Brown & Michaels
Many of our clients have asked for a way of estimating what costs and time periods to expect when pursuing a patent on their inventions. This estimator should serve as a guide, and is as good an estimate as we can prepare, but you should realize that the fees you will actually pay may vary widely from these, depending on the individual circumstances of your invention.
While some fees are standardized, and we have indicated these fees below, others can be billed on an hourly basis or on a fixed fee agreed upon in advance. We are happy to provide firm quotes for specific work once we have reviewed your disclosure or the work to be done.
If you have already filed a patent application in a country other than the USA, and are planning to file an application in the US Patent and Trademark Office based on that foreign application, we have a special section of this estimator for those fees. Most USPTO fees can be expected to change (usually increase) over time.
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Invention Disclosure Form. It's a good way to get your thoughts in order about your invention, and to provide us with the information we'd need to search your invention. Be sure to include sketches of the invention, where you can, and provide as many alternatives and variations as possible.
The process of searching patents has changed dramatically since our firm began over twenty years ago. The USPTO now offers patent searching capability to the public at http://www.uspto.gov/patft/index.html In most cases our clients do their own preliminary searches online through that site before they contact us. For that reason, most of our search work is follow-up to a preliminary search done by the inventor. We often quote this service as part of drafting a patent application, or charge hourly to review and/or expand the search strategy and results.
We can still do complete patentability searches, if you need that service. The cost of a complete patentability search of US patents and published applications starts at about $1,800 for a simple mechanical invention, and is more expensive for more complicated technologies. We would be happy to provide a specific quote for a search of your invention. Please e-mail or call for a quote.PCT and available foreign material (EPO, Japan, etc): The prices above are for searches in the USPTO files (issued US patents and published applications), only. Within the date limitations of the available databases, records of published PCT, Japanese and EPO applications, as well as some issued patents and published applications from a number of other countries can be searched for an additional charge, usually 50% of the base search fee - ask for a quote if you are interested in this service.
The cost of the search covers the initial consultation, the search report with copies of the patents and other references we found, a patentability opinion, and a meeting after the search if the inventor requests it. The search fee must be paid in advance.
Timing: In most cases, we can complete the search in three to four weeks. .
Rush Searches: We believe we can offer superior service to our clients through being able to actually interact with the inventor before and after the search, so if the time is not a major issue we prefer to do the search ourselves. If there is a need for faster service, we can arrange for a service in Washington to do the USPTO search, with results in two weeks or so. The cost may be slightly higher, depending on the timing. Call or e-mail if you need a quote on a rush search.
Note: this section deals with Patentability Searches - that is, a search for patents which would affect the patentability of your invention. Infringement and validity opinions (does your product infringe a given patent?) or clearance opinions (does your proposed product potentially infringe any currently valid US patent?) are much more expensive and time consuming. See "other services" below for rates.
Most of our individual and small business clients prefer the fee quote approach, while large corporations prefer hourly billing. On average, the fixed fee might be slightly higher than hourly rate, but you avoid the risk that the time spent exceeds the estimate. We feel that for the less experienced inventor this provides the best service, since we can expend the time needed to work with the client without increasing the cost unduly. It's your choice.
The following fees are broad ballpark estimates based on past experience, and assume that you have supplied a detailed description and (if appropriate) drawings of your invention.
To some degree, the cost of preparing the application is under your control - the more work you do before we start, and the better thought-out your disclosure is, the less time we have to spend drafting the application, and hence the lower the fee will be. Put another way, the closer what you give us is to a finished patent, the better.
Allow 2-3 months for preparation of application. Faster service is possible, if there is a need, but may cost more.Drawing: The drawing standards at the USPTO have become more liberal in recent years. If drawings are simple enough, or you can provide drawings which can be scanned and filed, they will be prepared as part of the application fee (see above). For more complex drawings, or if artistic talent is required, we use a drafting service. Draftsman's fees are usually $100-175 per figure, depending on complexity, and are passed through without markup. This estimate is based on the average charges in the recent past.
Patent Office Fees: When the application is filed, certain fees are due. Note that the fees below are for "Small Entities" (individuals, nonprofits, companies with under 500 employees). If the applicant is a "large entity", or has licensed rights to a "large entity", most of these fees are doubled and some discounts don't apply. If the applicant is a "Micro Entity" (individuals with only a few patent applications and who meet income limitations, employees of educational institutions), the fees are discounted a further 50%. If you are not certain if you qualify for "small entity" or "micro entity" treatment, see our "how to tell if you are a small or micro entity" page. A full Patent Office fee schedule is available on this website.
For filing any utility application, the following fees must be paid when the application is filed:
Additional fees, as required:
Assignment: If your application is to be assigned (that is, it will be owned by someone other than the inventor(s)), add $200 legal fees for preparing and recording the assignment. There is no USPTO recording fee if the recording is done electronically (which we always do). If the assignment is filed on paper, add a $50 USPTO recording fee per patent or application assigned (but why would you file an assignment on paper when you can just scan the paper and e-file it as a PDF for free?).
Electronic Filing: Brown and Michaels began e-filing applications within a week after EFS-web became available, many years ago. We are now e-filing all of our filings which can be filed electronically - which basically is almost all US patent "paperwork", except for a very few things in which originals need to be filed - certified copies of foreign applications, CD-ROM or microfilm appendices, videos, etc. There is really no reason to file any routine document on paper today (other than those few exceptions). To further add to the argument for e-filing, a $200 USPTO penalty fee applies to new applications which are not e-filed.
If you have any questions on e-filing, feel free to ask Brown & Michaels.
"Patent Pending": Total elapsed time from application to issued patent is currently averaging about 18-24 months (longer for internet business applications). During that time you can claim "patent pending" status.
Supplying "Prior Art" to the USPTO - the Information Disclosure Statement: The USPTO requires the filing of an Information Disclosure Statement (IDS) with copies of all relevant publications (patents or otherwise) known to the inventor. The IDS is usually filed after receiving the official filing receipt from the USPTO, about three months after filing the application.
We strongly recommend that you provide us with copies of all publications you know about - patents, published applications, or printed publications such as papers or articles - before we file the application (preferably, before we prepare the first draft). Note that a Supplemental IDS should be filed with the references if you become aware of any references which are relevant to patentability during the pendency of the patent - for example if a foreign patent office cites patents against a foreign counterpart of the US application or if the USPTO cites art in a related US application.
We have found that it can be very helpful to have the attorney who is preparing an application or who is prosecuting the application (preparing responses to the Examiner in the USPTO) read any references which are cited to the USPTO. This will allow him or her to properly draft the application or response to avoid this art. If we will be filing an IDS for you and we have not previously reviewed a reference, we strongly suggest that you have us read and review the reference before we file it with the IDS. Such review will be charged at normal hourly rates.
There is a separate service fee of $350 for preparing and filing an Information Disclosure Statement with up to 20 references. In addition, the following fees will apply:
Office Actions: About 18-24 months after you file your application, your application will be examined by a Patent Examiner, and almost always will be rejected to some extent (85-90% of applications receive at least one office action). The rejections may be as to matters of form, or the Examiner may have found patents in his search which he feels are identical to your invention, or which might render your invention obvious.
You will have 3 months to respond to the Office Action by amending the claims, arguing against the rejections, or both - this time period can be extended up to a total of six months from the date of the Office Action by paying extension fees. It is not possible to have a set fee for such responses, because the office actions vary so widely in content. Our fees for preparing a response are based on our time - if possible, we will provide a quote for responding to an office action when we send the action to you.
As a very general ballpark estimate, a response to a relatively uncomplicated office action is usually in the $1,900-$4,500 range. If there are a large number of claims to amend, or many references cited by the Examiner, or if we need to prepare affidavits from experts or have personal interviews with the examiner, or if appeals, etc. are required, there will be additional time and PTO fees involved, which are impossible to estimate in a general way.
Finally, of course, there is no guarantee as to the number of times which we may need to respond to the Patent and Trademark Office (USPTO), or if it may become necessary to appeal a rejection, or if your patent application will ever issue as a patent at all.Publication of Utility Patent Applications: US utility patent applications are published on the USPTO website 18 months after their filing date. The application will be published exactly as it was filed - no changes after filing will be included in the publication.
The 18 months is measured from the earliest filing date in the history of the application, so if you filed a provisional application first, or if the utility application is a continuation, continuation-in-part or divisional of an earlier utility application will be published 18 months after the earliest filing date in the chain of applications.
Non-Publication: You may request that the application should not be published. However, you may only make this request at the time of filing the application, and only if the application has not been, and never will be, filed in a foreign country which requires publication, or through the PCT. If you later change your mind and file foreign or PCT applications, you must inform the USPTO immediately or the US application will be abandoned.
Issue: Once the examiner has determined that the application may issue as a patent, you will have 3 months to pay an issue fee, currently $500. Legal Fees are $800 for preparation and filing of papers with the issue fee, reviewing the claims in the issued patent for errors, and docketing and reminding you of payment for the first maintenance fee. Allow 3-4 months after paying the issue fee for the patent to issue.
Maintenance Fees: Once the patent issues, it will be valid for up to 20 years from the date of filing the application (from the date of the earliest non-provisional application in the chain, if this is a continuation, continuation in part or divisional application). During the life of the patent, you have to pay periodic maintenance fees to keep the patent from expiring. These fees are currently as follows, but of course, you will have to pay the fees which are in effect when the payment is due. Our office charges a fee (currently $275) for tracking these fees and reminding clients when it's time to pay them, and filing the fee. The currently applicable maintenance fees are as follows:
Provisional Application page to see if this form of filing is really appropriate to your situation.
Because a Provisional needs to be as complete as a "regular" application, if it is to be considered "enabling" (that is, if you can rely on it later for the filing date), if we prepare the application from a disclosure, the cost is not much less than a conventional application. The difference will be made up later, and probably more, when we prepare the conventional application based on the provisional.
Legal Fees: Assuming we will prepare a provisional application which is basically a complete utility application except for the claims, the cost of preparing a Provisional is not much less than that for a normal utility application. The actual fee is based on time spent, and will vary based on complexity of the invention, state of the art, number of revisions required, etc. - as with a utility application (see above) you can choose whether you prefer fixed fee or hourly billing. The more work you do before we start, the less time we have to spend.
USPTO Filing Fee: $140
Preparation of Utility Application from Provisional: Most often, by the time the utility application is filed, there are significant changes and additions to the disclosure, and the inventor has come up with additional embodiments which will require additional drawings. Most Provisional Applications are filed without claims, so it is necessary to write claims, and this often requires revisions to the application and drawings to provide support for the claims you want to file. The sketchier the Provisional Application was, and the more additional material added in the final application, the more the final application will cost - up to the cost of preparing the application from scratch, in some cases, which is why we usually recommend filing the conventional application in the first place.
In the end, preparation and filing of a utility application based on a Provisional is more like preparing a brand new application based on a fairly good disclosure than just writing claims, and the cost is not much different from that. As noted above, when the time comes to file the utility application we can either quote a project fee for the work or charge on an hourly basis. Contact us for information on your specific situation.
USPTO filing fees, drafting, etc., for filing a utility application based on
a Provisional will cost as
A design patent covers the novel appearance of a useful item. Because the format of a design patent application is fixed by regulation, the fee for filing such an application is standardized.
Legal fees for preparation and filing Design Patent Application: $1,500
Drawing: Since a design patent covers the appearance of an object, it is very important that the drawings are acceptable to the PTO and show the novel features of the object. We usually recommend the use of a professional drafting service - the one we use charges $100-175 per page.
PTO Fees: The following fees are to be paid at filing:
Office Actions: About 6-9 months after you file your application, your application will be examined by a Patent Examiner, and almost always will be rejected to some extent (85% or more of applications receive at least one office action). The rejections may be as to matters of form, or the Examiner may have found patents in his search which he feels are identical to your invention, or which might render your invention obvious.
You will have 3 months to respond to the Office Action by amending the application, arguing against the rejections, or both. Our fees for preparing a response are based on time, and are usually in the $700-1,500 range. If affidavits from experts, personal interviews with the examiner, appeals, etc. are required, there will be additional time and PTO fees involved, which are impossible to estimate in a general way. Finally, of course, there is no guarantee as to the number of times which we may need to respond to the Patent and Trademark Office (USPTO), or if it may become necessary to appeal a rejection, or if your patent application will ever issue as a patent at all.
Issue Fee: $350. Legal Fees are $500 for preparation and filing of papers with the issue fee. Allow 3-4 months after paying the issue fee for the patent to issue.
There is no such thing as an "international patent", as such, although there are a few regional patents covering some countries - EPO for the European Union countries, ARIPO and OAPI in Africa, and Eurasian Patent covering Russia and some of the former Soviet republics. You will need to file for a patent in each country in which you will want patent protection.It is not really possible to accurately estimate the total cost of foreign filing in a generalized way, since it varies so widely depending on what countries are chosen, what method of filing is pursued, the fees of foreign patent attorneys in each country, exchange rates, translations, etc. Also, many of the costs are related to the details of your patent application (number and arrangement of claims, number of pages, and so on). We can try to give you an estimate once you have a US application on file.
A budget of $10,000-$15,000 would be realistic for a single foreign country, other than Canada. Please note that while we do not mark up foreign agents' bills - you are responsible for paying their charges as they bill them - we do charge a fee of $975 per country at the time of filing to cover our time spent corresponding with foreign agents, assembling documents, docketing deadlines and so on. Expect additional costs later on for analyzing and responding to foreign office actions, docketing and paying maintenance fees (annuities), etc. Many countries have extra fees to request examination, and most have annual fees (annuities or maintenance fees) payable during the pendency of the application and/or after the patent issues.Canada: A Canadian application corresponding to a US application can be filed for about $1,500 (depending on the exchange rate). Canadian practice is straightforward, and correspondence can be conducted in English, all of which makes Canada a real bargain. Given the close relationship of the Canadian and US economies, we recommend Canadian filing even if you do not intend to pursue any other foreign rights.
Europe: If you are interested in filing in three or more European Union countries, significant savings can be achieved by filing an EU patent application through the European Patent Office (EPO). The application may be filed in English. The cost to file is similar to that for filing in one single country ($10,000-$15,000). Once the EPO patent issues, it may then be registered in those European countries in which you will want protection, and will need to be translated into the appropriate languages for those countries. Additional costs of $3,000-5,000 per country may be expected at that time (translation costs are a major part of this), and maintenance (annuity) fees are due in both the EPO and most European countries.
If your application is in the fields of biotechnology, telecommunications or business methods, special rules might apply, and some such applications are not accepted by the EPO - we can advise you (with help from our European agents) if your invention falls into these fields.Patent Cooperation Treaty: If you know you will want some foreign protection, but are not sure where, or you want to delay the major costs of foreign prosecution until you have some idea of how the US patent application will fare or until you have established a market here, consider the Patent Cooperation Treaty (PCT). You can file in the US Patent and Trademark Office, and can delay your deadline for foreign filing up to 30 months (or more, in some countries) from the date of your US patent application. After the expiration of the 30 months (or more) you will need to file national (or regional) patents in whatever countries in which you decide to pursue protection.
The cost to file a PCT application is approximately $4,000, mostly in government fees - contact Brown & Michaels for a specific quote on your application.
Please note that Brown & Michaels (in fact, any US patent firm) can only file PCT applications for US nationals or residents. All others must file PCT applications in the WIPO office in the Hague, or in the country in which they are nationals or residents, using agents qualified in that country. Also, you can only file through the PCT if you are a resident or national of a country which is a member of the PCT. While there are over 130 countries who are members of the PCT, not all are - check if your country belongs to the PCT before considering PCT filings.Payments: Because we must work through patent attorneys in each country, and often must forward fees on short notice, we require that all foreign application fees be paid in advance, and will request additional advances as prosecution proceeds.
Exchange Rate Buffer: Most foreign agents expect to be paid in their home currencies, but our clients pay us in US Dollars. This will always be a problem because exchange rates will differ between the time the agent's bill is prepared and the time the bill is paid. It is your responsibility to pay the agent the full amount due in whatever currency they request - we cannot insure against unfavorable shifts in exchange rate. Therefore, if a foreign agent sends an invoice in other than US Dollars, we will add 20% to the equivalent US Dollar amount of the agent's bill at the exchange rate on the day it is received, as an exchange rate buffer to allow for shifts in exchange rates. Once the fee is actually paid to the foreign agent, any overpayment will be applied to other outstanding fees, or if there are none, refunded or held against future fees at your option.
We can file US counterparts to foreign patent applications, and handle the US National Phase of PCT applications filed in other countries. Patent applications written for other countries, or originally filed in other languages and translated, will usually need revision to meet US Patent Office standards, especially in the claims section.
Some clients prefer us to file their applications as they were filed in their own countries, using translations prepared by their translators, and have us do nothing more than review the claims for form and obvious mistranslations. Others prefer to have us essentially rewrite the application in colloquial technical English and US claim form and structure. We can provide either form of services, or an in-between level, in which we review both the claims and the specification (description) and drawings, and "clean up" the translation as needed, but not actually rewrite the application. Our fees for these services will depend upon what level of services you request.
We will provide project quotes on individual cases, when we have seen the foreign application and can properly estimate the work involved. If you are requesting a quote for National Phase filing of a PCT application, be sure to provide the PCT publication number (WOxxxxxx) when requesting the quote - we can get a copy of the PCT publication online to help us estimate the cost. If the foreign application is in another language than English, please indicate how many claims there are, and how many of the claims are independent, if possible, so that we can calculate the USPTO filing fee correctly.
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