Can I get a refund on my patent if it isn't patentable?

Devin Miller 
Founder of Miller IP Law

Inventors often ask me if they are able to get a refund if their patent is denied or rejected (i.e., if the US Patent and Trademark Office refuses to issue a patent for their invention).

The simple answer is No. Law firms (including patent law firms) do not offer any refunds for the legal work that they have already performed. Generally, attorneys are prohibited by the bar associations from offering guarantees or warranties for the outcomes of their legal work. Offering a refund may be considered a guarantee or warranty.

The reason a refund, guarantee, or warranty can't be offered is simple, whether the USPTO (United States Patent and Trademark Office) issues a patent for an invention depends on many factors. The majority or all of these factors are out of the control of the patent attorney. For example, the USPTO may refuse to issue a patent application for an invention when an Examiner at the USPTO finds a previous patent or patent application (prior art) that anticipates the invention or renders the invention obvious. Alternatively, the inventor may run out of money or decide not to pursue the invention any further once the patent application has been filed with the USPTO.

Additionally, there are governmental fees associated with filing and prosecuting a patent at the USPTO, and the USPTO does not issue refunds for those fees. The governmental fees may include filing fees, fees for processing the patent application, publication fees, and examination fees. The USPTO collects these fees regardless of whether the patent application for the invention is subsequently issued as a patent.

There are options to increase the likelihood of a patent application being allowed and issuing as a patent. For example, before filing a patent application the inventor may have the patent attorney do a landscape or patent search (also known as a “prior art search”) to better understand the inventions and patents already in the public domain, i.e. what has already been invented. While a prior art search does not guarantee the patentability of an invention, the prior art search gives the inventor a better idea of what they may face during the examination of the patent application. If the prior art search turns up a patent application or patent that is close to or identical to the invention, then the inventor may decide not to even apply for a patent for the invention.

So, the simple answer is that there are no refunds by the USPTO or a patent attorney for a patent application that is denied or gets rejected, but there are ways to improve your odds of getting a granted patent before you file for a patent.

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