What Are the Hidden Costs of Filing a Patent Application

What Are the Hidden Costs of Filing a Patent Application

by Joe Runge, Esq., August 2015

Patents are expensive and you will need to pay before you file, while you are negotiating with the patent office and after the patent issues.

Application Drafting and Filing Costs

Filing costs for a utility, provisional or design patent are fixed and depend on the size of the entity that owns the patent. Large companies pay more, small inventors pay less. The majority of the costs associated with filing a patent application usually go to the person who writes the patent: a patent agent or patent lawyer.

Most practitioners charge hourly but some will prepare the patent for a fixed cost. Generally the more experienced the person drafting the application, the more you will need to pay. Once submitted to the United States Patent and Trademark Office (USPTO), provisional patent applications do not undergo any review and cannot be issued as enforceable patents. Because of there is no back-and-forth review process associated with provisional patent applications, drafting costs and filing fees will likely be the only costs you need to pay for a provisional application.

Prosecution Costs

Once your utility or design patent is issued to the USPTO, it will go through a rigorous review process called the prosecution phase. Do not be alarmed by the name, you aren’t in trouble, but you will have to defend your claims against the USPTO patent examiner to prove your invention is innovative and adds value to the marketplace.

You will need to pay throughout prosecution. For example, you will need to pay for the search the examiner conducts for a utility or a design application. For each utility application, you will need to pay an examination fee. When the examiner sends a first Office action (almost certainly a rejection), you will have one month from the date of receipt to reply and you can pay for monthly extensions (up to six months from the date of the rejection).

Most of the cost of prosecution comes from paying a lawyer or agent to respond to the patent office. Prosecution is complicated and having a skilled lawyer draft your responses will help substantially in convincing the USPTO to issue your claims. Again, lawyers usually charge hourly and if the examiner is making complex and technical arguments it may take a lot of time to make a good response.

You get what you pay for and often the most successful lawyers are former examiners that can both make compelling arguments on your behalf but also deal with the examiner in terms they both understand.

Issuance and Maintenance Costs

For utility and design applications, you will need to pay a fee of a few hundred dollars once the examiner agrees to allow your claims and grant you a patent, this is called an issuance fee, but this isn’t the end of your fees. On the three and a half, seven and a half, and eleven and a half year anniversaries of your issuance date you need to pay a fee to maintain your patent. Failure to pay those fees results in abandonment of your patent and the fees increase over the life of the patent.

Write A Strong Application

There are substantial fees to correct errors. If you need to change the list of inventors after you file, then you need pay a fee. If you are late in making responses, then you will pay more fees. If you file an application that is missing parts, then you will need to pay a fee to correct the application.

If you are drafting your own patent in order to save money then make sure you file your patent correctly. Errors can add up, even if you draft a great application, and those fees will go a long way to eating into your cost savings.

The USPTO gives substantial guidance on the process of filing and prosecuting a patent. Read it very closely and check your work so that you can avoid paying fees for errors.

International Filings

If you want to assert your patent in foreign countries then you will replicate this process in each country. International portfolios of patents are expensive. Really, really expensive. Most law firms rely on foreign associates that have expert knowledge of a foreign country’s patent law and patent office. It is very difficult for the individual inventor to obtain multiple international patents and the cost makes even large companies carefully consider the economic case for foreign patents.

Getting a patent can be expensive, but knowing where you can expect to spend the most money can help you save.

LegalZoom can help you get a patent at an affordable price. We’ll help you consult with a patent professional about your application. We can also help you do a patent search, get professional patent drawings, and even speak with an independent attorney about your patent.