This post is part of a series of posts entitled A Guide To Intellectual Property Protection. For a comprehensive list of articles contained in this series, click here.
The expenses associated with obtaining patent protection fall into two general categories: patent attorney fees and government fees, both of which are discussed below.
Patent Attorney Fees
Patent attorney fees include the cost of (i) drafting the patent application, (ii) completing the necessary formal documents, and (iii) drafting responses to the Examiner’s Office Actions issued during the examination of the application. The cost of drafting a patent application, including completion of the attendant documents, is highly dependent upon the complexity of the invention, but typically runs between about $6,000 and $15,000. The cost of drafting a response to an Examiner’s Office Action depends upon the complexity of the Action but typically runs between about $1,500 and $3,000. The patent application may be allowed on the first Office Action which would, of course, eliminate the cost of drafting a response. Patent attorneys typically work on an hourly fee basis. Very few are willing to work for a fee contingent upon profits to be derived from the patented invention. Further, patent attorneys typically require the prepayment of a substantial portion of the application costs. Patent attorney fees can be eliminated completely if the applicant drafts and prosecutes the patent application himself or herself. The Patent and Trademark Office does allow an applicant to file and prosecute his or her own patent application, and various publications are available to assist those wishing to file their own application.
At the time of printing this edition, the government fees include (i) a basic filing fee of $280, a search fee of $600 and an examination fee of $720, (ii) an post-allowance fee of $960, and (iii) periodic maintenance fees which start at $1,160, and later escalate to $3,600 and finally to $7,400. Government fees may be reduced by one-half if the applicant qualifies as a “small entity” which is defined as (i) an individual, (ii) a business with 500 or fewer full-time, part-time and temporary employees (weighted average), or (iii) a qualifying non-profit organization or institution. Whether the invention is licensed to an entity that would not qualify as a “small entity” is also considered in the determination of the appropriate fees to pay. Additionally, the new 2011 Act establishes a “micro entity” designation that entitles that applicant to a 75 percent reduction in government fees. To qualify for micro entity status, the applicant must certify that he or she:
- Qualifies as a small entity;
- Has not been named as an inventor on more than 4 previously filed patent applications;
- Did not, in the calendar year preceding the calendar year in which the applicable fee is paid, have a gross income exceeding 3 times the median household income; and
- Has not assigned, granted, or conveyed (and is not under obligation to do so) a license or other ownership interest in the application concerned to an entity that, in the calendar year preceding the calendar year in which the applicable fee is paid, had a gross income exceeding 3 times the median household income.
The basic filing fee is due and payable upon filing of the patent application. Several controllable factors such as the existence of more than 20 claims, the existence of more than 3 independent claims, the late filing of necessary attendant documents, etc., may increase the basic filing fee. The post-allowance issue fee is due and payable when and if the Examiner allows the application. The maintenance fees are due and payable 3-1/2 years after issuance ($1,600), 7-1/2 years after issuance ($3,600), and 11 1/2 years after issuance ($7,400). The indicated maintenance fees may be reduced by small entity and micro entity status if applicable. Failure to pay any of the government fees when due can result in abandonment of the application and/or patent. 24 In summary, the total cost of filing and prosecuting a patent application typically runs between $7,500 and $20,000, and must be expended without any guarantee of success.