Can I get a refund if my patent doesn’t go through?

Callers often ask Colorado patent attorney Mark Trenner if the inventor is entitled to a refund if their patent doesn’t go through (that is, if the Patent Office refuses to issue a patent for their invention).

No. Mark Trenner’s Colorado-based patent law firm does NOT offer any refunds for work that has already been performed. Attorneys registered with the Colorado state bar are prohibited by attorney regulation from offering guarantees or warrantees as to outcome or result of a particular matter. This includes patent attorneys registered in the state of Colorado. Offering a refund may be considered a guarantee or warrantee, which as noted above is prohibited by the attorney regulations.

The reason is simple. Whether a Patent Office issues a patent for an invention depends on many factors. Most of these circumstances are out of the control of the patent attorney. For example, the Patent Office may refuse to issue a patent for an invention if the Examiner finds prior art that anticipates the invention or renders the invention obvious. Or the Inventor may decide not to pursue an invention any further once a patent application has been filed with the Patent Office.

Nor does the US Patent Office issue refunds for fees paid if the Patent Office refuses to issue a patent. The filing fee includes fees for processing the patent application, publication fees, and examination fees. The Patent Office has to collect these fees regardless of whether the Examiner ultimately decides to grant a patent for the invention.

Of course, there are ways to make better informed decisions whether to file a patent application for an invention. For example, an inventor can discuss their invention with a patent attorney to determine if the invention meets the minimum requirements for filing a patent application.

The inventor can also order a background search (also referred to as a “prior art search” because it is a search of inventions that have already been made public). While not a guarantee or warrantee of patentability, the prior art search gives the inventor a better idea of what types of related inventions are already out there, that the inventor may not have been aware of. If the prior art search turns up a prior patent application or issued patent that is identical to the invention (or so close as to render the invention obvious), then the inventor may decide not to even apply for a patent for their invention.