What is required to obtain a patent?
Your invention must be of a type that is patentable, e.g., an article of manufacture such as a tool, chemical compound, or an improvement in electronics or computer systems, and must not have been sold, offered for sale, or described in a publication more than a year prior anywhere in the world. Foreign patents can typically only be obtained for things that have never been sold or published anywhere prior to the filing.What are my costs?
The cost of obtaining a patent depends on the type of patent being pursued, and whether or not a draftsperson is needed to prepare drawings. The government fees depend on the financial status and size of the applicant.
All costs involved with the patent process are based on the entity status of the applicant. Entity status of the applicant is qualified as either "Micro", "Small" or "Large". Micro entity status may apply if the applicant has not applied for more than 4 previous U.S. Patent Applications, and if the applicant meets certain income eligibility requirements, some details of which can be found here. Small entity status may apply if the applicant is a small business or individual who does not qualify for Micro entity status. Large entity status applies when the applicant has 500 or more employees.
If the “thing” that is new is the manner in which the invention works, the way it is made, or the way that is put together, then a Utility Patent is the type of patent that typically applies. The legal fees for preparing a Utility Patent Application range from $3,500 USD (e.g., very simple mechanical devices and household items) to $12,000 USD (e.g., complex electronic systems, complex software). The cost of professionally-prepared patent drawings typically ranges from $400 to $1200, depending on complexity and the number of drawing sheets needed to illustrate construction and use of the invention.
If what is new is the appearance, e.g., the shape or surface decoration of an object, then a Design Patent is the type of patent for which an application should be made. The legal fees for preparing a Design Patent Application, including drawings, typically range from $500-$1500, depending on the number of versions (embodiments) of the design and/or the number of drawing sheets being filed.
The U.S. government filing fees required for filing a U.S. Patent Application are currently:
Design Patent Application Government Filing Fees (as of September 2019) | ||
Entity size: | Micro | Small |
$240.00 | $480.00 | |
Utility Patent Application Government Filing Fees with 20 Claims (as of September 2019) | ||
Entity size: | Micro | Small |
$430.00 | $785.00 | |
Please note that the USPTO fees change periodically, and the fee tables above are provided for general reference. Consult the United States Patent and Trademark Office website for the most up-to-date fee schedules.
What is the process?
The process of obtaining a patent may start with a Patentability Search, in which databases are searched to reveal publications that are most relevant to your invention. A search performed by you or your Patent Professional is optional, but some cases may reveal “prior art” that may show that your invention either already exists, or that would make your invention obvious.
Upon receiving the results of the search, or without performing a search in some cases, drawings are made and the patent Specification and Claims are drafted by the Patent Professional. After the inventor(s) reviews and assists in revising, the application is filed.
After a time that typically averages two years, the U.S. Patent and Trademark Office will issue an Office Action. The Office Action may be a Notice of Allowance, requiring only payment of an Issue Fee for a patent to issue. More typically, the Office Action will be either a Restriction Requirement requiring election between multiple inventions/versions of the invention, or the Office Action rejects some or all of the Claims based on prior art. In any case, a response is required that may require additional USPTO fees, e.g., an Issue Fee in response to a Notice of Allowance, and legal fees commensurate with the complexity of the response.
After responding to the USPTO, you may receive a Notice of Allowance, or you may receive a Final Rejection, in which case it would be necessary to either Appeal or file a Request for Examination in order to continue pursuing the U.S. Patent Application.
After a Notice of Allowance is received and the Issue Fee is paid, the USPTO will issue a U.S. Patent, typically within four weeks of the Issue Fee payment.
After issue of a U.S. Patent, Maintenance Fees are required at 3.5, 7.5 and 11.5 years from the date of issuance, and which increase by entity type and over the life of the patent. At 20 years after filing, the patent expires. Design Patents do not require maintenance fees, but expire after 14 years.
Please note that the USPTO fees change periodically, and the fee tables below are provided for general reference. Consult the United States Patent and Trademark Office website for the most up-to-date fee schedules.
Issue Fees (as of September 2019) | ||
Entity size: | Micro | Small |
Design Patent: | $175.00 | $350.00 |
Utility Patent: | $250.00 | $500.00 |
Utility Patent Maintenance Fees (as of September 2019) | ||
Entity size: | Micro | Small |
3.5 year: | $400.00 | $800.00 |
7.5 year: | $900.00 | $1800.00 |
11.5 year: | $1850.00 | $3700.00 |
What is a Provisional Patent Application?
A U.S. Provisional Patent Application is a placeholder that is not examined and does not become a U.S. Patent unless a regular (non-provisional) Utility Patent Application is filed. Because the U.S. Provisional Patent Application must contain the same support for the Claims that will eventually issue that a regular Utility Patent Application needs to contain, a professionally prepared Provisional Patent Application requires essentially the same effort as the regular Utility Patent Application, resulting in little difference in the amount of time involved in preparation, and thus the legal fee portion of the costs.
International Protection
Protecting an invention in the U.S. provides protection against import of infringing goods, but in some cases it is desirable to go further, for example, when an intended market is outside of the U.S., and manufacture of the goods is expected to also occur outside of the U.S. Typical costs to file outside of the U.S. vary by country, but usually range from $2000 to $5000 U.S.D., in addition to the cost to prepare the U.S. Patent Application or the equivalent prior to translation (if needed) and filing outside of the U.S. Filing of foreign patent applications must typically be made within one year of the first filing of a previous priority application, such as a U.S. Patent Application, unless the PCT process described below is followed and such an application is filed within one year Also, if the invention has been publicly known prior to the filing date of the U.S. Patent Application, it is generally not feasible to seek international protection due to the requirement of absolute novelty at the time of filing outside of the U.S.
What is an International (PCT) Patent Application?
A PCT application is a place holder similar to the U.S. Provisional Patent Application described above, except that the PCT application will be subject to a search, and upon filing of a Demand for examination and the required fees, the PCT application is examined by the Examining office of the World Intellectual Property Organization (WIPO). The applicant, whether or not examination is demanded, has 30 months from the earliest priority date to “nationalize” the PCT application by filing in one or more designated countries that participate in the PCT agreements. Cost-postponement, versus filing directly in countries of interest, is obtained via the delay of 30 months, but generally the total cost is greater than directly filing in countries of interest. The PCT application may be the original filing, or may claim priority to one or more previously-filed “priority” applications, and filing must be made within one year of the earliest-filed priority application.
Disclaimer
The content of this website is provided for information only. Intellectual property law is a fact-intensive area and information obtained by reading the content of, or interaction with, this website is not a substitute for trained legal counseling. No attorney-client relationship should be construed to exist with the firm or the attorney without a written engagement letter or receipt of your payment for legal fees to the firm.