United States Provisional Utility Patent Budget Estimatefor 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 provisional utility 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. Patent & Trademark Office current (USPTO) fees only
Provisional patent application filing fee only, no search, and no examination
Small entity (less than 500 employees) $100
Large entity (500 or more employees) $200
There are no USPTO maintenance fees on a Provisional patent application
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 provisional patent filing fees.
Formal Patent Drawings
Must be in compliance with 35 U.S.C. 113, 37 C.F.R. 1.81, 37 C.F.R. 1.83, and 37 C.F.R. 1.85, comprising: assemblies, sections, part details, use drawings, perspectives, top, front, side, bottom, exploded views, workpiece, formulas, tables, flowcharts, schematics, and a Gazette view. Also figure and element numbers must match patent specification.
Patent drawings $700
For a professional patent draftsman the cost is based upon invention complexity and the number of embodiments, which can cause the drawing cost to be more or less than $700.
Patent Attorney work product follows:
Written draft of the provisional patent including:
Abstract-this is a concise 150 word summary of the invention for the Gazette publishing and is the first piece of text in the patent.
Background of the invention.
Field of the invention- Contains a description of the technical field that the invention pertains to.
Discussion of prior art-A description of the information known to the inventor, including specific documents such as prior patents and publications related to the current invention. Includes a discussion of the state of the current technology, the problems of the current technology, and how the new invention solves those problems.
Summary of the invention-A listing of the objects of the invention, basically the substance or the essence of what is novel in the invention over the prior art as discussed in “Discussion of prior art” above.
Descriptions of the drawing figures-An explanation of what each drawing figure depicts.
Detailed description of the invention-Called “Description of the Preferred Embodiments”, has three basic requirements:
Enablement-A full description of the process of making and using the invention to one skilled in the art. In other words, many years from now when the patent is expired, an individual with ordinary skill in this technical field should be able to make and use this invention based solely on the enablement description in the patent without having to consult the inventor.
Best mode-As contemplated by the inventor, an invention may have multiple versions or modes, and the one mode that the inventor most desires must be fully described.
Description-The invention is completely described in clear, concise, and exact terms and is to be distinguished from the prior art. Typical items covered are the invention’s physical structure, material options, manufacturing processes, and method of using the invention. Novelty, utility, and obviousness are also addressed to ascertain the invention's patentability along with support for the claims as subsequently described.
Claims- Although not required in a provisional application, at least one broad claim should be included if it is contemplated that the U.S. provisional will be used for a later filed foreign patent application filing priority date. However, to write a complete description that reflects the true novelty of the invention, a complete set of claims should be written, thus the provisional is no different than a utility patent. Thus the following summary of what claims typically include is given, wherein a set of claims will need to be added to the subsequent non-provisional utility patent application that attaches this provisional patent application as file date priority. Claims define the actual legal rights of the invention, where infringement is determined. Claims are narrower in scope than the “Detailed Description”. The Detailed Description of the invention defines the prior art for the future and the claims define the actual legal exclusionary rights, meaning the “infringement net” of the patent while the issued patent is not expired. Multiple claims are written in a non-provisional patent application, as 20 are included in the basic USPTO fee consisting of 3 independents and 17 dependents. Additional claims can be written for added USPTO office fees and Patent Attorney time charges.
The reason for multiple claims is to have them written in terms of varying scope, broad to narrow and to cover not only the physical structure of the invention, but also the process of manufacture of the invention, and the method of using the invention if the process and method are applicable. The claims are what determine the true legal strength of the patent and its economic value. The claims are where the most effort of the patent attorney goes, to make the claims as broad as possible as the prior art will allow thus increasing both the legal strength and the economic value of the patent to the inventor or assignee.
Creation of informal drawings (for the patent application filing and later prosecution only) that describe the claimed features of the invention along with “use” drawings, perspectives, and sectional views of the invention’s detail as required. In addition, flow charts and schematics are included if applicable.
The above items, are essentially the 1st draft of the entire provisional patent application, note that on claims, only one independent claim is included if required for foreign priority in the provisional patent application, however, it is strongly recommended to have a full set of claims included for an additional fee for the reasons previously given.
A review meeting is held with the inventor to review the 1st draft of the entire provisional patent application 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 provisional patent application.
Final review of patent application with the inventor and execution of the following documents required by the USPTO:
Provisional utility 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 are 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 in light of the possibility of Internet based filing). 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.
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.
Legal fee for completing for the above $4,000.00
Basically the drafting and filing of the provisional utility patent application.
(Note that this legal fee is for a non-complex invention with a minimal number of embodiments, a large number of embodiments or a relatively complex invention will result in the legal fee being from $4,000.00 to $6,000.00 or more)
Estimated overall cost totals, for a provisional utility patent application (with expense point in time and cumulative totals)
Start
Search and Opinion $1450 (Cumulative) [0months] {Optional}
Patent drafting $4,000 ($5,450) [0months]
Drawings $700 ($6,150) [0months]
USPTO fees
(Provisional utility patent application U.S. only)
USPTO filing fee [0 months]
Small entity $100 ($6,250)
Large entity $200 ($6,350)Assignment (optional anytime, not included in totals)
USPTO recording fee $40
Attorney fee for assignment contract $250
Actions subsequent to the patent application filing
A provisional patent filing gives a patent pending status only for 12 months; there is no examination or office actions from the Patent Office. Prior to twelve months to the day after the provisional filing a non-provisional utility patent application must be filed or else the provisional patent application will go abandoned.
We cannot quote patent cost beyond the application filing. 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 any other 3rd party service providers’ fees are subject to change beyond our control. Other incidental, actual out of pocket costs and expenses are per the Attorney-Client fee and Representation Agreement.
Notes to Provisional utility Patent Applications
Created for University researchers to preserve international patent rights prior to a public disclosure by the inventor or invention assignee via presentation, seminar, etc. The provisional patent application requires a complete non-provisional utility type of patent application specification description minus the claims, unless one independent claim is required if the provisional is used for foreign priority, with the provisional patent application only allowing for 12 months of patent pendency only. Note this patent has NO exclusionary rights associated with it, in other words we cannot sue anyone for patent infringement with a pending provisional application and thus the provisional application is of limited value, however it can be used for file date priority in the U.S. if there is no added matter to the original specification in the later filed, within 12 months, non-provisional application. This later filed non provisional utility patent application patent requires a second application and fee no later than the 12-month point in time from the filing of the provisional patent application, thus adding to overall cost, to preserve priority of the original provisional patent application file date. Note also, that provisional’s cannot be used with design patents and cannot claim priority of another previously filed patent anywhere in the world.
In addition, if you have any inkling of wanting foreign patents, filing a provisional as a first filed patent application is a bad idea as the foreign patent costs are considerably higher than if you just filed a non provisional utility patent application first, i.e. not filing a provisional patent application at all. This is because the provisional has no search or examination (as opposed to a non provisional utility that has a search and examination), thus the foreign patent offices charge a typical premium on the filing fees being about $1500 to $2000 extra over the normal foreign filing fees.
Another argument against the provisional is economic, as the standard non provisional utility filing fee is $425 and the provisional filing fee is $100 (both small entity) the difference is $325, for this $325 you obtain a search and two patentability opinions which is an excellent deal financially on the filed non provisional utility patent application, plus this information is very valuable to you and any potential licensees. Compare this to what a search and two patentability opinions are worth on the open market, which is about $2,000 to $2,500, in fact if you file for a re examination of an existing patent at the USPTO the fee is $2,520 which reflects more or less the true cost of a search and two patentability opinions. Based on the above there is rarely a justification for a provisional.
To summarize the particular aspects of a provisional patent application:No foreign priority can be claimed of an earlier filed foreign application.
No Statutory Invention Registration is allowed.
A provisional cannot be used for design patents.
The 12-month provisional pendency is not counted toward the later filed, within 12 months, non-provisional utility patent term.
No exclusive rights exist in a provisional, no capital economic value of patent pending.
No Information Disclosure Statements are used.
It is questionable if a U.S. provisional can provide priority to a later foreign filing without claims.
A provisional automatically expires, going abandoned at the end of 12 months if no co-pending non-provisional utility patent is filed.
Allows the inventor to claim patent pending status for 12 months only.
A provisional can only provide file date priority if a co-pending non-provisional utility patent application is filed prior to the provisional expiring and the non-provisional application does not include any new matter.
There is NO patent Office examination of a provisional application.
Your foreign filing decision is due at the end of the 12 month provisional pendency period also.