The Process of Patenting

The cost of obtaining a patent in the life sciences is high and likely to get higher, even as a growing legal complexity and regulatory logjam lengthen the amount of time it takes to get the patent in hand."Most people don't like to hear it, but they know it is going to cost quite a bit," says Robert Hunter, a registered patent agent who practices out of Kamuela, Hawaii. "Quite a bit" generally means more than the price of a minivan but less than the sticker on a Hummer, or somewhere in the neighborhood of $10,000 to more than $30,000. This includes legal and other fees for applying for a patent, as well as US Patent and Trademark Office (USPTO) fees. The wide variability in cost stems from biotech patents typically having lots of claims, and many fees are per-claim, not per-patent.While landing a patent may not break the bank at a small biotech, litigating patent infringement cases might, the experts say. The most recent survey of legal service charges by the American Intellectual Property Law Association showed patent application costs for relatively complex biotechnical and chemical inventions came in at about $10,000.It's a good idea to invest in an objective evaluation of how an invention stacks up against already patented ideas, says Hunter. "Many inventors are in a state of denial about what is already out there. For very little money," he says, "you can hire searchers to comb through similar art. These guys really want to pop your balloon. The ones with the personality and rigor to do the dirty work are the ones you want to have on your team." Without novelty, there's no point in going forward, he adds. Hunter estimates that the patentability search will cost from $800 to $1,200 for a chemical or biotech invention, compared to an estimated $300 to $700 for a mechanical invention.Some inventions are protected even without a patent, says Alexander Poltorak, founder of a New York intellectual property management firm, General Patent Corporation International. Poltorak has written extensively on patent valuation issues. "If an invention is novel and secret, it is already an intellectual property [that] could be protected under the trade secrecy laws," he says. "If you can keep your process under seal and away from competitors' eyes, you actually may be better off protecting it as a trade secret rather than as a patented invention."However, most scientists in academia, biotechnology companies, and the government do not have the means to commercialize a discovery, making trade-secret protection irrelevant, Poltorak says. A patent gives a scientist the right to bargain for license fees, and it gives a biotech startup something to show venture capitalists. "Academics, institutions, and startup biotech companies are invariably better served in getting patents," says Poltorak.University technology transfer offices negotiate favorable rates with law firms and other patent professionals, bringing the power of volume buying to bear on behalf of academic researchers. As a group, nonprofit research institutions spend millions each year to add to their patent portfolios, many of which rival those held by for-profit companies.Pursuing a patent takes time. For complex scientific and biotechnical patent applications, the average wait from the time of application to the first action by the patent office is about three years, says Hunter. "The patent office is totally overwhelmed as an organization by the rapid increase in the number of patent applications being filed," he says, "because innovation is the way companies compete these days."And remember, says Poltorak, that patents obtained in the United States, Russia, or Japan are generally recognized only in those countries. In calculating the war chest you will need for international protection of a true scientific blockbuster, magnify the US costs many times. However, Australia and certain other jurisdictions are known for their lower patent application costs, making them inviting places for cash-strapped biotech inventors to debut their intellectual properties.Waiting can be tough on small companies trying to line up financing to take the patented invention to the next level. But patent professionals don't like it either, says Hunter. "By the time you call your clients to inform them that the Patent Office has taken its first action, they can't even remember your name."Peg Brickley pbrickley@the-scientist.com

The Process of Patenting

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