Using a patent attorney is expensive.
That’s not surprising; we’re highly qualified, and (most of us are) good at what we do. What is surprising is just how many of our clients increase their bill unnecessarily. By “unnecessarily”, I mean that they do things (or don’t do things) with the result that they pay more for exactly the same result.
So what are the main ways that clients do this? The first one is the biggest one – the easiest and the most common way to run up a big bill while achieving nothing.
1. Don’t reply on time. Treat the deadlines that your patent attorney communicates to you as flexible.
The bad news is that none of them are really, truly flexible. Most are extendable, yes (although not all of them are – so take care). But all of them are real; if your patent attorney lets them roll past then there will be some sanction. In the European Patent Office, we have to write to the examiner before the deadline expires and ask for more time; that is work for us and (guess what) we charge for it. In the US, we can ask for more time retrospectively, but the USPTO charges for each month, and on a rising scale. So even when more time is available, it is only available at a cost.
2. Leave it to the last minute.
Sometimes, there are steps that we need to take that just require a simple “yes” or “no” answer from you. Sometimes those require a similar amount of work from us – such as whether or not to pay an examination fee. Other times, though, something that is just requires a brief step from you -such as “yes, please file in Paraguay” – involves a lot of work on our part, such as obtaining a Power of Attorney to file there, translating the application into the right language, and getting the text & the Power to a Paraguayan agent in time. If you leave it to the last minute, we and all the other people involved have to drop everything else and treat your case urgently. Guess what – that costs more.
Foreign filings are the most common area for this. My personal record was the client who asked me at 2pm on the last day to file an application in China. Think about the time difference; 2pm in the UK is actually after office hours in China. Yes, I filed it, but the client was faced with a serious bill from the Chinese attorney whose evening he had no doubt ruined.
3. Keep changing your mind
Tell us to do something, then decide you don’t want it after all. Most importantly, wait until just after we have done it, paid the official fees, and sent you the bill before telling us.
(Yes, clients really do this.)
4. Be vague and unclear
Tell us you’d like to patent invention “x”. Let us draft a patent specification for that invention, then decide that actually you’d like to patent invention “y”, which is like “x” but much more widely applicable. We won’t mind, we’ll just redraft the application so that it approaches things from a completely different perspective. That will take twice as long, though, and we charge by the hour.
5. Don’t pay us on time
Ignore the bills we send. After all, if we want them to be paid we’ll make a fuss about them.
This will have two effects; first, we’ll make a fuss and probably charge interest or (if things get serious) court fees. Second, the next bill will be higher because, surprise surprise, we’ll be expecting you to be late with that one. So, we won’t be letting you off any time, we won’t be cutting you any slack. We feel we’ve been stung by you, so the sympathy isn’t there any more.
Worse still is the bill after that – if you’re a consistently slow or bad payer, we’ll be asking for cash in hand. Why should we incur sizeable out-of-pocket disbursements for you when you don’t bother to pay us on time? That means the money is in our account earning interest, when it could be in yours.
6. Query every bill
Now, don’t misunderstand me here; if you don’t understand what the bill is for, or feel that it is on the high side, then query it. You have a right to understand what you are paying and why, and if your patent attorney is not co-operative in this regard then you need to look for another one.
However, there are limits. I remember one client who, we realised, had queried every single bill we had ever sent. Every single one, no matter how large or how small. Worse, our replies to his queries then generated more queries, even though we thought that our replies were quite detailed and made things quite clear. Eventually, we were spending as long dealing with his billing queries as we were spending on his substantive IP work.
No other client had ever raised that level of questions (or has ever since), so I am pretty confident that it was the client, not me. We decided to politely decline all future work from that firm, which will have cost them more in the long run as their new attorney will have had to read into the cases. Our alternative was to carry on working, but increase our rates dramatically to cover the extra time that would be needed. You might think that would be harsh (as did I, which is why I withdrew instead) – but at an effective charging rate of half our usual rate, we were making a loss on that client. Why should our other clients subsidise that one?
7. Be obnoxious
You’re paying the piper, so you call the tune – right? Yes, of course you do.
That entitles you to be as rude to the piper as you want – right? After all, if he doesn’t like the colour of your money, he can go find another client – right? You might be surprised to hear me say this, but yes – it does.
However, when you get stuck, when you need a quick bit of advice urgently, when you are caught short and need to give them late instructions, don’t be surprised if they are carefully recording every minute of work they do on your behalf. Don’t expect any sympathy when it is time to work out the bill. Don’t expect them to write off time (or forget to record it) because it was “only a telephone call” or it was “only a few minutes”.
It’s amazing how some clients think we’re worth several hundred pounds an hour, but not worth an ounce of politeness.
I’m not saying you need to be obsequious or treat us like Lords & Ladies. Just be decent, be human, be friendly. It means we might enjoy doing your work. We might enjoy it for more than just the fees that it earns us. We might actually want to keep you as a client, so that we can carry on doing it. I don’t usually like management buzzwords, but that really is “win/win”.
8. Be long-winded
The arguments and the examples that you give us will be used in support of your patent applications around the world. In case you hadn’t noticed, they often speak different languages in these countries. Whilst the foreign patent attorney may understand your language, the local Patent Office won’t. That means translation work. Translators charge by the word. The more you use, the more it will cost.
If your patent attorney wants to spend their time (and therefore your money) editing your write-up so as to cut it down, he or she is doing you a favour, not ruining your work. Trust them.
9. Avoid modern methods of communication
Email works for us. We can send one quickly, for you to read when it’s convenient. If you reply by email then we can find it easily when we next pick up the case.
We’re quite happy to come and visit you instead. We can easily spend an hour or more travelling to your office, then spend half an hour in your reception waiting for you to come and collect us, 20 minutes discussing what sort of coffee we would all like, 10 minutes discussing the weather, half an hour explaining the basic principles of patent law (again), then 5 minutes explaining what the issue is and getting a decision out of you as to what we should do. Then starting all over again for the latecomer who missed the first half and really needs an update.
Seriously, we really don’t mind doing all that, if you prefer. But it will cost more than 5 minutes of email correspondence would have (and we can throw in a free cc for the latecomer…).
OK, sometimes a meeting is the best way to move forward efficiently, and they are useful in the initial stages so that people get used to each other and work out how best to rub along together. But be reasonable… don’t call a meeting for everything and anything. If you like face-to-face meetings, if that’s how you work best, then by far and away the best way to do this is to have quarterly review meetings where you go through the whole portfolio in one big bang and reach a decision on everything that is outstanding. Set the date for these well in advance, so that we can prepare and bring all the issues with us.
10. Don’t bother with Our Reference
My firm is on the small side, and has a records system with something like 50,000 cases on it. Of these, about 9,000 are live pending cases, the rest are granted cases that we monitor for renewals purposes and cases that have lapsed or expired. You can imagine the reaction when something arrives referring to “that case you did for our sister company a few years back”.
All of our cases are indexed by our reference number. That’s why we allocate one. Any other form of reference, be it the case title, the application number, the filing date, whatever – unless it is a case we’re really familiar with, they all need to be put through the records system so that we can work out our reference. Tell us that in the first case, and we can work much more efficiently. And if we can work more efficiently, we can compete better on whatever is important to you – be it price, responsiveness, or whatever.
What you really want to know, of course, is how to minimise your bill (without affecting your portfolio adversely). That’s easy; just do the opposite of the above.