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Managing the Budget
The client should not file a patent application in the first place unless (1) the client foresees the probability of obtaining revenue from the patent or of obtaining a competitive advantage from the patent that will more than offset the expected cost of obtaining the patent; (2) the client is prepared for the possibility of a zero return on the investment in the patent application (if a patent is refused or the invention is not commercially exploitable, for example); and (3) the expected costs are within the immediate means of the client to pay. In many cases, an independent inventor should collaborate with a financial backer. We are always pleased to discuss with our clients any budget problems they may have, at no fee. Obviously foreign patent applications should not be filed unless the above criteria are met and also the client is in a position to sell, license or otherwise exploit a foreign patent.
During prosecution, due regard may be had to the client's budget.
Sometimes the Examiner uncovers prior art that in our view renders
it unlikely that a valid and commercially useful patent can be obtained.
In such a case, we would recommend abandonment of the application,
pointing out to the client that the alternative is likely to be
a prorated and expensive prosecution without expectation of success.
Sometimes the Examiner allows some of the narrower patent claims
and rejects other broad claims. In such a case, the client may elect
to be granted at minimum expense a patent of relatively narrow scope
including only the allowed narrow claims (giving competitors a greater
opportunity to imitate the invention without infringing the patent),
or the client may elect at greater expense to contest the rejection
of the broader claims, in the hope that the Examiner can be convinced
to allow a patent of broader coverage, thereby rendering the objective
of an imitator to imitate without infringing the patent more difficult
or impossible. The client of course may at any stage elect not to
prosecute the application any further. Thus the client can limit
the amount of money to be spent during prosecution, although a tight
budget may result in the failure to obtain a patent or in obtaining
a patent of narrower coverage than desired. Because the number and
character of Patent Office objections to an application cannot be
guessed in advance, it is usually not possible for us to provide
estimates of the expected cost of patent application prosecution,
but we can sometimes provide ballpark figures. There is never a
charge for discussing budget-related problems.
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