Patent management

Patents are governed by the US Patent and Trademark Office (PTO, USPTO). Getting a patent for your invention is an expensive and time consuming process.

You should know beforehand that certain industry experts estimate that only 10% of inventions with issued patents ever make it to market, and only 3% of inventions with issued patents generate income for the inventor.

An inventor may wish to create a prototype prior to filing for a patent due to the expense of the process. By this stage the inventions plans and drawings are likely to be heavily altered from initial concepts. If the inventor wishes to recruit investors before the patent is filed, they can have the investors sign non-disclosure/confidentiality agreements (NDAs). Inventors can also submit a $10 Document Disclosure plan to the PTO - the inventor sends in two copies of a description and sketches, and the PTO returns one while keeping the other for two years. After two years the PTO will destroy their copy. The main purpose of this is to establish an officially certifiable conception date for your invention. This is not in any way a true patent and does not offer much protection to the inventor, it is only a step that the inventor can take prior to undertaking the longer process of filing for a patent.

There are many types of patents, but two types apply to most entrepeneurs. These are Design Patents, and Utility Patents.

Design Patents apply to the appearance or ornamental design of your invention, such as jewelry and clothing. A design patent has a term of 14 years and requires no maintenance fees. If you modify your design, you have to file another design patent to protect the new modified design. Design patents have an application fee of $165 and if granted, an issuance fee of about $400.

A utility patent protects the function or method of your invention. A utility patent term lasts 20 years and requires maintenance fees about every 4 years. A utility patent is more expensive and more difficult to register than a design patent, but does offer more protection.

Things you should know about utility patents:

• The cost for a patent application is $395
• If a patent is granted, you will then need to pay a $600 issuance fee
• There are also maintenance fees assessed 3 times during the life of a granted patent, about every 3-4 years. These fees are $525 after 3-3.5 years, then $1,050 after 4 years (7-7.5 years total), then $1,580 after another 4 years (11-11.5 years total).
• Thus the total cost of a utility patent is $395+$600+$525+$1050+$1580=$4,150, excluding patent attorney fees.

Patent attorney fees are in addition to filing fees. For design patents, a patent attorney will typically charge $500 to $1,000.

For utility patents, patent attorney fees are much higher. They are $3,000-$5,000 for straightforward patents, but will reach $5,000-$10,000+ for complex patents involving complicated technology (e.g. biotechnology, complex electronics).

A patent attorney may also bill the client for patent searches, and also for drawings if the client asks the attorney to manage that task. Patent searches cost $175-$250 per search, and professional drawings typically cost $75-$250 per page.

Almost all patents receive at least one “office action” (a communication from the patent examiner). These may also drive up your attorney fees. You should ask your attorney if his charges will increase based on the number of office actions to which he has to respond. One reason the attorney will only give estimates for his services is that there is no way to know for sure how many office actions he will need to respond to.

Summary:

• A design patent filed with the help of a patent attorney should cost between $1,100-$3,000.
• A utility patent filed with the help of a patent attorney might cost between $4,000-$11,000+, plus maintenance fees of over $3,000, for a total cost of between $7,000-$14,000+.

While a patent attorney is expensive, a badly filed patent can give a false sense of security to the inventor. It is very common for inventors who file their own patent to then see their patent struck down in court, thus wasting all their patent effort. A patent filed by a professional attorney is far less likely to be struck down. We recommend that you contact multiple attorneys for cost estimates before choosing one. Patent filing is usually straightforward so they should be able to give you an estimate. If they refuse, you probably shouldn’t select that attorney.

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