PATENT APPLICATION PROCESS

The costs associated with patenting of inventions

How Much Does a Patent Cost?

A patent application will be prepared for a fixed fee ranging from $2,000 to $8,000 depending on the complexity and quality of the invention disclosure. USPTO fees are not included. For a small entity, the USPTO charges $530 in the initial filing fees. These fees consist of a search fee ($310), examination fee ($125) and the filing fee ($95).

Applicants must know that the likely total cost of the entire process to obtain a patent can be considerable because it also includes legal fees of patent procurement after the filing of the patent application and the fees for the publication and issue of the patent in the amount of $1,170. These prices are subject to change.

Do I Need a Patent for a Design, an Invention, or a Plant?

See the frequently asked question section that describes what can be patented in each category and what actions may lead to the loss of the rights to the invention.

What is a Small Entity?

To receive a discount rate of a small entity, you must be an individual inventor or a small business, which has not sold the rights to the invention to a big organization. The United States defines a small entity as an independent inventor, small business or nonprofit organization. The small business must have fewer than 500 employees, including affiliates. Those small entities that have transferred their rights to large organizations, or must transfer those rights under a contract, cannot receive the discount. If you are a small entity, the government gives you a 50% discount on many of the costs associated with the filing and procuring of patent applications.

Costs Associated with a Patent Application

The total estimated cost of preparing and filing of an application must be paid at the time of signing the contract. If the sum is greater than expected, I will send you an additional invoice after the application is filed. If the amount is less than expected, I will refund the difference.

Procurement

For applications, which were initially filed by me, I can guarantee the legal fees (up to the final decision by the examiner) not to exceed a certain fixed amount (depending on the field and complexity of the application). Other services, such as appeals and petitions are not covered by the fixed price. These services will be paid separately.

Patent Grant

Upon granting of a patent, the USPTO charges $1,170 for the issue and publication. I charge a fixed fee for preparation and filing of patent documents related to the issue of the patent.

Additional Costs

I use the Internet to ensure that the additional costs of preparing patents remain low. Unlike most firms, I will prepare simple patent drawings at no extra cost. However, more complex drawing may require services of an experienced drafter. Drafters may charge anywhere from $75 to $150 for each illustration. In an unusual case where such services are required, I may ask you to cover these charges.

How Can I Pay for the Services?

I accept major credit cards and checks. I also accept payment by the electronic payment system, PayPal.

Large Number of Claims

Additional fees are charged in cases where the number of claims is more than 20 or if the claims are complex.

Assignment of Rights to the Application

If the inventor wants to assign the rights to an invention, the Patent Office will charge additional $40. I will charge a fixed fee for the preparation and transmission of documents necessary to effect the assignment of rights.

Maintenance of the Patent

For small entities, the government charges a fee of $870 for the issue and $300 for publishing. Additionally, if the owner of the patent maintains a patent over the entire (20 years) life, the maintenance could cost up to $4,355. The maintenance fee is payable in 3.5 years ($565), 7.5 years ($1,425), and 11.5 years ($2,365) after the issuance of a patent. The Patent Office charges large entities twice this amount, with the exception of the publication, which is the same for small and large organizations.

What Happens During and After Filing of a Patent Application?

What is Filed?

An application is drafted based on your description of the invention and, together with other required documents will be submitted electronically. An application may be drafted within one month. If the deadline to file the application is about to expire, and you want to get an extra year of protection, you can file a provisional application, which should fully describe the invention.

What Happens After Filing?

The Patent Office will examine the application as well as search the prior art to determine whether the invention is novel and not obvious. Typically, the examiner will send a letter rejecting all or some claims of the application in view of the prior art. At this stage, I must respond to the letter. A typical response may include a meeting with the examiner (personal or telephonic) to discuss his position and what measures are needed to overcome his objections. After that, I will prepare and submit arguments, and/or amendments to the claims, specification, and the drawings, in accordance with the agreement reached at the meeting. This process is called patent prosecution.

How Long Does the Process Take?

Typically, the entire process, from the filing of the patent application to the issuing of the patent is from 1 to 3 years (depending on the field of the invention).

Is it Possible to Determine the Chances of my Application to Materialize into a Patent Before I Spend All This Money?

Yes, in part. I can search the prior art in order to make a preliminary determination of patentability. The search is typically performed against U.S. patents and published applications and is not a search and analysis of all existing documents that can be used to determine the prior art. This approach will usually be sufficient to determine whether to file the patent application at all.

Other Options for Filing of Patents

International Applications

Patents granted by the United States of America carries a "right to prohibit others from making, using, offering for sale, and selling the invention in the United States or importing the invention into the United States.” A patent issued by the USPTO only protects the invention in the U.S.

If you wish to protect you invention in other countries, I can prepare and file a PCT application. Typically, this application is filed within one year from the date of filing a patent application in the United States. Please note that after the international stage expires (a maximum of about 31 months from the date of filing or priority date of the PCT), you must use the services of an attorney in the country where you want to receive patent protection. Typically, the costs associated with a PCT patent are around $25,000. Please see the web page of this site explaining the process of filing the PCT application. You can also write or call me for more information.

Provisional Applications

If you have a complete description of the invention, preparation of the provisional application would require only a few days. Filing of the provisional application will add about $705 to the overall costs of patenting your invention. A provisional application is valid for one year, during which the non-provisional patent application must be prepared and filed in order to take advantage of the priority date of the provisional application.

What I Would Like You to Provide in Order to Use my Services

Start with information about what your plans are and a brief description of what you have invented (without divulging any details).

If you use email, I recommend that you send me the information in a password protected attachment. I will review your information free of charge. If I determine that there is no conflict of interest and agree to represent you, you will be asked to sign a retainer that obligates me to represent you and includes details and fees for legal services provided.

After receiving and considering the retainer agreement, you can sign it electronically and send it back to me. If you are more comfortable signing the contract on paper, you can send the contract or fax it along with a description of your invention. If you already have a description of the invention, it would be great if you could also prepare hand sketches or drawings. In your description, you must indicate how you think the invention is improving existing technologies or processes, and what problem it solves.

Your activities related to attempts to sell or sale of the invention, and with whom you talked about the invention are essential for patenting. Please specify these facts and when they occurred. In general, U.S. patent law prohibits the issuance of a patent, if any attempts to sell or sale have occurred, or if the invention was described in a publication more than a year before you applied.

If you are applying for a patent in the USPTO, you will have to sign a statement promising to reveal all the facts about the prior art known to you that might affect the patentability of your invention. Hiding these facts can lead to the invalidity of your patent.

2225 East Bayshore Road

Suite 200

Palo Alto, CA 94303

(650) 646-4020

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This web site represents my best understanding of the subject matter contained therein. However, I cannot promise that everything on this website is complete or up to date. The materials on this website are for informational purposes only and should not be construed a legal advice or legal opinion. If you choose to rely on anything that you find on this web site, you do so at your own risk. No warranties, representations, or claims of any kind are made concerning the information presented on this website. I highly recommend that you seek to enter into an attorney-client relationship, before acting on any information found on this site. I expressly disclaim all liability to any persons in respect to the consequences of anything done or omitted to be done wholly or partly in reliance upon the use or contents of this website.