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By securing a patent on your new idea you have the right to prevent others from using, selling, making, or importing your idea for a 20 year period. This powerful right gives you a sword to keep your monopoly intact. Not only do you have a sword but a patent also gives you a shield to discourage others from accusing you of infringement. I also provide searching services to help companies determine the risk of infringement prior to investing in the development of new products.
A patent is a very complex legal document. The research must be exact, the description precise, the figures properly integrated, and the claims supported in order to clear the many hurdles detailed in the patent office's manual that consists of well over 3,000 pages. If your idea is so valuable, why trust some low-cost, do-it-yourself website with your idea? Invention companies and self-help websites such as LegalZoom® do not you owe you any ethical obligations. I do, and if that is not enough do a search on Google for "invention company scams". |
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Technical Know-How
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Legal Expertise
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Commitment to Service
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Patent Frequently Asked Questions
WHAT ARE YOUR FEES FOR FILING A PATENT APPLICATION AND OTHER PAPERS?
My fees for filing a patent application are very dependent upon the nature of the invention or idea to be patented. Fees for simple inventions are of course lower than fees for complex inventions. This, of course, makes sense and if a website offers patent services at a flat fee then those individuals that have a simple invention are being overcharged while those with complex inventions are most likely getting a bad patent.
My fees are for attorney services related to filing a patent application. This is an important point as patent applications are very complex documents and prosecuting a patent application is a very complex process. In fact, the patent procedure manual is now so large, well over 3,000 pages, that it is no longer available in printed form! There are many websites that offer do-it-yourself services for filing patent applications. Does it make sense to use a do-it-yourself website if you have not even read a single page from the manual? If your idea has great market potential then every penny spent towards a properly executed patent it is well worth the cost to get that important 20 year monopoly.
Having said the above, I will do all of the research, writing, and prosecution your patent application for you. I do not use paralegals or clerks when performing any patent related work. I do not use any offshore companies to research or write your patent application and you are getting a full-fledged patent attorney with a bachelor's and master's degree in engineering. Since my fees below are for the most part dependent upon the complexity of the invention, I will give you an estimated range based on my hourly rate of $450 per hour. You may use this hourly rate when comparing my services with other patent attorneys.
Remember, these fees are estimates. I will need to take a look at your invention to come up with more accurate values.
My fees are for attorney services related to filing a patent application. This is an important point as patent applications are very complex documents and prosecuting a patent application is a very complex process. In fact, the patent procedure manual is now so large, well over 3,000 pages, that it is no longer available in printed form! There are many websites that offer do-it-yourself services for filing patent applications. Does it make sense to use a do-it-yourself website if you have not even read a single page from the manual? If your idea has great market potential then every penny spent towards a properly executed patent it is well worth the cost to get that important 20 year monopoly.
Having said the above, I will do all of the research, writing, and prosecution your patent application for you. I do not use paralegals or clerks when performing any patent related work. I do not use any offshore companies to research or write your patent application and you are getting a full-fledged patent attorney with a bachelor's and master's degree in engineering. Since my fees below are for the most part dependent upon the complexity of the invention, I will give you an estimated range based on my hourly rate of $450 per hour. You may use this hourly rate when comparing my services with other patent attorneys.
Remember, these fees are estimates. I will need to take a look at your invention to come up with more accurate values.
Service |
Fee |
Initial consult. At an initial consult we will go over your invention/idea, determine what type of patent is appropriate for your invention, review the patenting process, and come up with a more accurate estimate of costs based on the complexity of your invention. |
$200 |
Infringement Search. Before seeking any sort of utility or design patent protection, you will want to perform an infringement search. For more information on the two basic types of searches I perform, infringement and patentability, please see my FAQ titled "WHAT TYPES OF PATENT SEARCHES DO YOU PERFORM?". However in brief, an infringement search looks to answer the question "Does your invention, idea, or product, infringe on another's patent?". If the answer is "No" then you are free to continue with the patenting process. If the answer is "Yes" then you will need to go back to the drawing board. The advantages are (i) may potentially save you the cost of filing a patent application and (ii) looking at the patents I find may help you in improving your invention. An infringement search is also very helpful when coming to market with a product that you do not wish to patent. |
$1,700 |
Patentability Search. Before drafting a non-provisional patent application you will want to perform a patentability search. While an Infringement Search answers the question "Does my invention, idea, or product, infringe on another's patent?" the Patentability Search answers the question "Is my invention or idea patentable?". Both questions are questions are as different as night and day and require different search strategies as discussed in my FAQs. However the Patentability Search is by far a more time consuming search. |
$3,000 |
Drafting and Filing a Provisional Utility Patent Application. The provisional utility patent application is the quickest way to get some degree of patent protection. It offers many benefits to the inventor such as being able to use the "Patent Pending" moniker and quickly protecting an invention that still needs to have its i's dotted and t's crossed. However, it is not a non-provisional utility patent application which means you cannot use it to enforce your patent rights. See my FAQ for information on this popular application. This amount includes government fees. |
$6,000 to $6,500 |
Drafting and Filing a Non-Provisional Utility Patent Application. Getting a non-provisional utility patent application through the patent office is a long process. This amount includes government fees. |
$9,000 to $10,500 |
Drafting and Filing a Design Patent Application. A design patent application is much simpler than a non-provisional utility patent application and if applicable to your invention offers great benefits at a low cost. For more information on design patents please see my FAQ on the same. |
$3,500 |
Responding to an Office Action. An office action is a notice from the patent office detailing which claims were rejected and why as well as any problems in your write up or figures. Normally, you are given three months to respond but the three months may be easily extended by the payment of additional fees. Most patent applications will have at least one office action and getting three of them is not unusual. As a result be prepared for this additional cost. |
$2,500 to $3,500 |
International Utility Patent Application. An international patent application is very expensive. Although not quite as expensive as multiplying the cost of your USA application by the number of countries you wish to file it in it is not as good as a deal as you get with an international trademark application. For a very rough estimate use the following formula: (1 + 0.8 * (the number of countries you wish to file in minus one)) * $10,000 So if you wish to file in 7 countries a rough estimate would be: (1 + 0.8 * 6) * $10,000 which comes out to $58,000 |
See Formula |
What are the differences between a utility, design, and plant patent?
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There are actually three basic types of patents you may file with the patent office. They are as follows:
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what is a provisional utility patent and what advantages does it offer?
The provisional utility patent was made available to inventors in 1995 to provide them with some basic protection of their invention without having to file the more complex, time consuming, and costly non-provisional patent application. During the term of the provisional patent, being one year, the inventor has some time to determine how viable the invention is in the marketplace. In order to retain all of the benefits of the provisional patent a non-provisional patent must be filed within the one year term of the provisional patent. It is not possible to extend the one year term of a provisional patent and refiling the provisional only has the effect of restarting the one year term, not extending it.
The Provisional Patent is widely misused by the public. Provisional patents are heavily promoted by do-it-yourself legal websites that proclaim "Patent Pending in 1 Day" or "Protect your invention today!". These do-it-yourself legal websites claim that provisional patent applications are simple, informal, or may be written by anyone. While to some degree this is true; 35 U.S. Code § 112 applies to both provisional and non-provisional patent application and states "The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention". If the specification you submit to the do-it-yourself legal website does not satisfy this requirement then your provisional will be held invalid and all benefits provided during the term of the provisional patent will be voided. In addition, you will not know that your provisional patent is invalid until you attempt to enforce it and may result in the invalidation of your non-provisional patent as well. As a result, I do not recommend that you write your own provisional patent.
That said, the provisional patent does provide some benefits:
The Provisional Patent is widely misused by the public. Provisional patents are heavily promoted by do-it-yourself legal websites that proclaim "Patent Pending in 1 Day" or "Protect your invention today!". These do-it-yourself legal websites claim that provisional patent applications are simple, informal, or may be written by anyone. While to some degree this is true; 35 U.S. Code § 112 applies to both provisional and non-provisional patent application and states "The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention". If the specification you submit to the do-it-yourself legal website does not satisfy this requirement then your provisional will be held invalid and all benefits provided during the term of the provisional patent will be voided. In addition, you will not know that your provisional patent is invalid until you attempt to enforce it and may result in the invalidation of your non-provisional patent as well. As a result, I do not recommend that you write your own provisional patent.
That said, the provisional patent does provide some benefits:
- Allows the term "Patent Pending" to be applied in connection with the description of the invention.
- Establishes the "priority date" of your application. Here in the United States, the first person to file for the invention has the rights to the invention. Getting an earlier priority date is important if you know of others that are seeking the same invention.
- Although you do not gain any enforceable legal rights in a provisional patent during its one year term, if the provisional patent matures into a non-provisional patent those non-provisional patent rights are retroactive to the provisional patent's priority date.
- During the term of the provisional patent, one year, you may perform needed market research to determine the economic viability of your invention before filing the more expensive non-provisional patent.
- During the term of the provisional patent, one year, you may seek investors to help fund the more expensive non-provisional patent.
what is a design patent and what advantages does it offer?
Many people are confused about design patents as compared to utility patents or do not even know that design patents exist. Adding to the confusion is that both design and utility patents may be used to protect the same invention. So when should you use a design patent and when should you use a utility patent? You may answer that question by asking yourself the question "Is what I am trying to protect functional or decorative?" For example, say that you have come up with a new pattern of tread that you want to use on a snow tire that is to be sold. Lets say that your new tread pattern provides your tire certain advantages on snow over current snow tires. Since your new snow tire is more "functional" than current snow tires then you will want to obtain a utility patent on your new tread pattern. Conversely, lets say that your new tread pattern gives your snow tire the "appearance" that it performs well on snow but in reality it doesn't; It just looks really cool, rugged, and mean. Since your new pattern is decorative then you will seek a design patent on it. Beware, using this example say you know that your new tread pattern provides better performance on snow over other snow tires but to cut costs you seek a design patent on your new pattern. If your competitor can provide that your new pattern is functional then your design patent will be revoked and you will not have the opportunity to go back and get a utility patent on the tread pattern; in effect you will lose all rights to any sort of patent.
Below are design patents for the Crocs shoe, Chrysler Crossfire, Apple iPad screen layout, and a tire tread pattern.
Below are design patents for the Crocs shoe, Chrysler Crossfire, Apple iPad screen layout, and a tire tread pattern.
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Design patents are a cost-effective mechanism to add value to a company and combat the counterfeiting of products. The cost for obtaining a design patent is much less than a utility patent and the time from filing to grant is much shorter than a utility patent. See the table below for some of the differences.
Design Patent |
Utility Patent |
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Does a provisional version of the patent exists? |
No |
Yes |
Cost to file the patent. |
$2,000 to $3,000 |
Depends on many factors but expect $6,000 to $10,000 |
Cost to prosecute the patent application. |
$0.00 to $1,000 |
$2,000 to $3,000 |
Time from filing until grant of the patent application. |
About one year. |
Minimum of 2 years but expect 3 years. |
Number of years the patent is enforceable. |
14 years |
20 years |
Are maintenance fees required during the lifetime of the patent. |
No |
Yes |
Design patents are quite broad and you can easily see how a design patent may cover many items we see around us such as chairs, bottles, shirts, shoes, and cars. Things we can touch, feel, and hold. Realize, however, that design patents also cover things that we can only see such as computer icons and graphical user interfaces on a computer screen.
The main point to remember is that design and utility patents protect different features of your invention. If the feature is functional then seek a utility patent, if the feature is ornamental then seek a design patent.
The main point to remember is that design and utility patents protect different features of your invention. If the feature is functional then seek a utility patent, if the feature is ornamental then seek a design patent.
what types of patent searches do you perform?
There are a number of different types of patent searches that I may perform. Some patent practitioners farm out their searches to others but I perform all of my own searches using software applications that are professionally designed for searching patents as well as free services provided by the United States Patent Office, Google, and the World Intellectual Property Organization. Examples of searches include:
There are other kinds of searches that may be performed in addition to those above but the two major types of searches I perform are infringement and patentability searches.
Infringement Searches: The infringement search looks to answer the question "Has your invention (i) already been claimed by an inventor (ii) in a patent that is still enforceable?".
To determine if the first part of this test is satisfied we have to look in the "Claims" portion of the patent. Basically a patent is comprised of three parts: figures; specifications, also called the description; and claims. The figures contains drawings of the inventive concept while the specification contains in words what is shown in the figures. The claims, found at the end of the patent, describe the inventive concept that the patent actually protects. The figures and the specification must fully support each other in that whatever is described in the specification must be supported by the drawings and the features in the drawings must be supported by the description. The claims finds all of their support in both the figures and the specification. You may almost think of a patent as a triangle with the figures, specification, and claims at each point of the triangle. If you take out any of the points you no longer have a triangle and likewise with patents. Now that I have given you this background information on figures, specification, and claims, you may understand that infringement is determined by comparing the claims of a patent to your invention. How close the claims come to describing your invention will determine your risk for infringing a patent.
Determining if the second part is satisfied is more difficult and unfortunately more important because if a patent is no longer enforceable it is in the public domain and free for all to copy. You may think of the patent as being expired. You cannot infringe upon a patent that has expired but determining when a patent expires is not easy. We know that a utility patent has a life span of 20 years while a design patent has a life span of 14 years. Unfortunately, there are other events that may impact the life span of a patent. One event is if the patent office unnecessarily delays while processing your patent. In these cases, the patent office will add to the life span of the patent the same number of days, where due to their actions, your patent's issue date was delayed. However, this is rather unusual and typically amounts to less than 100 days being added to the life span of a patent. The one event that significantly impacts the life span of a patent is the nonpayment of maintenance fees that are due 3.5, 7.5, and 11.5 years from the date the patent was issued. Even if payment is not made there is a grace period of six months where the patent remains enforceable if a payment is made along with an extra fee.
In spite of the problems in determining if a patent is enforceable infringement searches are easier to perform because:
Patentability Searches: The patentability search looks to answer the question "Can you get a patent on your invention?". This question is much different than the question to be answered by the infringement search so the search is different.
For background, there are three requirements to secure acceptance of your patent application at the patent office. These requirements are:
The first requirement is rather easy to meet and for the most part I can make a determination on this requirement when you come in for an initial consult. However, for some ideas that are more abstract, such as software or processes, it may not be so clear cut and I will have to perform some research to reply with an answer.
For the remaining two requirements we have to search through various patent databases. However, unlike the infringement search above where I would read through the claims to determine if your inventive concept infringes, the patentability search requires that I read through the longer and more difficult specification section of the patent to see if your inventive concept has been described. This makes the search more time consuming than the infringement search.
As I find patents that relate to your inventive concept I quickly read through them marking interesting sections and then file them away. Depending upon the various aspects of your inventive concept I may have to perform other searches to find patent activity that cover those aspects and repeat the process of locating patents and then marking interesting sections. Note that here I do not filter out expired patents because expired patents may be used against your inventive concept to raise a novelty (§102) or nonobviousness (§103) refusal. Once I have all of the relevant documents together, I may now look at the risk of getting novelty (§102) or non-obviousness (§103) refusals.
Performing all of this takes a lot of concentrated study and thus the greater cost. However, it is a "must do" search as otherwise all of the money invested in drafting and filing the patent may be at risk.
- Company specific search to determine a company's patenting activity. By comparing a company's "patent trail" you may uncover what sorts of technologies a company is investing their time and money into. With this information you may develop appropriate business plans to counter your competitor's investments.
- Search based on a specific individual's patenting activity. These searches are useful in knowing if a potential employee does hold the patents they are claiming in their resume, the patenting activity of employees in competing companies that you wish to hire, or to determine if a patent you are negotiating for is indeed owned by the party you are negotiating with.
- Researching patent activity in a particular market. When investigating new markets it is always beneficial to research the number of patents that have been filed in that market and view a histogram as to the number of filings over time. With this information you may determine how intellectually "crowded" that market is and how "hot" the market is.
There are other kinds of searches that may be performed in addition to those above but the two major types of searches I perform are infringement and patentability searches.
Infringement Searches: The infringement search looks to answer the question "Has your invention (i) already been claimed by an inventor (ii) in a patent that is still enforceable?".
To determine if the first part of this test is satisfied we have to look in the "Claims" portion of the patent. Basically a patent is comprised of three parts: figures; specifications, also called the description; and claims. The figures contains drawings of the inventive concept while the specification contains in words what is shown in the figures. The claims, found at the end of the patent, describe the inventive concept that the patent actually protects. The figures and the specification must fully support each other in that whatever is described in the specification must be supported by the drawings and the features in the drawings must be supported by the description. The claims finds all of their support in both the figures and the specification. You may almost think of a patent as a triangle with the figures, specification, and claims at each point of the triangle. If you take out any of the points you no longer have a triangle and likewise with patents. Now that I have given you this background information on figures, specification, and claims, you may understand that infringement is determined by comparing the claims of a patent to your invention. How close the claims come to describing your invention will determine your risk for infringing a patent.
Determining if the second part is satisfied is more difficult and unfortunately more important because if a patent is no longer enforceable it is in the public domain and free for all to copy. You may think of the patent as being expired. You cannot infringe upon a patent that has expired but determining when a patent expires is not easy. We know that a utility patent has a life span of 20 years while a design patent has a life span of 14 years. Unfortunately, there are other events that may impact the life span of a patent. One event is if the patent office unnecessarily delays while processing your patent. In these cases, the patent office will add to the life span of the patent the same number of days, where due to their actions, your patent's issue date was delayed. However, this is rather unusual and typically amounts to less than 100 days being added to the life span of a patent. The one event that significantly impacts the life span of a patent is the nonpayment of maintenance fees that are due 3.5, 7.5, and 11.5 years from the date the patent was issued. Even if payment is not made there is a grace period of six months where the patent remains enforceable if a payment is made along with an extra fee.
In spite of the problems in determining if a patent is enforceable infringement searches are easier to perform because:
- Only patents in the USA patent database need to be searched. Almost 25% of the patents on the planet are registered in the USA and you are only liable for infringement if you infringe on a patent that has been issued by the USA patent office.
- Although the USA patent database has over 9 million patents most of those patents have expired for the reasons above.
- The claims portion of a patent is usually short making it easier to read.
Patentability Searches: The patentability search looks to answer the question "Can you get a patent on your invention?". This question is much different than the question to be answered by the infringement search so the search is different.
For background, there are three requirements to secure acceptance of your patent application at the patent office. These requirements are:
- The invention must be useful and not abstract (§101). This is an easy requirement to meet for nearly all applications.
- The invention must be novel, that is it must not have existed anywhere at anytime (§102). This can be a difficult requirement to overcome as the not existed anywhere means anywhere on the planet.
- The invention cannot be an obvious idea or improvement (§103). This is the most difficult requirement to overcome as the patent office may combine patents or other documents, taking concepts from each, and argue that by combining all of the concepts from each of the documents they may reproduce your inventive concept.
The first requirement is rather easy to meet and for the most part I can make a determination on this requirement when you come in for an initial consult. However, for some ideas that are more abstract, such as software or processes, it may not be so clear cut and I will have to perform some research to reply with an answer.
For the remaining two requirements we have to search through various patent databases. However, unlike the infringement search above where I would read through the claims to determine if your inventive concept infringes, the patentability search requires that I read through the longer and more difficult specification section of the patent to see if your inventive concept has been described. This makes the search more time consuming than the infringement search.
As I find patents that relate to your inventive concept I quickly read through them marking interesting sections and then file them away. Depending upon the various aspects of your inventive concept I may have to perform other searches to find patent activity that cover those aspects and repeat the process of locating patents and then marking interesting sections. Note that here I do not filter out expired patents because expired patents may be used against your inventive concept to raise a novelty (§102) or nonobviousness (§103) refusal. Once I have all of the relevant documents together, I may now look at the risk of getting novelty (§102) or non-obviousness (§103) refusals.
Performing all of this takes a lot of concentrated study and thus the greater cost. However, it is a "must do" search as otherwise all of the money invested in drafting and filing the patent may be at risk.
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