Even if you have a patentable invention, there is no guarantee you will succeed in procuring a patent. However, from start all the way until the end of the patent’s life (e.g., 20 years from its filing date), procuring a single US utility patent could cost anywhere from about $15,000 – $30,000. This number is an approximation and it varies depending on a number of factors. It generally includes all of the following – filing fees, examination fees, search fees, fees to hire a patent draftsperson, prosecution fees, maintenance fees, issue fees, and attorney’s fees. Many of these fees are fixed (e.g., your attorney will make no money on them and is simply paying them on your behalf) and cannot be negotiated, such as filing, search, examination, maintenance, issue, and certain prosecution fees. For example, the USPTO charges every applicant filing a utility patent application a search fee, an examination fee, and a filing fee. If a patent application is allowed by a patent examiner, the USPTO requires that an issue fee be paid. If that fee is not paid, the USPTO will not issue the allowed patent application. If a patent issues, the USPTO requires that maintenance fees be paid at three separate intervals during the life of the patent in order to keep the patent enforceable. If these maintenance fees are not paid, the issued patent will expire and become unenforceable.
It is worth noting that these USPTO fees vary depending on the applicant. For example, large entities, such as a large corporation, typically pay the maximum for each of the USPTO fees. Smaller applicants, such as smaller companies or even individuals, typically pay half the fees that large entities, pay. Further yet, the USPTO recently created a third class of applicants called micro entities, whose fees are about half that of small entities. Qualifying as a micro entity requires that certain income levels be satisfied, and that the applicant be associated with an institution of higher learning.
Additionally, most all patent applications are provided with patent drawings to illustrate the invention. Because the USPTO has stringent requirements on what form the drawings may be presented in, it is common practice for patent attorneys to hire skilled patent draftspersons to prepare the drawings. This is a wise move because having the patent attorney prepare the drawings would almost certainly cost more than having a draftsperson prepare them.
Regarding attorney’s fees, these fees vary tremendously for two main reasons. One, some attorneys charge exorbitant fees for their services while others charge less. While often times paying a premium for patent services is a wise investment, other times it is not. Some patent attorneys are truly skilled, in high demand, and are justified in charging a lot for their services. If you believe your invention is complex and warrants the best, it may be advisable to pay that premium. However, there are many patent attorneys who can do an equal or better job than their high charging colleagues, and do it at a significantly lower cost. Two, some inventions are more complex than others. If an invention has many aspects that make understanding it difficult, then properly describing and claiming it will take more time, time which translates into a higher charge by the patent attorney. A common range of attorney’s fees to prepare and file a non-provisional US utility patent application is $4,000 – $10,000. This number is for the attorney’s fees alone. That is, it does not include drawing charges, filing fees, prosecution fees, etc.
Finally, regarding prosecution fees, these fees also vary tremendously. Once a patent application is filed with the USPTO, it gets assigned to a patent examiner, who is tasked with examining the application to make sure it complies with the necessary legal requirements. The patent examiner typically does one of two things initially – issue a Notice of Allowance, or more commonly, issue an Office Action. If the examiner issues the Notice of Allowance, all the applicant has to do is pay an issue fee and the USPTO will mature the application into an issued patent. When, however, the examiner issues an Office Action, the examiner is indicating that at least one portion of the application does not comply with the requirements necessary for patenting (e.g., 35 USC 101, 102, 103, or 112). If the examiner issues an Office Action, the applicant is given time to respond. The back and forth between examiners and applicants (e.g., inventors) is called prosecution. This back and forth can drive up costs.
Specifically, each time a patent attorney has to read, analyze, and respond to an Office Action, he or she is on the clock. Furthermore, Office Actions are generally classified as final and non-final. When a non-final Office Action is issued by an examiner, the applicant has certain rights. For example, the applicant has a right to an interview with the examiner, to discuss the merits of the case. During these interviews (e.g., conference calls or in person interviews), patent examiners are reluctant to withdraw rejections unless claims are amended. However, interviews can be useful to discuss with examiners what specific claim language will distinguish over a prior art reference.
The applicant also has the right to respond to the non-final Office Action without paying any additional government fees. Responding to a non-final Office Action can be thought of as giving the applicant one bite at the apple to persuade the patent examiner that the application is in condition for allowance. If that bite is unsuccessful, it is common that the patent examiner will respond with a final Office Action. Though it is possible to secure an interview with an examiner after a final Office Action, the examiner is not obligated to grant one. Additionally, it is very common that when the applicant responds to the final Office Action, via an Amendment or Response After Final, the examiner will require that additional fees be paid for the patent examiners time. These are called Request for Continued Examination fees.
In addition to prosecution fees with a patent examiner, prosecution fees via an appeal process can also drive up costs. Appealing an application is often done when applicants are dissatisfied with the quality of examination provided by the patent examiner. Whether it be because there has been extensive prosecution, or because an examiner is taking what the applicant believes to be a truly unreasonable position, appeal of a patent application to remove the case from examiner’s hands and place it before an appeal board may be the applicant’s only recourse to secure allowance. The cost to having an attorney draft an appeal brief and possibly a reply brief, for the appeal, can vary tremendously. If, as is good practice, the attorney has already presented sound arguments for patentability in an earlier Response or Amendment to the patent examiner, then applying those same arguments, buttressed by whatever else the attorney thinks is necessary, should be relatively inexpensive. However, if new arguments will need to be generated in the briefs, costs could increase. In any event, the cost that typical attorneys will charge to prepare an appeal brief can vary from between $2,000 – $6,000. Additionally, it is worth noting that if an applicant decides to appeal a patent examiner, the USPTO requires that a not insignificant forwarding fee be paid so that the Patent Trial and Appeal Board can hear the case.
This article was authored by John P. Powers, and is intended to keep readers current on matters affecting intellectual property and is not intended to be legal advice. If you have any questions about its content, please leave a comment below.
©John P. Powers, 2020, all rights reserved.