What Does it Cost to Obtain a Patent?
A frequent question I receive is what does it cost to actually obtain an issued patent, start to finish. The answer is “it depends." It depends on the complexity of the subject matter, the number of inventive concepts disclosed and claimed, and the number and severity of office actions received by the U.S. Patent and Trademark Office.
The initial costs for preparing a patent application and getting a patent application on file are easier to estimate and will be the only costs incurred for many years.
The average legal fees for preparing and filing a regular application charged by U.S. patent attorneys across the U.S. for a patent application of minimum complexity (10 page specification, 10 claims) was $7879 according to a survey published in 2009. Of course, very few patent applications are this simple. This should be considered a minimum average fee. For a relatively complex biotechnology or chemical patent application, the average fee for preparing and filing was $12,313. For a relatively complex mechanical patent application, the average fee was $9,699. For a relatively complex electrical or computer patent application, the average fee was $13,227.
In addition to attorney fees, there will be government fees. Government fees can be found at www.uspto.gov and go up every year. The government fees for filing will depend mostly on the number of claims filed and the size of the application and include a basic fee, a search fee, and an examination fee, all of which must be paid at the time of filing. Expect government fees for the filing to be at least $545 for a small entity (roughly defined as a company having under 500 employees). Government fees are typically double for large entities. If there is an assignment from an individual to a company, there will also be a charge for that, about $150 of legal fees, plus government fees. There will also be a charge of about $150 for submitting an information disclosure statement of known prior art to the government.
If an inventor or applicant requires multiple revision and review cycles, this will increase fees dramatically. This is particularly true if there are a large number of inventors who review and provide separate comments and feedback. A lead inventor should be appointed to obtain and combine comments from all inventors and to make sure inventors do not disagree with each other. Changing an invention while the application is being drafited can cause fees to double. These fees are for preparing and filing only, and in the U.S. only.
Additional fees should be expected for reporting and responding to further Office Actions as they are received from the Patent Office, as well for a possible Request for Continued Examination and/or appeal, as well as issue fees.
It is possible that a restriction requirement will be received and that divisional applications may optionally be filed at additional expense, at the Client’s discretion.
It should be noted that most countries outside the U.S. are absolute novelty countries. A patent application must be placed on file in a convention country (such as the U.S.) before publication of the invention in order for the foreign application to be valid. Most foreign countries significantly limit the amount or type of disclosure which can be made prior to the inventor's filing of the U.S. patent application, if counterpart patent applications in those countries are not to be barred. Many countries permit little or no prior disclosure; this is called the "absolute novelty rule." For U.S. inventors, these foreign rules effectively negate the one year grace period that the U.S. provides.
All time spent on behalf of an applicant not directly related to preparation of the patent application, including time required for responding to questions or other counseling, time responding to mistakes made by the government, time for considering or responding to phone calls, faxes or e-mails whether by client, foreign associates, or the government, will typically be billed to the client on an hourly basis. This time may cause a firm to exceed a quote. Applicants should seek clarification prior to requesting a service that may be outside the scope of patent application preparation work.
The above fees are for filing only, not for actually securing patents. Office Actions will be received periodically from the U.S. Patent and Trademark Office. In a negotiation session, the patent office tries to limit applicants very specifically to what they have invented, while the Firm tries to argue for protection of a wide range of alternatives. The first Office Action is typically a rejection, and is usually received 18 months or more after the application is filed. There are usually no government fees for filing the first response. A response is typically prepared by a firm within 3 months of receipt of the first Office Action. The average fee for responding to an Office Action of minimal complexity (rare) was $2,322 according to the survey published in 2009. For a relatively complex biotechnology or chemical case, the average fee for responding to an Office Action was $3,819. For a relatively complex electrical or computer response, the average fee was $5,021. And for a relatively complex mechanical response to an Office Action, the average fee was $3,135.
After a response is filed, second and subsequent Office Actions are typically received from the U.S. Patent and Trademark Office within about 6 months of filing of a response. Typically, at least three responses to Office Actions will be required to put an application in condition for allowance with reasonable claim scope. Frequently, the second Office Action is Final, and a “Request for Continuation" application involving another government filing fee, and one or two more responses to Office Actions is required to obtain reasonable claim scope or any allowance at all. In other words, multiply the response fee above, based on the technology, by three and add one government fee.
So for a complex electrical or computer case, assume that you will have at least $5021x3 plus $545 (small entity government fee) or $1090 (large entity government fee) in prosecution costs before receiving a Notice of Allowance, for example.
Occasionally, it may be advisable to appeal a rejection to the Board of Interferences and Patent Appeals in order to have an issue considered by someone other than the Examiner. The average legal fees for preparing a written appeal brief were $5,547 without oral argument. There are additional government has fees for filing a notice of appeal (currently $270 for a small entity) and for filing an appeal brief (currently $270 for a small entity), so $540 in government fees for a small entity for an appeal brief.
If all goes well, and no appeal is required, a patent will issue in about three to four years after the application was filed. Upon allowance of a patent, there will be a government issue fee and publication fee (currently totaling $1055 for a small entity and $1810 for a large entity), and a firm will charge a service fee of about $858 to attend to payment of the issue fee.
In summary, it is recommended that clients have a budget of about $25,000-$35,000 to obtain a patent, start-to-finish. However, it should be noted that, after filing, it may be several years before further expenses are incurred. Applicants may abandon the proceedings at any step along the way.
To maintain each U.S. patent in force for its full term, government maintenance fees will be due three and a half, seven and a half, and eleven and a half years after the patent issues. Applicants can expect these government fees to increase by the time they will need to be paid. Applicants should watch these dates or hire a service provider (an “annuity service") to watch these dates and pay these fees. The maintenance fees cannot be paid in advance.
Current government fees can be found at www.uspto.gov and are subject to change.
These are average fees only and may vary drastically depending on the complexity of the technology, and seriousness and number of Office Actions received by the U.S. Patent and Trademark Office before claims of reasonable scope are allowed.