United States Design Patent Budget Estimate for a non-complex invention
Known as Schedules A & B to the Attorney-Client Fee and Representation Agreement
There are many factors that can influence this, such as the type of patent desired, technical complexity of the invention, the number of embodiments (versions) of the invention, size of the inventors company, how many countries you want patents in, issues involving the prosecution of the patent such as the number of amendments, continuations, and other issues surrounding the patents prosecution and life until expiration. These costs are estimates only as various country patent offices and other outside 3rd parties can change fees, language translation costs that vary depending upon length of the patent and which languages are translated, and foreign currency exchange rate changes. The following budget estimates are for a non-complex invention with a single embodiment and are given for the reader to have an idea of the cost structure of a patent.
What follows are detailed patent cost estimates for;
A disclosure conference
A pre application filing prior art search
A patentability opinion and preliminary literal infringement opinion
A design patent
Disclosure Conference
Review of the inventor’s drawings and write up concerning the invention by the patent attorney with the inventor to make sure the invention qualifies as patentable subject matter. In addition it is important at this point to make sure all the technical aspects of the invention are fully understood by the attorney and to have the inventor describe what portion of the invention they believe to be novel. Also discussed will be the inventors history related to the inventing process, such as records kept, prototypes made, product testing, sales or demonstrations of the product, and a time line of all of the aforementioned items to ascertain any statutory bars to patentability. It is the inventor’s responsibility for ensuring compliance with any and all federal, state, local, and other required standards, rules, and regulations related to their invention. The Patent Office does not check for any sort of standards compliance, technical feasibility, or commercial worthiness. The Patent Office is only concerned with the legal requirements to obtain your patent, and it is conceivable you could receive a patent on an invention that would be illegal for you to make and sell for other reasons. For this reason it is important that the inventor is aware of every applicable issue surrounding their invention.
Should the inventor decide to file a United States patent application, the inventor is cautioned that the application must be filed within one year of the first public use or disclosure, sale or offer for sale of an item embodying the invention. Equally as important many foreign countries require that an international patent application is filed in that country before any publication, demonstration, or sale of the device at all. If however, one files an application in the United States before the first date of any publication, demonstration, or sale, there is a one-year grace period in which to file a corresponding application in most foreign countries; during this one-year interval, the benefit of the early United States filing date will attach to such foreign patent application.
To be awarded a patent, the inventor cannot have earlier abandoned, suppressed or concealed the invention. This law does not mean that an inventor make public his or her efforts researching or preparing to file a patent application. Rather, the law requires that the inventor be diligent in both completing the invention and in filing for patent protection. Further, an inventor should always keep in mind that an earlier filing date is helpful where the Patent Office has to decide upon which of two pending applications for the same invention should be allowed to issue.
Disclosure conference $300 - $500
(Depending upon invention complexity and the extent of the inventor’s development history related to the invention)
Professional pre application filing prior art search
Although a prior art search is not legally required to file a patent, most inventors want to have an idea of what prior art the patent examiner will most likely assert against the application in the prosecution phase. Other reasons for a prior art search include the inventor learning about the “state of the art” surrounding their invention, who their potential competitors are, and to access the risk of potential literal infringement of the inventors device against the unexpired U.S. patents and the U.S. patent application publications both found in the search. Also, the prior art search can give an inventor technical ideas for improvement of their own invention that can be freely used from expired patents found in the search and if a very close unexpired U.S. patent or U.S. patent application publication was found in the search you could approach the owner to license or buy the unexpired U.S. patent or the U.S. patent application if they are well written. A professional prior art search typically includes descriptive words association, multiple classes and subclasses, computer verification of classes, and further includes searching U.S. patents, U.S. patent application publications, and for an extra fee applicable U.S. general publications, applicable foreign patents, and applicable foreign patent application publications.
The goal of the professional prior art search is to mimic as close as possible the prior art search that the examiner will do at the USPTO when your patent application is potentially filed to know that prior to the actual filing of your patent application what the USPTO examiner will most likely assert against your patent application in the office actions. A typical result of the professional prior art search is the date of the search, a record of all the classes and subclasses searched, and copies of all the applicable U.S. patents, patent application publications, and general publications that are close in design to the invention. Also, applicable foreign patents and foreign patent application publications are included if searched (there may be language translation required for an extra fee). Note that this search is by no means completely dispositive of all of the prior art that can possibly be used against your invention, either during the patent (pending) application prosecution process or during the life of the issued patent while it is unexpired. This search covers U.S. issued patents and U.S. patent application publications, being the generally accepted economic level for a pre-application search, however not covered are; offers for sale, public uses, and typically not any foreign general publications or patents are searched, all of which can be asserted against your invention. The search can be expanded to cover the abovementioned non covered search areas for an extra fee, however, for pre application filing the above described search is generally considered adequate. Nor are there any guarantees that every applicable U.S. or foreign patent or patent application publication, will be found either, due to patent reclassification, due to a searcher oversight, or missing files being electronic, physical, or otherwise. Additionally, all pending patent applications worldwide are held in strict confidence until publication or issue, these pending applications could contain applicable prior art to your invention that would not be discovered during the prior art search that would surface as adverse prior art against either your pending patent application or against your issued patent. The scope of a prior art search is necessarily confined by cost considerations, as the $600 level, the prior art search is what is usually considered adequate for a pre application check of the prior art to find most of the applicable prior art related to your invention. Again, additional prior art searching costs, for publications, offers for sale, public uses, and more extensive foreign prior art can be quoted at additional cost.
Pre application prior art search $700.00
Patentability and preliminary literal infringement opinions
Again, this is not legally required to file a patent, however, if the search is done the following legal opinions interpret the search results make the search more useful to you, that are on patentability and on preliminary literal infringement of the invention. The patentability opinion is based upon the pre application prior art search results, evaluating the invention against the statutory subject matter, novelty, utility, and non-obviousness, requirements of patent law, with at least one sample broad claim being drafted for your invention as a basis for patentability as against the search results. Also included is a brief review of potential preliminary literal infringement risk as against the unexpired U.S. patents and U.S. patent application publications discovered during the search. Note there is no evaluation of foreign patents or foreign patent application publications for infringement risk. This preliminary literal infringement opinion includes reviewing the claims of any unexpired U.S. patents and U.S. patent application publications, to alert you of any potential literal infringement conflict of your invention with those claims. You should understand, however, that the scope of a patentability investigation is quite different from an infringement investigation and study, and the results of this potential literal infringement opinion should not be considered dispositive of all infringement questions, as a full fledged infringement opinion requires much more extensive searching, prosecution history, and case law research costing upwards of $5,000 or more, usually being used as a precursor to litigation. The opinion also includes discussions of invention modifications or other options if needed to avoid the prior art and enhance patentability of the invention or options of other intellectual property protection available for commercialization of the invention. Also included, is a consultation review meeting with the inventor to review the patentability opinion and potential preliminary literal infringement risk in determining whether to proceed with the patent application and / or commercialization of the invention.
Patentability and preliminary literal infringement opinions $750.00
At this point the inventor is at a point to decide whether to proceed with the patent application, improve the invention, pursue other forms of intellectual property protection, or abandon the idea.
U.S. Design Patent Application costs
U.S. Patent & Trademark Office current (USPTO) fees only
U.S. Design patent application filing fee, search, and examination
Small entity (less than 500 employees) $310
Large entity (500 or more employees) $620
Design patent issue fee (due at issue which is 12 to 36 months after filing)
Small entity $430
Large entity $860
There are no USPTO maintenance fees on a Design Patent
Notes to USPTO office fees:
There are many other types of USPTO fees such as petitions, time extensions, application size, and foreign application filings, etc. that are additional; the above fees represent the most basic design patent filing fees.
Formal U.S. Design Patent Drawings
Must be in compliance with 37 C.F.R. 1.152, comprising: use drawings, perspectives, top, front, side, bottom, and a Gazette view. Note that as opposed to Utility Patents, no cross-sectional or assembly views are used that would delineate function, the only views that are used are external configurations, where shading is commonly used to enhance surfaces, contours, and shapes.
Also there are no exploded views, formulas, tables, flowcharts, or element numbers on design patent drawings.
Patent drawings $700.00
The drawing cost can be more or less than $700 depending upon the complexity of the invention and the number of views or embodiments required.
Patent Attorney work product follows:
Drafting of the design patent which comprises the following:
Preamble-Stating name of applicant, title of the design, and a brief description of the nature and intended use of the article in which the design is used.
Descriptions of the drawing figures.
Feature description-of the ornamental aspects of the design features that are either non-functional or semi-functional, however features cannot be purely functional.
A single claim-which refers to the drawings.
Creation of informal drawings (for the patent application filing and prosecution only) that describe the claimed features of the invention along with “use” drawings, and perspectives of the inventions detail as required, wherein formal design patent drawings are later made.
A review meeting is held with the inventor to review the 1st draft of the entire patent as a reality check on what the patent attorney envisions as the invention and what the inventor sees as the invention are in agreement.
Based upon the meeting with the inventor, revisions may be made to the drawings and to the 1st draft of the patent.
Final review of patent application with the inventor and execution of the following documents required by the USPTO:
Design patent application transmittal letter form- basically a table of contents for what is in the application package and various information required by the USPTO.
Inventor’s declaration form-this is where inventor declares their citizenship, that they are the original and first inventor of the invention, that they have thoroughly reviewed and understood the patent application, confirmation of the inventor having an ongoing obligation to disclose all known prior art related to the invention, and a series of other declarations relating to disclosures that may preclude patenting.
Inventor’s power of attorney form-this is where the inventor officially declares the patent attorney to act in his behalf for all issues relating to USPTO business on the inventors application.
Small entity status form-(if applicable). If the inventor or invention assignee’s business entity including all affiliates is less than 500 employees, qualifies the small entity for a 50% discount of some USPTO fees.
Invention assignment form and recording at the USPTO (if applicable). If the patent and patent application is to be owned by an entity other than the inventor, this must be recorded at the USPTO. (Note separate fee listed below)
Fee transmittal sheet-A USPTO calculation sheet for additional services such as, petitions, amendments, time extensions, non-English application, etc.
Express mail certification. (if applicable). To expedite a file date to mailing time, as opposed to the standard USPTO receipt time.
Statement regarding federally sponsored R & D. Inventor must state whether this invention has any affiliation with a federal government program, either through funding, resources, or intellectual assistance.
Information Disclosure Statement (IDS)-This normally filed within three months of the design patent application file date, and a supplemental IDS must be filed if new prior art is discovered during the prosecution of the pending patent application. The supplemental IDS must be filed within three months of the discovery of the prior art. An IDS is where the inventor and all other knowing parties disclose and declare all known prior art related to their invention to the USPTO. The IDS requires preparation of the transmittal letter, prior art description and comparison to the invention, copies of the prior art, language translation into English if required, and completion of the USPTO IDS forms. (Note separate fee listed below)
Related application statement-This is where the inventor discloses, a continuation of a prior application, or a divisional-splitting one application into two.
Return receipt postcard-this is a self addressed, self-stamped postcard that has a checklist of what was sent in the patent application. When the USPTO receives the application they confirm what they received, and when they received it, on the card and also assign a patent processing serial number. This post card is then mailed back to the patent attorney as an acknowledgement of the USPTO’s receipt of the entire application along with a file priority date and the USPTO serial number that will be used during the patent prosecution phase. Note that with the current possibility of Internet based patent application filing, this postcard would not be needed and would be in the form of a return Email. In addition, these postcards are used for most all other USPTO correspondence that is not conducted entirely electronically to acquire evidence of the USPTO receipt date of various correspondence that has a due date.
Foreign priority documents (if applicable). If any foreign priority is claimed a certified copy of the foreign application must be included (that normally has an additional cost of $250), and declared on the declaration by the inventor.
Patent Attorney fee for completing the above items
Basically the drafting and filing of the entire design patent application. $1,500.00
Estimated overall cost totals, for a design patent (with expense point in time and cumulative totals)
Start
Search and Opinions $1,450 (Cumulative) [0 months] {Optional}
Patent drafting $1,500 ($2,950)
Drawings $700 ($3,650)
USPTO fees
(Design patent U.S. only)
USPTO filing fee [0 months]
Small entity $310 ($3,960)
Large entity $430 ($4,080)
IDS [2 months]
Small entity $250 ($4,210)
Large entity $250 ($4,330)
Assignment (optional anytime, not included in totals)
USPTO recording fee $40
Attorney fee for assignment contract $300
Prosecution fee for response to USPTO office action [12 months] (may be more or less)
Small entity $1,000 ($5,210)
Large entity $1,000 ($5,330)
USPTO Issue fee [18 months]
Small entity $430 ($5,640)
Large entity $860 ($6,190)
Post allowance admin. fee [18 months]
Small entity $550 ($6,070)
Large entity $550 ($6,740)
Total Design patent costs [18 months]
Total (with search and opinions)
Small entity $6,070
Large entity $6,740
Total (without search and opinion)
Small entity $4,620
Large entity $5,290
Costs do not include, travel, language translation, or certified copy fees if required.
Actions subsequent to the design patent application filing
Once the patent application is filed you should expect a 1st office action around 6 to 14 months after filing. This is essentially the first official response of the USPTO to your application. As it is unknown what the USPTO 1st office action will require there can be no precise estimate of what additional fees may be required. The USPTO may find disabling prior art that would preclude patenting or may require that the drawings be narrowed in their scope of coverage. The USPTO 1st office action response will typically be a rejection of some or all of the features in the figures and possibly an objection to some matters of form for drawings or the application. The result is usually an amendment response that needs to be prepared within 3 months of the USPTO office action by the patent attorney. This response would include amendments to the drawings, research and preparation of legal argument to justify the drawing amendments, or the non-amendment of certain drawing features, correcting matters of form, and possibly teleconference(s) with the USPTO Examiner. Additionally, if it is beneficial an in person interview with the USPTO Examiner may be done to further convince the Examiner of our position in trying to have the drawing features allowed, is available at extra cost for the patent attorney time and travel cost. There is also the possibility of a 2nd and final office action from the USPTO concerning the drawing features requiring another amendment and additional patent attorney time. An estimate of the costs for answering the USPTO office actions which consist of drawing revisions and argument to convince the examiner on the validity of our position is around $1,000 for the patent prosecution period going from application filing to issue, this costs may be more or less depending upon the complexity of the patent application and nature of the USPTO Office Action rejections (substantive law) and objections (matters of form).
Notes
We cannot quote patent cost beyond the application filing with certainty. The uncertainty of the USPTO’s 1st office action and the related amount of patent attorney amendment work that may be required to respond to the 1st office action and possibly 2nd and final office action from the USPTO is unknown. The post allowance administrative fee includes checking of the formal drawings, proof reading the issued patent, and administrative work related to issuing the patent from the pending patent application. All of the fees quoted are estimates only for budgeting purposes as the complexity of any given invention varies. The legal fees can be fixed at the time of the Attorney-Client fee and Representation Agreement for a set amount of legal duties. The USPTO fee’s are subject to change beyond our control. Also, the patent draftsman fees and other 3rd party service provider fees are subject to change beyond our control. Costs do not include, travel, language translation, and certified copy fees if required. Other incidental, actual out of pocket costs and expenses are per the Attorney-Client fee and Representation Agreement.
Other costs
Attorney hourly fee $150.00
Estimated copy costs $25.00
Estimated Express Mail per occurrence $25.00
Notes particular to a U.S. Design Patent
a. Protects the ornamental non-functional aspects on an invention, in other words the appearance, configuration, shape, etc. of the item is what is protected.
b. Has a term of 14 years as opposed to a term of 20 years for a utility patent.
c. Design patents are often used in conjunction with utility patents for the same invention, wherein the utility patent protects the functional aspects of the invention and the design patent protects the ornamental and non-functional aspects of the invention.
e. Multiple embodiments (versions) of an inventions design can be filed in a single design patent application that have minimal configuration differences to maximize design patent coverage.
f. A design patent is examined like a utility patent at the USPTO in relation to the prior art.
g. A design patent is subject to all the same prior disclosure rules as a utility patent.
h. A design patent only has a foreign priority period of 6 months as opposed to 12 months for utility patents, wherein to obtain the original filing countries priority date a foreign filing must be made in 6 months.