How To Patent Your Idea

The complexity and cost of obtaining a patent varies significantly depending upon the complexity of your invention. A pencil can be described and claimed in a patent more easily and at less expense than a complex neural network computer, for example. Complications may arise in due course, and exact preliminary costs for obtaining patent protection are impossible to predict. Therefore, this section provides estimated costs based on simple inventions which are not involved with atypical patenting procedures. The actual process of obtaining a patent is exhaustive and involves many considerations. The following paragraphs briefly describe the general patenting process.

The Prior Art Patent Search

During the initial communication with your patent attorney/agent, you should provide a written disclosure of your invention. This disclosure should include drawings (no matter how rough), if applicable. In order to give you and the patent attorney an indication of whether your invention is patentable, a prior art (or, “novelty”) search is usually performed. The search will focus on the disclosure you provide so it should be as complete as possible. This is the first of three phases of the patenting process.

Application for a Patent and Cost

This is the second phase of obtaining protection for your invention. The cost of preparing and filing a regular (nonprovisional) utility patent application (again, based on a simple invention) is usually about $6,500 to $9,500, which includes the prior art search, Patent Office fees, draftsperson’s fees, attorney’s fees, and other costs incidental to the preparation and filing of your application. (The cost of obtaining a design patent is approximately $2,500). The utility patent application will include a summary of the known prior art (from the prior art search), a detailed description of your invention, a brief description of how the drawings relate to the invention (if applicable), the claims (which, similar to a real property deed, define the boundaries of your invention) and any formal documents required by the federal laws.

Another type of patent application, called “provisional patent application,” is offered by the United States Patent and Trademark Office designed to provide a lower cost first filing in the United States to give U.S. applicants parity with foreign applicants. The cost of preparing and filing a provisional patent application is usually about half the cost of preparing and filing a regular nonprovisional application. This type of application only requires the name of the inventor(s), drawings (if applicable) and a description of the invention. A provisional patent application is recommended for those inventors who do not want to spend a large amount of money to file a patent application. This type of application, however, will not be examined by the Patent Office on its merits, and will only be on file in the Patent Office for a period of one year from the date of filing. Therefore, an inventor will not know whether a provisional application has failed to encompass his/her invention until after a utility application is filed and examined. While the inventor receives an extra year to determine whether to file a utility application, such applications may be too brief or overly broad if drafted incorrectly, and therefore, may fail to encompass the inventor’s true invention. Advantages of this type of application include receiving additional time to market the invention, establishing an earlier filing date which can be tied to the later-filed utility application, use of “patent pending” on marketing material, and of course, minimal cost. The inventor will have one year in which to market the invention. This route is not recommended for those inventions where the technology rapidly changes (such as semiconductor technology) since the added year of protection is commercially meaningless.

Drafting patent applications is labor intensive and depends upon the complexity of your invention, the extent of the prior art which may relate to your invention, the completeness of information you initially provide, any revisions needed, and, if necessary, intermediate meetings with you. Indeed, total costs for complicated inventions typically range from $7,500 to $15,000. The preparation and filing of a utility patent application usually takes one to three months, however, it will vary depending on the simplicity or complexity of the invention. Government Patent Office fees apply. For businesses employing less than 500 people (small entities), including individual inventors, the current filing fees (including patent search and examination fees) are:

Provisional filing fee* $130
Utility filing fee $730
Design filing fee $380
Plant filing fee $570
* Provisional applications may not be filed for design inventions.

For those entities employing more than 500 people, the above fees (and the fees mentioned throughout this article) are doubled. Additionally, depending upon the final patent application, other government fees may apply.

After the patent application is filed, the Patent Office Examiner performs a search to determine whether your invention qualifies for patent protection. In this regard, they may discover prior art which was not discovered in our earlier prior art search, including foreign references. As earlier described, the Patent Office will primarily examine the novelty, unobviousness and formal matters associated with your application.

After this search, the Examiner will likely prepare an “Office Action” describing his/her findings regarding your application. This correspondence is usually received within twelve months after filing your application, and will include copies of any new prior art references the Examiner believes may or may not relate to your invention. This correspondence will either reject all or a portion of your application claims, object to any formal matters required by the Patent Office or accept all of your claims. In this regard, you may expect additional attorney fees for time to review and respond to the office action. The attorney time involved will vary depending on the Patent Office’s position.

Please note that the Patent Office will not disclose your idea to outside parties since your application will be maintained in secrecy during the pendency of your application. If you are granted a patent, your application file and related correspondence will then become available to the public for inspection and copying.

Finally, it is important to note that even though a patent application has been filed, the law does not protect any pending patent application. There are provisions (and related fees), however, to expedite the application process and perhaps allow the applicant to pursue potential infringers.

Further Prosecution of Your Application

The third phase of the patenting process involves continued correspondence with the Patent Office. The patent attorney reviews the first correspondence from the Patent Office and, in consultation with the client, determines what further action to pursue. If the claims are rejected despite the patent attorney’s opinion of patentability, and the client is still interested in protecting the invention, the attorney will likely recommend that the application be further prosecuted.

If the decision is made to continue prosecution, the patent attorney will prepare a response to the Patent Office. This response may amend the application to better distinguish your invention from the prior art references cited, or may attempt to comply with the Examiner’s suggestions. This response will always include text discussing the differences between the cited prior art and your invention, and may include legal citations to support the validity of your application.

The Patent Office and the patent attorney will continue to exchange correspondence until the application is either allowed or finally rejected. This exchange of correspondence may take anywhere from six months to two years (or beyond). Most of this extended time is the result of waiting for correspondence from the Patent Office (remember, your application is only one of thousands!). If the application is allowed, there is an additional issue fee, as follows (for small entity):

Utility issue fee $480
Design issue fee $280
Plant issue fee $380
Note: the fees are doubled for large entities employing more than 500 employees.

Charges for further prosecution are billed on an hourly basis as the work is performed. If the application is finally rejected, an appeal process is available, but will result in additional attorney and government fees.

What Happens After the Patent Issues?

The Patent Office requires increasing maintenance fees to be paid at the 3+1/2, 7+1/2 and 11+1/2 year anniversaries following the date of issuance of your patent. The rationale is that if you are actively engaging your invention after the patent issues, you should be able to pay additional fees to keep the patent protection alive for the duration of your patent. Currently, these fees for small entities are $800 at 3 1/2 years, $1,800 at 7 1/2 years and $3,700 at 11 1/2 years. If these fees are not paid, the patent will become abandoned, and you will lose all rights to the invention.

Summary

A small entity’s simple invention covered by a patent application can be protected for a cost between $5,000 and $9,000. Usually, most inventions fall within this range. Those inventions derived from within the corporate arena (not a small entity) cost between $10,000 and $20,000. Of course, this is the total cost to obtain a patent, and is computed over a period of years. Usually, the average period of time from filing a patent application to obtaining a registered patent is two to three years.

While this exposé is quite general in describing the patenting process, it serves to inform you of the general principles surrounding the patenting system. I Look forward to assisting you with the protection of your intellectual property assets, to the extent possible.

Now you may click Here to find out how to go about preparing your invention disclosure.