Patent Attorneys’ Misguided Obsession About Costs

Hand wringing amongst patent attorneys show their misguided view of their clients.

Patent attorneys work in a bubble that is completely hidden from laypersons, but is an incredibly loud echo chamber. An example is the current obsession and endless handwringing over the USPTO’s DOCX filing requirement.

The issue is that the USPTO prefers that you file your patent application in the .DOCX file format, rather than .PDF. In order to implement this, the USPTO charges a $400 surcharge if you fail to use .DOCX. By using .DOCX, the USPTO can easily format your patent for printing. For purely text-based specifications, this is probably not a big deal. However, if your description uses formulas, tables, or some advanced formatting, there is a good chance that the formatting will be messed up in the final document.

If the formatting is messed up AND that patent is litigated (maybe 1 in 10,000 chance) AND that formula makes a difference in the outcome (maybe 1 in 10,000 chance), the patent attorney might be sued for malpractice because of the technical error in formatting. All in all, this is at least a 1 in 1,000,000 or possibly 1 in a billion chance of actually occurring.

The patent bar is all hot and bothered about passing the $400 fee on to their clients, and are preparing all sorts of letters of explanation and requiring clients to sign off on this risk if they want to avoid the $400 fee. Some law firms are charging their clients $1000 or more to “review” the .DOCX filing process if the client insists on avoiding the $400 fee, just to protect the law firm from malpractice lawsuits.

It is obnoxious. And it gives a glimpse behind the curtain for how patent attorneys think and operate.

Patent attorneys need to do what is right for their clients.

Every patent attorney has the fiduciary responsibility to do what is right for the clients, which is part of the attorney/client relationship. This means doing everything within the standard duty of care to perform their duties.

For example, when faced with interacting with the USPTO, there can be tradeoffs with the methods we use. We can file a new application through a web interface, by Express Mail, or by using the walk-up window at the USPTO in Arlington, Virginia.

We can file a patent application as a handwritten document that is not even typed. Each way of filing costs the patent attorney a different amount of time and preparation, and some methods are more convenient than others. Obviously, the USPTO prefers formats that are easier for it to process, and they would prefer not to have to re-type someone’s handwritten application.

The patent attorney has a lot of latitude with how they do their job, but the patent attorney must do what is right for their clients. Or so it might seem. But that is not reality.

The patent attorney’s real job: do not get sued.

Patent attorneys are obsessed with not getting sued for malpractice. And nothing else.

The specter of malpractice reigns supreme amongst patent attorneys. Everything we do, from the initial consultation to the engagement letter, correspondence and documentation about every tiny decision, and religiously documenting every issue is all about avoiding malpractice.

Patent attorneys do not care about their clients. They care about themselves.

When the USPTO added the $400 DOCX fee, the patent attorneys were all up in arms, ready with pitchforks and torches.

They were uncomfortable passing the $400 fee to their clients and having to (1) have the conversation with the client to explain .DOCX formatting and (2) explain why this could invalidate their patent in an impossibly insignificant situation. By the way, the fee is only $160 for small entities, which are clients under 500 employees. Oh, and they have this “essential” conversation while charging $525/hr.

If the patent attorney determines that it is easier to file in PDF format rather than DOCX and it saves a bit of time, the $400 fee (or only $160 for most clients) is utterly immaterial.

Besides, what is the value of the patent to the client?

The value of the patent asset they are creating might be $1,000,000 or more. Why are we worried about a $160 fee (which is part of an $800 bucket of filing fees)?

Patent attorneys are terrified of being sued by their clients for the wrong things.

The real reason why patent attorneys are up in arms about this fee is that they do not see the world like their clients. This gives you, the outsider, a huge insight into what motivates your patent attorney.

Did the patent attorney feel that they had a duty to tell you:

• that your patent claims are undetectable?
• that your patent claims have plenty of design-around alternatives?
• that they did not bother to cite references to the examiner?
• that their drawings were lazy and de-value their patent?
• that their suggestion of a provisional patent application damaged your company?
• that their suggestion of a provisional patent application makes you look stupid to angel investors?
• that their longwinded description of the invention hurts you?
• that their lengthy, easy-to-allow claims make your patent worthless?
• that their “non-transitory computer readable storage media” claims are pointless?
• that their method claims are very difficult to enforce?
• that terminal disclaimers show their laziness?
• that they have incentives to NOT get your patent granted?
• that adding everyone as inventors leads to lots of problems?
• that an “early filing date” can turn out to be a bad thing?
• that filing a patent may actually damage your company?
• that “Track One” is a terrible idea to expedite your patent?
• that “broad claims” are a good for your attorney but bad for you?
• that the patent filing costs are only a quarter of what you should expect to pay?
• that they treat inventors as “walking malpractice suits”?

No.

But they feel the need to have a lengthy conversation to justify a $160 additional fee that will show up on your bill. Why is this?