What will this Patent Application Cost me?

As with any other question you may ask a lawyer, the answer is that “it depends.”

 What does it depend upon?

1. Are you out to just preserve the potential for obtaining rights to just entice potential investors or in a rush to get something on file to preserve your rights?
2. Do you really want obtain rights for the long term and have the ability to exclusively manufacture or license such rights?
3. Do you want protect your rights domestically only or do you want foreign rights as well?
4. Do you know specifically what countries you want protection in or do you generally want to preserve your rights in most foreign countries?
5. What kind of patent are your looking for?

 

Let’s go ahead and answer these questions and give you an idea of the costs involved:

1. Are you out to just preserve the potential for obtaining rights to just entice potential investors or in a rush to get something on file to preserve your rights?

A: If you want to quickly preserve your rights to an idea because you need to disclose your concept publically or offer your concept for sale to a third party or if you just generally want to preserve your capital until you have a better idea of the viability of your idea, then it may make sense to file a PROVISIONAL PATENT APPLICATION. The costs typically run from $1000 to $3000 and the USPTO government filing fees are only $130. Note however that you do not get any rights from a Provisional Patent Application, only the ability to claim a Priority Date if, and only if, you follow up your Provisional Patent Application with a Non-Provisional Patent Application or a PCT Application claiming priority on the Priority Date of the Provisional Application within 12 months of the Priority Date. If you attempt to file the Non-Provisional or after the 12 months, you lose the ability to claim priority on the Priority date of the Provisional Patent Application.

 

2. Do you really want obtain rights for the long term and have the ability to exclusively manufacture or license such rights?

A: If you are thinking more strategically and have longer term ambitions with your idea, you will likely want to file a Non-Provisional Patent Application (aka, a Utility Patent Application). You can file the Utility Application directly or you can base the Utility Application on a prior Provisional Patent Application. Typical costs for Utility Application will also depend on the complexity of the case. Here are the various estimates:

Mechanical or electrical invention of average complexity: $4,000-8,000.

Complex electronic or computer inventions: $6,000-10,000.

Biotech or Chemical inventions may be expected to cost $8,000 or more with the required DNA sequence listings or other listings.

Internet Business Method inventions – $6,500 to $10,000. These inventions typically have longer than usual processing times at the USPTO due to filing volumes and the recent sensitivity of the USPTO to criticism for grants of such applications.

USPTO Fees for filing a Utility Application depends on the status or size of your entity. If you have less than 500 employees, you can file under the Small Entity Status and the USPTO filing fees will typically total $730 if filed electronically for the Small Entity. A Large Entity (500 employees or more) will pay close to double these USPTO filing fees.

The USPTO also adds additional fees for more than 3 Independent claims and for more than 20 claims overall. There are also additional fees for long applications over 100 pages. You can also have you application examined in an expedited manner (using the Track One option), but at a very high additional cost.

There are additional costs that will come down the road as well:

Office Actions: About 18-24 months after you file your application, your application will be examined by a Patent Examiner, and almost always will be rejected to some extent (85-90% of applications receive at least one office action). The rejections may be as to matters of form, or the Examiner may have found patents in his search which he feels are identical to your invention, or which might render your invention obvious.

 You will have 3 months to respond to the Office Action by amending the claims, arguing against the rejections, or both – this time period can be extended up to a total of six months from the date of the Office Action by paying extension fees. It is not possible to have a set fee for such responses, because the office actions vary so widely in content. Our fees for preparing a response are based on our time – if possible, we will provide a quote for responding to an office action when we send the action to you.

 As a very general ballpark estimate, a response to a relatively uncomplicated office action is usually in the $1,500-$3,500 range. If there are a large number of claims to amend, or many references cited by the Examiner, or if we need to prepare affidavits from experts or have personal interviews with the examiner, or if appeals, etc. are required, there will be additional time and PTO fees involved, which are impossible to estimate in a general way.

 Finally, of course, there is no guarantee as to the number of times which we may need to respond to the Patent and Trademark Office (USPTO), or if it may become necessary to appeal a rejection, or if your patent application will ever issue as a patent at all.

3. Do you want protect your rights domestically only or do you want foreign rights as well?

A: The costs noted in #1 and/or #2 above describe the costs domestically.

4. Do you know specifically what countries you want protection in or do you generally want to preserve your rights in most foreign countries?

A: You must file in other countries within one year of filing your US patent application. You can buy yourself more time by filing a Patent Cooperation Treaty or PCT Application with WIPO. A PCT Application will give you 30 months from the Priority Date to make your foreign filing decision and will also provide a single forum that provides a search and written opinion regarding patentability that can be persuasive with many jurisdictions once you do decide to foreign file. We can assist you in foreign filing, through a network of foreign agents with whom we work. International protection for patents is a very expensive proposition and you should budget accordingly.

A PCT Application typically makes sense when you believe you want foreign protection, but you are unsure where you might want to file and are possibly unsure of the patentability or scope of protection you might ultimately obtain. The PCT applications affords you sufficient delay to determine the marketability of your product and further delay the major costs of foreign filing until you have some idea of how US patent prosecution will fare. After the expiration of the 30 months (or more in certain jurisdiction) you will need to file national or regional patent applications in the countries you desire protection. The cost to file a PCT application is approximately $4,000, mostly in government fees.

There is no such thing as an “international patent”, although there are a few regional patents covering some countries such as the EPO for the European Union countries, ARIPO and OAPI in Africa, and Eurasian Patent covering Russia and some of the former Soviet republics. You will need to file for a patent in each country in which you will want patent protection.

Estimating the total cost of foreign filing varies on the countries selected, the method of filing pursued, the fees of foreign patent agents in each country, exchange rates, translation costs, number of claims, among other things.

A budget of $10,000-$15,000 would be realistic for a single foreign country, other than Canada. Canada generally rubber stamps what is done in the United States and the costs are relatively inexpensive compared to other countries. Expect additional costs later for analyzing and responding to foreign office actions, paying maintenance fees or annuities, and other items. Many countries have additional fees to request examination, and many have annual annuity fees payable during the pendency of the application and after the patent issues.

In Europe you can file in each individual country or via the European Patent Office (EPO) and designate the desired countries within the EPO. If you are interested in filing in three or more EPO countries, it typically makes financial sense to file via the EPO rather than through the individual countries. The application may be filed in English. The cost to file is similar to that for filing in one single country ($10,000-$15,000). Once the EPO patent issues, it may then be registered or validated in those European countries in which you will want protection, and may need to be translated into the respective languages for those countries. Expect an additional $3,000-5,000 per country in translation costs and maintenance (or annuity) fees in both the EPO and most European countries.

 5.  What kind of patent are you looking for?

A:  The patents described above are with respect to Utility patents that cover the functionality of an inventive concept.  Utility application typically afford broader protection.  Note that there are other types of patents that cover certain types of plants known as Plant Patents.  There are also Design Patents that cover the ornamental or aesthetic aspects of a product design.  Design Patents typically cost around $2000 in attorney fees, plus USPTO government fees and sometimes additional fees for drawing preparation by a third party patent draftsperson.