© Copyright 1993-1998 Oppedahl Patent Law Firm LLC.
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© Copyright 1993 to the present, Oppedahl Patent Law Firm
LLC.
Disclaimer: This is not legal advice. Click
for information on the purpose of this page.
The cost to get a United States patent is made of several components. These include the cost to prepare and file a patent application, various prosecution costs, and the issue fee. Some of the costs are payable to the Patent Office. After the patent has issued, keeping the patent in force requires paying maintenance fees to the U.S. Patent Office after 3 1/2, 7 1/2, and 11 1/2 years. Many of the Patent Office fees are discounted for applicants who qualify as small entities (generally, all individuals and organizations except for-profit businesses with 500 or more employees). The filing fee, depending on the number of claims in the application, can be anywhere from about $400 to $1,000 or more. But for most applicants, the main cost item in the patent application is the professional charges by the patent attorney or agent preparing the patent application.
At Oppedahl Patent Law Firm LLC, our experience is that a patent application covering something that is very simple and easy to describe can cost the applicant as little as $2,000 to file with the Patent Office. Other inventions, especially inventions that are very complicated or have substantial electronic or software content, can cost as much as $8,000 or $10,000 or more to be filed with the U.S. Patent Office.
These costs may seem quite high. However, patents are only intended to protect commercially useful inventions, and patent costs are generally small compared to the costs of turning an invention into product, and then of marketing and selling the product. If you do not have good reason to believe that the profits from the invention will greatly exceed the costs of getting the patent, you probably should not be patenting the invention.
© Copyright 1993 to the present, Oppedahl Patent Law Firm
LLC.
Disclaimer: This is not legal advice. Click
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We are sometimes asked if the cost of preparing the patent application can be reduced if the applicant prepares a first draft of the application. It is not possible to answer this question in advance, since it is not possible to know whether the draft application which will be prepared by the client will be suitable for use in preparing the final application.
For many draft applications prepared by clients, it turns out to be more expensive for us to fix up the application than it would have been for us to prepare it from scratch. This is not lost on some potential clients, who might ask us to review a client-prepared draft application to arrive at an estimate of the cost involved in making the application suitable for filing. When one considers the extraordinarily varied ways in which a draft application might be flawed, many of which are subtle and take time to find, one may appreciate that simply reviewing an application to arrive at an estimate of the time required to fix it may take as much time as preparing an application from scratch.
There are rare exceptions to the general rule that little or no money is saved through a client's preparation of a draft patent application. One client of the firm of Oppedahl Patent Law Firm LLC has a very consistent track record of preparing applications that are of very high quality and are very close to being in form for filing with the U.S. Patent Office. That particular client probably saves several thousands dollars with each patent application, by preparing a first draft.
In contrast, we have seen draft applications which were not particularly usable; in several cases, we found it more economical for the client if we simply scrap the application and to start from scratch.
It is nonetheless always helpful for the patent attorney or agent to receive anything and everything the client has written about the invention. And it is helpful to receive it in computer-readable form in case some of it is usable in the patent application. The foregoing discussion is simply meant to emphasize that when the client provides lots of written matter about the invention (which never hurts and generally helps) the result is not so much the savings of money as an improvement in the quality of the patent application that results. Thus, the client should not focus so much on writing a patent application as on gathering and organizing the information that will go into the patent application, especially the description of the invention and the relevant background information about the prior art.
Nonetheless, it is perfectly reasonable for a client or a potential client to want to have some idea what things would cost. Without knowing the particular subject matter involved, a patent attorney or agent can only answer in generalities as to the cost of a patent application. After hearing about the subject matter, the attorney or agent can usually give a more specific estimate of the cost to prepare a patent application.
If you apply pro se (that is, filing an application yourself, without a patent attorney or agent), the largest single expenditure is typically the Patent Office filing fee of $500 or more. If you retain a patent agent or attorney you can expect to pay for many hours of that person's time at some standard billing rate, leading to total costs as of filing the application of some higher amount. Depending on the billing rate and the time required it is common for a patent application to cost $2,000-$3,000 at the low end of the scale, or $10,000-$15,000 or more for a complex application.
Patent agents and attorneys vary in billing rates and in billing practices. Some, although not very many, will quote a fixed price for preparation of a (utility) patent application.
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© Copyright 1993 to the present, Oppedahl Patent Law Firm
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As of October 2008, the patent office filing fee is $220, or $110 for small entities. Some firms are willing to assist inventors in filing provisional applications, in which case the total cost of the provisional filing includes the attorney's fees.
Many patent firms, including Oppedahl Patent Law Firm LLC, generally
decline to represent an inventor if the only service desired is the filing of a
provisional application. The reason is simple: it is all too easy to file a
provisional application which would fail to satisfy 35 USC § 112. (See
pitfalls of provisional
applications.)
The time and effort that would be required to draft
proposed claims, to check the provisional application to be sure it supports
those proposed claims, to check for best mode and enablement, and to otherwise
pass upon whether the application meets §112, go a long way toward the
time and effort required to prepare and file a complete (section 111(a))
application.
We do, from time to time, perform the service of filing what we call a "shovel" provisional patent application. With this type of provisional patent application, we take what is received from the client and "shovel" it into a provisional patent application unread, and file it with the USPTO. It must be understood by the client that we are not responsible if it later develops that the application fails to satisfy 35 USC § 112. For this our firm may charge a professional fee of $400 or more.
If an inventor has already filed a provisional application, and comes to us, we will counsel the inventor to get a complete (section 111(a)) patent application filed right away, just as if no provisional had been filed at all. If someone comes to us with a disclosure and asks us to prepare and file a section 111(a) application, we will generally file a provisional patent application right away based on the disclosure (since there is some possibility that the disclosure satisfies§ 112) and then settle down to preparing the 111(a) application.
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LLC.
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The cost to file a PCT application is affected by several factors, including the choice of receiving office, the particular patent office that is designated to perform the international search, and the number of pages in the application. The firm of Oppedahl Patent Law Firm LLC has filed PCT applications for which the cost to file was as little as $2,000 or as much as $9,000 or more. If a PCT application is to be filed using the US Patent Office as the Receiving Office, the fees are listed in the PTO fee schedule.
PCT patent applications are administered by the World Intellectual Property Organization.
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LLC.
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The cost for patent filings varies greatly from one country to the next. For someone who has already filed a patent application in the U.S., the cost to file in Canada, to give one example, is typically under $1,000. In contrast, a filing in Japan, which requires translations, might cost $12,000. In some countries the number of claims influences the cost, in others it is the total page count. Anyone who is attempting to make a decision about whether to do foreign filings in a number of foreign countries would be wise to seek advice from a patent attorney or agent who has done many filings in foreign countries; an experienced attorney or agent can provide some estimate of the cost of the filings.
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LLC.
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Most tasks carried out by Oppedahl Patent Law Firm LLC are billed by the hour, at our firm's billing rates (which are adjusted annually). Thus, any answer to a question of what something costs turns on our estimate of the number of hours something will take. The actual number of hours sometimes turns out to be more, and sometimes turns out to be less, than the estimate.
The opinion regarding whether something is obvious (or, what is really the point, patentable) is always necessarily given relative to a particular collection of prior art. And the opinion is nonsense unless it is with respect to particular proposed patent claims, claims that are written to cover the invention. Thus, claims (at least, first-draft claims) have to be written. This would surely cost $200 or more. Claim drafting is, after all, one of the most difficult areas of patent practice. So, unless you have already drafted some claims and are sure they are good claims, you will need to allow for some professional time for claim drafting.
The breadth of the claims that are considered in reaching the opinion is also quite important. Generally speaking, the narrower the claims are, the more likely they would be patentable. On the other hand, if the claims are quite narrow they are also less likely to be economically important, since it is less likely anyone would ever infringe them. This is an area where some inventors get misplaced hopes if the breadth of the claims is not explicitly discussed. An inventor may ask "can I get a patent?" to which the answer can be "yes" so long as the claims are quite narrow (and thus worthless).
The next issue is for you to decide what collection of prior art you wish to have used in forming the opinion. If the collection is small, the time required to form an opinion is small, but the opinion is of limited comfort since there is lots of other prior art out there (probably) which could interfere with getting a patent. If the collection is large, then money was, of course, spent to accumulate the collection. And it takes a long time to consider all of the art in reaching the opinion. But the opinion will provide a higher confidence as to the outcome if a patent application is filed.
One choice is to form an opinion with respect to the particular prior art found by the inventor in the inventor's own search, perhaps conducted online (e.g. at the US Patent Office or at the World Intellectual Property Organization) or by means of a visit to a patent depository library. The value of such an opinion turns on how confident you are that your search was thorough. Such an opinion might cost $200 or more if delivered orally, and $500 or more if delivered in writing. This assumes you have already drafted your own claims or have already budgeted for professional drafting of at least first-draft claims.
Another choice is to hire experienced counsel to do some online database searching to augment whatever searching the inventor has already done. That would cost $200 or more for professional time and $50 or more for the database charges. The augmented collection of prior art is then compared with the claims and an opinion reached as to patentability. We encourage clients to consider developing their own in-house capability for searching on the comprehensive online databases such as Dialog, STN, and Orbit, and to become familiar with the above-mentioned US Patent Office and WIPO resources. Effective searching in these databases requires keeping up to date through frequent use, so those clients who would search only rarely are perhaps wise to have experienced counsel do the searching.
Still another choice is to have a searcher do an in-person search at the USPTO public search room to augment your search. That would cost at least $500. The augmented collection of prior art is then compared with the claims and an opinion reached as to patentability. Most professional searchers take at least a few days to do searches, while the online searches can be done much more quickly, a factor that sometimes discourages the use of a professional searcher.
There comes the occasional client who wants to get the strongest patent possible. In some bet-the-company situations, it is more important to scour the earth for prior art, before filing the patent application, than it is to save money. When this arises, depending on the particular technology area, we may recommend online searches, in-person searches by patent counsel at the patent office, and other searches of non-patent literature.
In all of this, it must not be forgotten that:
You can thus see that the cost of a patentability opinion depends on many things. You can add up the different components -- the claim drafting, the online searching, the in-person searching, the reaching of the opinion. The answer is anywhere from a couple of hundred dollars to a thousand dollars or more. In some cases it might cost more to reach a patentability opinion than simply to prepare and file the patent application. For some clients, what makes sense is to do some online searching, order up copies of the references, and draft and file a patent application based on what is found. This is done with the knowledge that the patent examiner, who can search references in person looking at the figures, may find prior art that we did not know about. It is also done with the knowledge that the examiner gets to see pending patent applications, and we don't.
Some potential clients ask if they can have a flat rate quoted for a search or for a patentability opinion. The answer is "yes", but we arrive at such a flat rate by the simple step of figuring out the largest amount of time the work is likely to take, and asking to be paid that amount. For most clients, then, the money-saving strategy is to pay us in our usual way, which is by the hour.
Having said all this, the natural next question is, what is the best way to go forward with patent counsel? In some cases, of course, it is easy to go in person to see the patent counsel and to discuss the costs of the work and the nature of the invention itself. In this modern world of email, faxes, and overnight courier delivery, it is also possible to imagine proceeding without having met one's patent counsel in person. Several things can be said about all of this. First, one should not send one's invention to any patent professional without getting permission in advance to do so. Most patent professionals necessarily discard such things unread, since there is the possibility the professional will have a conflict of interest due to some existing client. Second, unless prior arrangements are made for encryption (e.g. via PGP) it is unwise to use the Internet to communicate the invention.
At Oppedahl Patent Law Firm LLC, with any new client we have to do a conflict check to see whether or not we can accept the client. If the conflict check is clear, then after some discussion by email or telephone we ask for payment in advance of a deposit, which we hold in escrow to be applied toward the bill that is rendered later. Thus the deposit is a crucial part of the first package sent from the client to us. Also in the package would be drawings of the invention, text description of the invention, copies of prior art already found, and related materials.
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© Copyright 1993 to the present, Oppedahl Patent Law Firm
LLC.
Disclaimer: This is not legal advice. Click
for information on the purpose of this page.
Before taking steps in reliance on the tax status of an expenditure you should obtain tax advice from a qualified tax advisor. Here are some general comments to assist you in determining what questions to ask your tax advisor. Generally speaking, money spent to obtain a capital asset is deductible only through depreciation. Similarly, legal bills expended to acquire an asset with a limited life, such as a lease, are typically only deductible in the same manner as the underlying capital spending. Under the U.S. tax law, however, research and development expenses enjoy a tax preference in the sense that they can typically be expensed in the year in which the expense was incurred. Generally, the money spent to obtain patent protection for the inventions resulting from research and development is similarly deductible as an expensed cost in the year in which the bills were incurred. However, correct tax advice depends a great deal on the individual situation, so please consult your tax advisor about this subject, and do not rely upon these comments as tax advice.
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