Cost of filing a software patent

Below is an image showing you the advantages of having a patent attorney help with the filing. Assuming the initial patent search comes back positive, here are a few scenarios where we would want to file a non-provisional patent application:. A Non-Provisional Application , I mentioned previously, requires explicit claims.

Although I cover claims very thoroughly in a great video here , I will touch on them one more time in this post. Even though claims may only comprise of one, two, or three pages of what might be a fifty-page specification, the effort and care that is put into crafting those claims is considerable, and this craftsmanship is the true art of the patent attorney.

Non-provisional applications also have more formal requirements with regard to structure and filing, including an invention oath one must furnish a sworn oath that they are the original and true inventor. The patent office also requires the inventor to submit an information disclosure sheet that identifies all reference points, all prior art, and more or less all of the knowledge of the industry that the inventor and the attorney discovered while doing their patentability search.

That way, the examiners have all of the same information available to them that the inventor and attorney had at their fingertips when drafting the application. Because it is the formal application that will be reviewed and examined by the USPTO, the cost for this is about twice that of provisional applications.

However, if a provisional application was previously used, we will credit the provisional patent application and search — if any investment toward the fees. The main reason for this is that a lot of the work from that earlier filed provisional patent application can and will be used to complete the non-provisional application.

Of course formalized claim sets, drawings and a revised specification are all part of the non-provisional. Note: there are many many other fees that may come into play as a patent application is submitted.

So, the most important thing to remember about design patents is that what you own at the end of the day is the 3D appearance of the object, not what it does which is what utility patents cover , but instead what it looks like. Therefore, the job of a patent search will still rely on actual words and phrases to narrow in on specific shapes and designs.

A search will help to determine whether the shape itself of your article of manufacturer is worth a design patent for. The major complications of a design patent application are not long paragraphs of description or complex claim language, but instead the DRAWINGS and how difficult it is to capture the shape of the article.

The cost of filing an international patent application is just the beginning of the work. The real work and financial outlay lies in the commercialization and enforcement work in the various countries you hold rights in. You actually file an international placeholder, which is called the Patent Cooperation Treaty filing.

This reserves the right for you to then later file in the several countries that are a part of the treaty. There are efficiencies and benefits to using this PCT, but you still have the burden and cost of filing in the foreign country under those foreign rules, and therefore hiring foreign counsel to accomplish the same thing you have done in the US. So, you can assume that the cost of a foreign patent application is on-par with a US patent application.

Meaning, they license the rights to those foreign jurisdictions without having to incur the costs of filing — and allow the party licensing the rights to follow through with that. International patents are complex, If you have any questions please book a free consultation. A unique variety of plant species is an incredible find, and while the requirements for getting a plant patent are a bit different than utility patent applications, the amount of work is about the same, therefore the cost is the same in terms of legal fees.

A plant patent application must include a full botanical description which must include the chemical and molecular composition of the plant species. This is very similar to the utility patent application requirement for a detailed description that enables a person of ordinary skill in the art to be able to make and use the invention. Much like a utility or design patent application, prior to filing, we will want to conduct a detailed patent search and provide an opinion on patentability.

We classify plant patents as highly complex because of their sophisticated botanical descriptions and difficulty in searching, they are usually on the higher end of that spectrum.

This will cover the complete specification, claims, and drawings which are usually pictures for plant patents. A divisional patent application is one that is split off of a parent application as part of a response to a restriction requirement by a USPTO patent examiner.

This violates the rule that a patent application can only contain one invention. This means that with an original patent application with 20 claims, the examiner may say that Claims are one invention, claims are a second invention, and claims are a third.

Assuming the inventor chooses Claims to proceed with first, the inventor then has the option to file a divisional application on either claims or i invention. The trick here is that a divisional application sometimes requires a larger or revised specification, and also includes further definition around the claims. For example, the claims only 4 total should be expanded into 20 which is the max allowed without additional fees in order to capture the most of the second invention.

As mentioned, a second divisional could be filed in a similar way covering Claims With each additional parallel filing, you will be incurring additional prosecution cost.

A continuation is much like a divisional , in that it is a child of and most come from a parent patent application. Different from a divisional, a continuation is filed optionally when additional new claims are sought for an invention.

There are two flavors: continuations and continuation-in-parts sometimes called CIPs. This usually happens when an inventor has something in mind for the application of their invention, and during:. If this is true, then the continuation can share the same priority date with the original filing, and therefore is zero risk of another inventor having come up with the improvement since filing.

So, the inventor will not be able to claim priority back to the date of the original parent patent application date. In these cases, as you probably guessed, a CIP must be filed in order to identify the new matter and new claims being sought for protection. If you have any questions please book a free consultation. If the claims were done right, the language should be quite broad and reflect the intent of the inventor to achieve the most exclusivity possible for their work.

As a result, examiners will often respond by requiring the applicant to limit or modify their claim requests. Thus, the examiner will reject the application — and when they reject, they will issue what is called an office action. In most instances, these office actions — letters or emails sent to the inventor and their attorney — need to be responded to within 2 to 3 months to prevent from having to pay additional fees. The time it takes to prepare a legal argument and amendments will depend on the size and complexity of the rejection, but oftentimes you can assume between 8 and 15 hours of work.

There is a lot of time and money that is needed to get your invention protected the right way. By breaking down the time investments into much smaller chunks search, application, office action, and beyond , the whole process becomes much more manageable both intellectually and financially. Hopefully, by now, you have a much better understanding of how the patent process works and why it is always better to ask that question specifically.

Remember when calculating the cost make sure to take into consideration:. If you would like more information on communicating with your patent attorney about patents, then we recommend reading our other article, 10 Tips for Inventors: Meeting With A Patent Attorney. Tell us… what did you find most helpful about this article?

Was there anything about patent costs that you wished that you knew earlier? Click here to book your free consultation with us to get started! Legal Note: This blog article does not constitute legal advice. Although the article was written by a licensed USPTO patent attorney there are many factors and complexities that come into patenting an idea. We recommend you consult a lawyer if you want legal advice for your particular situation.

No attorney-client or confidential relationship exists by simply reading and applying the steps stated in this blog article. Please be in a quiet and distraction-free environment. Save my name, email, and website in this browser for the next time I comment.

How Much Does a Patent Cost? 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 months for preparation of application. Faster service is possible, if there is a need, but may cost more. 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. 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 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 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:. 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.

During that time you can claim "patent pending" status. 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. In addition, the following fees will apply:. For example, if it is necessary to file the application with "missing parts" for example, if we do not receive a signed declaration form in time , or informal drawings, there are additional fees for filing forms or formal drawings separately.

There are also additional fees for filing DNA sequence listings, deposits of biological materials, CDROM listings etc, which might be required on very complex or specialized applications. 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. 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.

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. 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. Allow 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. The currently applicable maintenance fees are as follows:. While they can be an effective tool in protection of intellectual property, Provisional Applications are not for every person in every situation - before you decide to file a Provisional Application, please look at our 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.

The more work you do before we start, the less time we have to spend. 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. Invariably, those offering bargain pricing are going to provide you with comparatively less time and service. Be sure to do your homework before hiring patent attorneys offering low fees. Here is an idea of what you might expect. The first step in the process is usually undertaking a patent search to determine whether moving forward make sense.

If both a US and international patent search is desired the cost does go up. It is important to understand that the cost of the patent search is a fixed, non-negotiable cost because patent attorneys will outsource the search to firms who specialize only in finding prior art, much like is commonly the case in real estate transactions where attorneys hire title search companies who provide the information necessary for the attorney to review. Upon receiving the patent search the patent attorney will review the search and issue a patentability opinion either verbal or in writing, depending upon your preference and other considerations.

The price of the patentability opinion can range quite a bit depending upon the complexity of the prior art found, the volume of prior art found, and the amount of written analysis requested. Written analysis can range from a brief opinion letter that is 1 page to a comprehensive assessment that may be 8 to 10 pages long, depending upon the technology. Additionally, a patentability opinion can and frequently is influenced by the complexity of the invention being search.

Again, it is important to remember that the complexity of the field of invention and number of related patents greatly affects the likely expenditure. After the search and the patentability opinion or consultation it is up to you, the inventor, to give the green light to move forward.

It is worth noting that the critical question for the inventor is not whether a patent can be obtained, but rather a commercially useful patent can be obtained. If you layer enough specifics together it is usually possible to get a patent issued, but the more specifics the less commercially useful the patent will be because it will be easy to get around the rights obtained.

Thus, the relevant question should be whether the protection that can likely be achieved is worth the expense of filing a patent application. If you give the green light your patent attorneys will then start working on the application. It is very difficult if not impossible to give a ballpark estimate for costs without knowing a good bit about the.

I strongly suggest that new clients start with a patent search so that we can learn about the invention and the prior art. This has benefits because it may be the case that moving forward does not make sense.

If you do move forward after a search the patent application will be better because you will know what traps may lie ahead and it gives your patent attorney the ability to describe your invention in a way that accentuates the positive and distinguishes the invention over the prior art.

He is a patent attorney and a leading commentator on patent law and innovation policy. Quinn has twice been named one of the top 50 most influential people in IP by Managing IP Magazine, in both and From , Mr. Read more. As for hourly rates, I do not think the hourly rates in the EU certainly in Germany are less than those in the US — however, in England you can probably get a better deal if you avoid the large London firms.

Also, you might have a problem with attorney-client privilege in a US court if you are a US-based client hiring EU-based counsel for the original filing.