The wait for a patent application can be a lengthy one. In fact, the US Patent and Trademark Office (PTO) often takes between18 to 36 months from the filing date and the beginning of examination. With this in mind, I suggest inventors take that time to work on promoting their inventions. An invention’s commercial viability can greatly inform how to conduct prosecution of the application before the PTO, and its commercial success can be used to overcome claim rejections by a Patent Office Examiner.
Prosecuting an application usually involves responding to at least one Office Action from the PTO. Moreover, if the applicant is not getting anywhere with the Examiner, an appeal may be warranted. With an Office Action response usually costing $1200 – $2500, and an appeal generally costing at least $4000, prosecution costs can be substantial. Indeed, there is practically no limit to what you can spend on patent prosecution, because the PTO will almost always let you buy another shot at overcoming an Examiner’s rejections, and numerous levels of appeal are available as well.
If your invention is commercially successful or shows great commercial promise, then spending thousands on patent prosecution can be a wise investment. On the other hand, if you are unable to successfully promote your invention, continuing to spend money in pursuit of patent rights might not make much sense. In addition, even if patent prosecution is relatively painless and successful, there can be value in filing a continuation in order to push for broader protection, or to have a pending application with which to snare competitors who seek to circumvent your issued patent claims.
Accordingly, if you have been promoting your invention and have a handle on its commercial viability, you are better able to judge how much to invest in patent prosecution. Conversely, if you have been sitting on your invention, waiting for your patent to issue, your assessment of commercial viability is likely to be speculative, and you run the risk of continuing to invest in patent protection for an invention that has little or no commercial value.
So don’t sit around dreaming of striking it rich when your patent issues. Get out there and promote your invention during the pendency interval. Then you’ll have some idea if it might be worth investing another $5000 when your attorney advises you that prosecution of your application is at an impasse, and its time to file an appeal.
