Contingency fees and patent prosecution rarely go together. On occasion, we patent attorneys may be willing to forego our hourly rate for friends or family who promise to pay us when they become successful – but the truth is, when fees are a matter of patent procurement, there is usually too much uncertainty in the patent process to take the chance. After all, every inventor seeking a patent thinks their invention is the next big thing whether they are right or not. There may, however, come a time when you are willing to bet that one of them is right. When that comes, you should do everything in your power to ensure the invention is worth the effort.

The Costs of Patent Prosecution

When operating on a contingent fee basis, the more work and fees that go into the patent process, the more lucrative an invention must be to cover the time and effort you have invested into the patent application. Fortunately, patent prosecution costs are determined by the patent examiner assigned to your patent application, as well as your ability to identify and execute prosecution strategies that move your application through prosecution as efficiently as possible. With patent application software, you can quickly size up your assigned patent examiner and the way that he or she handles examination. You can then use this information to avoid decisions that result in unnecessary expenses. For example, if you discover that applicants who held interviews with your patent examiner faced fewer office actions, you should also hold an interview with your examiner to reduce the cost of office actions. Furthermore, if your patent examiner’s allowance rate is low but your chances of succeeding on appeal are high, do what you can to reduce the time you spend dealing with your examiner, and use that time to move towards appeal.

The Likelihood of Patent Allowance

An unsuccessful patent application has no value on the open market. If you are working on a contingent basis, you need a patent to grant if you want to get paid. But, in order for your patent to grant, you first have to convince your patent examiner that your invention is patentable. There may still be instances where even the fairest of patent examiners comes to an undesirable conclusion. However, patent data analytics can help you identify and take advantage of each patent examiner’s quirks to increase the odds of receiving a favorable opinion. For instance, you may find while using patent analysis tools that your patent examiner tends to allow patent applications immediately after an RCE is filed. In this case, the insight points towards filing an RCE yourself to increase your chances of allowance.

The Success of the Patented Invention

The success of an invention after it has been patented is one area in which you have little or no control. As a result, this area should cause you the most concern if you are working on a contingent basis. You can, however, use patent prosecution software to your advantage to assess competing patent applications, and even set alerts when significant patent prosecution events take place. Following a competitor’s actions can help recognize the best way to approach marketing and selling your invention down the road.

LexisNexis PatentAdvisor® patent analysis software can help minimize the uncertainty of patent prosecution and create the opportunity for your patent application to be a true success. It is a bold decision to face patent prosecution on a contingent basis, but PatentAdvisor™ can help make it a great one.

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