international patent?
There are three reasons to file international patents:
Block others from making, using, or selling the claimed invention in international markets in which you already have, or expect to have a revenue stream.
Increase your company valuation, especially when your exit plan is to be bought by a larger company. Larger companies having a global, or at least multi-regional market presence need international patent rights to protect revenue streams outside the US. This puts the burden on inventors to file internationally because the right to file international patent applications expires twelve months after the original patent application filing date.
Block a known or potential competitor in a single country or region from making the claimed invention in their factories. For example, some customers file patent applications in China in order to block any Chinese companies from making knock-offs. Another example is to block a major competitor from making the claimed invention in their home country (e.g. when a US auto company has a major competitor in Japan or Germany, they file patents in those countries in order to block the manufacture of the claimed invention in known manufacturing facilities.)