Patents

Patentability Search – Attorney’s Fees - $800 and up, or $0 (if a provisional, nonprovisional, or international PCT application is filed within 6 months after a patentability search the attorney’s fees for the patentability search are credited towards the attorney’s fees for the application).

• A patentability search is a search for prior art to determine if the idea for the invention can likely obtain a patent. The patentability search will be approximately 5 hours (depending on the patent) of searching prior art related to the idea—which is not a guarantee that prior art will not be found in the future which would exclude the idea from being patent worthy—but will give an acceptable determination if the idea is patentable. If a provisional, nonprovisional, or international PCT application is later filed within 6 months through the law firm, then $800 in fees allocated to the patentability search will be credited towards attorney’s fees for the corresponding application—therefore making the patentability search equivalent to no charge if a simple patentability search equivalent to $800 of attorney’s fees was performed. If the idea requires a very large prior art search (e.g. a chemical compound or software) then the attorney’s fees may be more than $800 and the credit to a later application will only be $800. 

Provisional Patent Application – Attorney’s Fees - $1,700 and up. Total cost including

Attorney’s Fees and typical costs - $2,270 - $2,980 (estimate).

• If the application includes complicated subject matter (e.g. a chemical compound or software) then the attorney’s fees may be more than $1,700. 
• In addition there are costs related to drawings and USPTO fees.
• Patent drawing costs vary depending on the level of complication of the drawings and the amount of figures required. An estimate for the patent drawing costs is $500 - $1,000 (approximately $100 per page and estimating 5-10 pages of drawings).
• The USPTO fees will vary depending on the applicant (and change over time because the USPTO changes their fees). Currently as of November 2019, the USPTO filing fee for a provisional patent application is: Normal Entity: $280; Small Entity: $140; and Micro Entity: $140. Most individuals and small businesses (which have not filed more than 4 patent applications) will be a micro entity. For a full explanation of entity size go (here).

Nonprovisional Patent Application – Attorney’s Fees - $4,200 and up. Total cost including Attorney’s Fees and typical costs - $5,130 - $6,920 (estimate).

• If the application includes complicated subject matter (e.g. a chemical compound or software) then the attorney’s fees may be more than $4,200. 
• In addition there are costs related to drawings and USPTO fees.
• Patent drawing costs vary depending on the level of complication of the drawings and the amount of figures required. An estimate for the patent drawing costs is $500 - $1,000 (approximately $100 per page and estimating 5-10 pages of drawings).
• The USPTO fees will vary depending on the applicant (and change over time because the USPTO changes their fees). Currently as of November 2019, the USPTO filing fee for a nonprovisional patent application (includes a filing, utility search, and utility examination fee) is: Normal Entity: $1,720; Small Entity: $785; and Micro Entity: $430. Most individuals and small businesses (which have not filed more than 4 patent applications) will be a micro entity. For a full explanation of entity size go (here).  

Drafting Office Action Responses - Attorney’s Fees: Low complexity - $1,000 or High complexity - $2,400 (estimate).

• After a nonprovisional application is filed, the USPTO will respond to the application usually in about 14 months after the application was filed. The response will either be an approval of the application or a rejection of the application. It should be noted that a vast majority (approximately 90%) of non-provisional applications will have at least one rejection. To continue the application process, a response is needed to the rejection, which explains why the application should be approved. This response is called an Office Action response.

Design Patent Application – Attorney’s Fees - $1,700 and up. Total cost including Attorney’s Fees and typical costs - $2,440 – $3,160 (estimate).

• If the application includes complicated subject matter then the attorney’s fees may be more than $1,700. 
• In addition there are costs related to drawings and USPTO fees.
• Patent drawing costs vary depending on the level of complication of the drawings and the amount of figures required. An estimate for the patent drawing costs is $500 (approximately $100 per page and estimating 5 pages of drawings).
• The USPTO fees will vary depending on the applicant (and change over time because the USPTO changes their fees). Currently as of November 2019, the USPTO filing fee for a design patent application (includes a filing, design search, and design examination fee) is: Normal Entity: $960; Small Entity: $480; and Micro Entity: $240. Most individuals and small businesses (which have not filed more than 4 patent applications) will be a micro entity. For a full explanation of entity size go (here).

Issue Fee – Utility Issue Fee: $250 - $1,000; Design Issue Fee: $175 - $700

• After an application is approved, an issue fee is required to finalize and obtain a patent. The fee varies depending on the type of the patent and the size of the applicant. Most individuals and small businesses (which have not filed more than 4 patent applications) will be a micro entity. For a full explanation of entity size go (here).
• The USPTO fees will vary depending on the applicant (and change over time because the USPTO changes their fees). Currently as of November 2019, the USPTO issue fees are: 
• Utility issue fee: Normal Entity: $1,000; Small Entity: $500; Micro Entity: $250
• Design issue fee: Normal Entity: $700; Small Entity: $350; Micro Entity: $175

Description of a Patent:

• A patent is a property right given by the US government which lasts 20 years from the date the invention was filed with the United States Patent and Trademark Office (USPTO). [1] 
• The property right is a right to exclude others from using the invention or importing the invention into the United States.[2] 
• The patent owner needs to enforce their right to a patented invention because the US government will not enforce the property right for the patent owner.[3] 
• The US patent property right is exclusive to the territory of the United States.[4]

Types of Patent Applications:

• Provisional Patent Application
• Nonprovisional Patent Application (also called a Utility Patent Application)
• Design Patent Application

Provisional Patent Application: 

• A provisional application defines the invention in the form of a written description and drawings. [5] 
• A provisional application will give the applicant a filing date for the invention as defined in the information submitted.[6] 
• The applicant has up to 12 months from the filing date of the provisional application to file a nonprovisional application to gain the benefits of filing a provisional application.[7]
• Filing a provisional patent can be a good option for an inventor because it gives a filing date—blocking others from obtaining patent rights on the same invention if filed after the filing date gained from the provisional application—while also allowing the inventor up to 12 months time to submit a full patent application. This extra time can be used to test the market before spending more money to submit a full patent application in the form of a nonprovisional patent application (also known as a utility patent application).[8]
• Filing a provisional patent application allows the applicant to use the term “Patent Pending” in connection with the invention.[9]
• “Beware that an applicant who publicly discloses his or her invention (e.g., publishes, uses, sells, or otherwise makes available to the public) during the 12 month provisional application pendency period may lose more than the benefit of the provisional application filing date if the 12 month provisional application pendency period expires before a corresponding nonprovisional application is filed. Such an applicant may also lose the right to ever patent the invention. See 35 U.S.C. §§102(a)(1) and (b)(1).”[10]

Nonprovisional Patent Application (also called a Utility Patent Application): 

• A nonprovisional patent application (also known as a utility patent application) is a full patent application. The nonprovisional patent application will have a written description and drawings of the invention—along with claims for the invention.[11]
• The claims of the invention are the crucial part of the issued patent. The claims define the “scope of the protection of the patent.”[12] 

Design Patent Application:

• A design patent application is an application for protection of a design.[13]
• A design is visual ornamental characteristics of a physical object or visual ornamental characteristics applied to a physical object.[14]
• “A design patent protects only the appearance of the article and not structural or utilitarian features.”[15]
• An example of a design would be the overall shape and characteristics of the front of a window air conditioner unit.

[1] https://www.uspto.gov/patents-getting-started/general-information-concerning-patents

[2] Id.

[3] Id.

[4] Id.

[5] https://www.uspto.gov/patents-getting-started/patent-basics/types-patent-applications/provisional-application-patent

[6] Id.

[7] Id.

[8] Id.

[9] Id.

[10] Id.

[11] https://www.uspto.gov/patents-getting-started/patent-basics/types-patent-applications/nonprovisional-utility-patent

[12] Id.

[13] https://www.uspto.gov/patents-getting-started/patent-basics/types-patent-applications/design-patent-application-guide

[14] Id.

[15] Id.

Some USPTO fees are dependent on the applicant—where the applicant can be a normal entity, small entity, or micro entity.

Definition of Entity Size:

• Normal entity is: an applicant which does not fit the definition of a small entity or micro entity.
• Small entity is: (a) an individual; (b) small business with less than 500 employees; or (c) a nonprofit organization including a university or other institution of higher education located in any country.[1] 
• Micro entity is: (a) “qualifies as a small entity;” (b) “has not been named as an inventor on more than 4 previously filed patent applications, other than applications filed in another country, provisional applications,” or international PCT applications for which the basic US national fee was not paid; (c) “did not, in the calendar year preceding the calendar year in which the applicable fee is being paid, have a gross income,” exceeding $189,537; and (d) “has not assigned, granted, or conveyed, and is not under an obligation by contract or law to assign, grant, or convey, a license or other ownership interest in the application concerned to an entity that, in the calendar year preceding the calendar year in which the applicable fee is being paid, had a gross income” exceeding $189,537.[2] 

[1] 37 CFR 1.27; 13 CFR 121.802

[2] 35 U.S.C. 123; and https://www.uspto.gov/patent/laws-and-regulations/micro-entity-status-gross-income-limit