The True Cost of Patent Prosecution (and How to Get Ahead of It)

The legal landscape is constantly evolving, and patent law is no exception. As technology advances, so too do the tools available to streamline and enhance patent practice.

The cost of patent prosecution (beyond just filing fees)

Patent prosecution is far more than a filing fee. Across a portfolio, costs accumulate through:

• Office actions and responses that consume attorney hours and USPTO fees,
• RCEs that restart the process without improving odds of allowance
• Appeals and pre‑appeal conferences that add both time and expense
• Continuations, divisionals, and CIPs that expand protection and budgets
• and long‑term maintenance fees to keep issued patents active.

When viewed portfolio‑wide, these costs aren’t just operational overhead but strategic capital allocation. Capital that must be defended to boards, CFOs, and business units, as total spend can easily reach millions of dollars each year.

Why so much of that spend goes unexamined

Even with detailed docketing systems and experienced outside counsel, it’s easy for certain costs to stay in the background. Over time, applications naturally move through familiar workflows, and it can be challenging to pause and reassess:

• Does this application still align with current business priorities?
• What is the projected cost trajectory of this family over time?

Because these costs are often spread across multiple matters and budgets, they’re not always fully visible in real time. By surfacing those patterns earlier, teams gain the clarity needed to shape spend proactively rather than reactively.

The avoidable patterns driving waste

Deep dives into prosecution data consistently reveal avoidable inefficiencies, such as:

• Clusters of applications handled by examiners with historically low allowance rates.
• High volumes of RCEs filed without strategic change.
• Opportunities for examiner interviews missed, leading to extra office actions.
• Continuations and divisionals filed habitually, without current commercial rationale.

These patterns not only drain immediate budgets but also compound into downstream spend, including maintenance fees and extended family management.

If you are focused on maintaining or growing a large patent portfolio, data analysis can help you identify applications facing extensive, difficult prosecution and decide whether those applications are worth the extra time and money or should be abandoned to protect resources.

Here are three parameters many high‑volume filers use to surface potential waste:

• Applications with examiner allowance rates under 25%
• Applications with unnecessary RCEs
• Applications with missed interviews

An unnecessary RCE might be defined as an application with at least six office actions, two or more RCEs, and no appeals, even though the examiner’s RCE win rate is substantially lower than their appeal win rate. Similarly, a missed interview might be flagged when there are four or more office actions with no interviews, and the examiner’s interview win rate exceeds their RCE win rate.

Combining these metrics with USPTO fees and built‑in attorney costs makes it possible to quickly estimate the average cost of prosecution for those problematic applications—and prioritize where to prune. Once you determine what an unnecessary RCE or missed interview looks like for your organization, you can better understand where resources may be misallocated.

Getting ahead of it: a strategic approach

Controlling costs without sacrificing outcomes means using data to make smarter, earlier decisions:

• Forecast long‑term spend upfront. Model the expected cost of each family—including continuations, appeals, and maintenance—before committing resources.
• Spot high‑cost outliers early. Use analytics to flag matters that are unlikely to yield value, enabling timely pruning or re‑strategizing.
• Give stakeholders actionable insights. Provide clear data on cost drivers and expected ROI, building confidence in budget proposals and resource allocation.
• Refine prosecution tactics. Incorporate examiner interviews, targeted claim amendments, and other strategies proven to reduce unnecessary office actions and RCEs.

For teams focused on select, high‑value inventions, these same metrics—unnecessary RCEs, missed interviews, and low allowance rates—still provide critical insight. Fewer matters mean more time to dive deeper, considering additional signals like forward citations or comparing office‑action counts to an examiner’s historical maximum allowed actions. If an application exceeds those benchmarks without citations or momentum, it may be time to redirect resources to stronger opportunities.

The result: measurable savings without compromising the strength or scope of your portfolio.

The right analytics tool can illuminate these patterns, helping you identify where costs can be reduced and where investment will deliver the most impact, before spend spirals into the millions.