Discussion of the Process and Fees
The first step in the process of obtaining a patent generally involves establishing the novelty of your invention by putting it in the context of prior art.
This will involve a prior art search, which I describe in more detail below.
The “Claims” are what you actually own and have legal right to when a patent is issued. After the prior art work, we will establish what you want to own, so that I can draft a set of claims that gives you the broadest protection possible while staying outside of prior art. The rest of the disclosure then has to conform to certain statutory requirements. I will draft the disclosure, and will work with you to ensure that the claims are fully supported. For fees, the first thing you probably want to know is the USPTO filing and processing fees. These are detailed here, and are on top of my fees. Note that if you are a “small entity” – generally defined as small enough to be defined as such by the Small Business Administration – then your fees at the USPTO for many activities will be half of what a larger company would pay. My fees will be the same whatever size you are. I charge basically $200 per hour on top of the USPTO fees. Typical fees for the activities mentioned at the head of this page would be (with payment terms):
Prior Art Search- $500 - $1,000. Includes search report and placement of your invention within the overall intellectual property field. You can put a stop on the order so that I will not go over a certain amount without giving you an estimate for completion. For this phase of the process, the more work that you have done in establishing the prior art before either making the invention or preparing the application, the less expensive it will be for you. If it looks as if your invention has a problem with prior art then I will contact you to discuss that fact before spending your money unnecessarily.
Provisional Filing – Generally around $1,500. Presupposes that I did the search for you, or that you do not require me to carry out any further searching (you may have employed an independent search service, for example). Note that a provisional filing is just that. There can be good reasons for doing it, but once it is filed, we need to file a so-called non-provisional (or regular utility) application within a year if you want the priority date of the provisional application. The USPTO will not actually do anything with your “provisional” except file it somewhere, then if you need to use what it discloses in a subsequent regular (non provisional) filing, then we can use it.
Non Provisional (utility) filing – Generally around $3,000 - $8,000, depending on the complexity and magnitude of the invention. Also presupposes that I did the search for you, but not that I did a provisional filing. If we filed a provisional application together, then the fee may be significantly less it would be otherwise as I would be able to use much of the disclosure from the provisional. My terms are the same as for the provisional application.
Subsequent Activity – After the examiner gets around to examining your application, he or she will send me what are called “office actions”. These will probably require a response of some kind that I will charge by the hour to prepare. The most likely responses required from us will be amendments or responses to his or her questions about prior art. As I mentioned above, we will discuss what needs to be done to get the patent allowed so that you understand what you will be receiving upon final allowance.
We need to talk. Once I am clear about your needs, I will work with your representative – often the inventor – to put the invention in the context of the prior art. Normally at this point I would prepare a prior art search report if you have not already done so.
If you decide to go ahead with an application, I will prepare either a non provisional or provisional application, depending on several factors that we will discuss,
and then review the application again with you before filing it.
After I file a non provisional application, we will probably wait one to two years for the examiner to send us a first office action. If the examiner takes more than 18 months to make a first response, we will likely see the application published first. We can stop or limit publication by choosing to not file in other countries, and I can discuss this option with you during our initial discussions.
I can also file applications with the USPTO under the patent cooperation treaty, and can find international representation for you as your international applications go forward. One comment on my location. I am located in Delaware. The vast majority of patent applications are dealt with by mail, fax and sometimes email. If I need to travel to your location, or to D.C. to represent you in an interview that will not be a problem.