Costs To Prepare And Prosecute A Patent
A frequent question I receive is what does it cost to actually obtain an issued patent, start to finish. The answer depends on the complexity of the subject matter, the number of inventive concepts disclosed and claimed, the novelty of the invention, 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. This is the fee that most attorneys quote to potential clients. However, I feel that it is important that potential clients be aware of the typical start-to-finish costs for obtaining a U.S. patent, from filing to issuance.
The average legal fees for preparing and filing a regular application charged by U.S. patent attorneys across the U.S. to prepare 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 and fees in 2021 are more than they were in 2009. These numbers are to give you an idea of typical minimum fees that you should expect. This should be considered a minimum average fee for a very simple mechanical invention. 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 usually 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 will include a basic fee, a search fee, and an examination fee, all of which must be paid at the time of filing. If there is an assignment from an individual to a company, there will 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. The fee for formal drawings is about $150 per page.
I typically require an advance fee of the patent application cost prior to commencing work, with the government fee, drawing fee, assignment fee, and information disclosure statement fee due at completion of the first draft of the patent application.
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 drafted can cause fees to increase dramatically, often double.
These fees are for preparing and filing only, and in the U.S. only.
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 almost always 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 mechanical case, the average fee for responding to an Office Action was $3,135. For a relatively complex electrical or computer response, the average fee was $5,021.
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 Continued Examination” 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 about three and add one government fee to determine approximate minimum prosecution costs, which are in addition to the initial application preparation and filing costs.
So for a complex electrical or computer case, assume that you will have at least $5021×3, plus a Request for Continued Examination government fee, plus the government issue fee, in prosecution costs before receiving a Notice of Allowance. This is in addition to the $13,227 legal fees (excluding government and drawing fees) for preparation and filing.
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 fees for filing a notice of appeal and for filing 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, and a firm will charge a service fee of about $860 to handle payment of the issue fee and filing of the appropriate documents.
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 the prosecution expenses (for responding to rejections) are incurred. If a difficult examiner is drawn or if unexpected highly relevant prior art is located by the U.S. Patent and Trademark Office, expenses may be higher, and possibly significantly higher. Applicants may abandon the proceedings at any step along the way.
All time spent on behalf of an applicant not directly related to preparation of a patent application, such as 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.
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.
These fees are for preparing and prosecuting a patent application in the U.S. only. Each country has its own patent system.