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5 Tips for Controlling Patent Costs

22 Jun 2021 (updated at 28 Jun 2021)
Head of Department / Patent Attorney / Mechanics Engineer

It is no secret that the procedure for obtaining patent protection is not only complicated, requiring certain knowledge and skills, but also expensive. Not every inventor or applicant is ready and able to bear the costs associated with obtaining patent protection, and sometimes not every company that decides to entrust the patenting of its solutions to patent specialists expects to incur such costs. In any case, each and every one seeks to save as much money as possible, resorting to various tricks and stratagems, which are not always justified and effective. 

However, there are a number of effective ways to reduce the cost of patenting, but not everyone knows about them. Let’s see how the most effective among them work.

Tip 1: Protecting several solutions within a single patent. This method would work in the case of an application for an invention. The current patent law allows several technical solutions which are linked in a way that they form a single patentable inventive concept. This condition is mandatory when filing an application for several solutions and is met if the claims characterize a group of inventions:

  • One intended to produce (make) the other e.g., a device or substance and a process for producing (making) the device or substance as a whole or a part thereof;
  • One intended to carry out the other (e.g., a process and apparatus for carrying out the process as a whole or one of its acts);
  • One intended for the use of the other (in the other) e.g., a process and a substance intended for use in a process; a process or apparatus and a part thereof;
  • Relating to objects of the same kind (several devices, several substances, etc.), of the same purpose, providing the same technical result (variants). 

Here is an example of a patent that protects several technical solutions: “A method and apparatus for estimating the mass of fresh air in the combustion chamber, a method for estimating total fill, a recording unit for these methods, and a vehicle equipped with an estimating apparatus.” As it can be seen from the title of the invention, the patent protects 5 technical solutions, namely, the method for estimating the mass of fresh air in the combustion chamber, the device for estimating the mass of fresh air in the combustion chamber, the method for estimating complete filling, the recording unit and the car. Thus, instead of filing five applications, the applicant filed one application and thereby reduced its costs by an average of three times for the services of patent specialists and five times for filing fees.

Tip 2: Filing an application indicating a privileged category of persons as the applicant. Not everyone is aware that the state provides a number of discounts on the payment of fees for certain groups of persons and entities and thus encourages applicants to file as many applications and obtain as many patents as possible. Here are the main categories of applicants (patent holders), who are entitled to a reduced rate of payment of various types of fees:

  • The applicant is the author of an invention, utility model or industrial design, which belongs to one of the categories: disabled person, pensioner, student, researcher, scientific-pedagogical worker or a collective of these persons;
  • Applicant is a natural person and the sole author who applies for a patent in his or her name;
  • Applicant is a legal entity that belongs to one of the following categories: small business, educational organization with state accreditation, scientific organization.

Depending on the type of legally binding arrangement for which the patent fee is to be paid, its amount is reduced by 65-90% in relation to the established amounts.

In addition, we note that more than 70 types of legally binding arrangements fall under the privilege, according to which the established fees are reduced by 30% in case the applicant applies to Rospatent for performing legally binding arrangements in electronic form. The said benefit is applied in addition to the benefits mentioned above, that is, the applicant has the right to request two discounts simultaneously. In such a case, it should be taken into account that the discounts are not summed up, but are charged sequentially. So, for example if the amount of the fee for filing the invention application for a pensioner is 330 rubles, then an additional discount of 30% of this amount can be made when filing the application in the electronic form through customer account. Thus, taking into account the discount, the amount of the fee for filing an invention application will be 231 rubles, and the full amount for filing an application, not including the discount is 3300 rubles, which is a significant savings.

Tip 3: Public alienation of the patent. In accordance with paragraph 4 of Article 1366 of the Civil Code of the Russian Federation the applicant, who is the sole author of the invention, before the decision on granting a patent or on refusing to grant a patent or on declaring the application withdrawn may file a statement to the effect that if the patent is granted, he or she undertakes to conclude an agreement on assignment of the patent on terms corresponding to the established practice with any Russian individual or Russian legal entity, who first expressed such desire and notified the patent owner and the Federal Executive Body of the Russian Federation about it. Where such a declaration is made, the prescribed patent fees shall not be charged from the applicant in respect of the application for the grant of a patent for the invention and in respect of the patent granted in respect of that application.

The number of applications filed within a year by one applicant in respect of which he or she is exempted from the payment of patent fees shall be established by the Government of the Russian Federation and shall not exceed 10 applications.

A person who has entered into an agreement with the patentee on the assignment of the invention patent on the basis of his or her application, shall be obliged to pay all the patent fees from which the applicant (patentee) was exempted.

Thus, in this situation, the applicant/grantee saves on the fees, the amount of which may vary from several thousands to several tens of thousands rubles.

Tip 4: Conducting a preliminary international search on patentability to assess the chances of obtaining a patent. It is a fact of life that not all technical solutions applied for are protected by patents. In our practice, there is a certain percentage of rejected applications for which patents have not been granted, for one reason or another. The main reason for rejection is that the technical solution does not meet the established criteria of patentability: novelty, inventive step and industrial applicability. If, for example, industrial applicability is obvious, then world novelty and inventive step are quite complicated. It is not always the case that our applying inventors would be aware that similar solutions exist in other countries, and could be convinced that such an invention does not exist anywhere else in the world. However, during an inspection, it turns out that someone in another country has already invented the same solution and even obtained a patent for it, and the money for the patenting has been spent and cannot be returned. Not only was the patent denied, but the money was also spent. Therefore, in order to protect yourself from receiving a possible refusal from the patent office, it is recommended to conduct a preliminary search which is better to entrust to patent attorneys.

Tip 5: Getting a patent on your own. Of course, this method is the most cost-effective, as there is no need to pay for the services of patent specialists, you do not even have to pay patent fees (according to method 3) or reduce their size to a minimum (according to method 2) and eventually get a patent for free, but do not forget that to issue an application for invention and prepare a set of all necessary documents yourself, given never seeing them before it, it is quite difficult, and in some cases impossible. 

Therefore, before you save on the services of a patent attorney, think about how much you will have to pay later to correct all the errors and get the long-awaited patent. In many cases, this will cost a lot more than if you had gone straight to a patent practitioner and take a lot more time. In some situations, however, there is nothing to fix and nothing to do but start all over again and draw up a new application.

To sum up, we have to accept the fact that everyone has to do the job he or she is qualified for: a hairdresser has to cut hair, a doctor has to cure, and a patent attorney has to file patents and before you decide to do it yourself, think about what you can get out of it and how much money you will have to spend extra.

Head of Department / Patent Attorney / Mechanics Engineer