Expecting unexpected patent costs
I still remember the one piece of sage advice given to prepare me for my wedding day: expect the unexpected. Having the expectation that not everything would go as planned helped my bride and me to avoid getting frazzled when the inevitable hiccups occurred. My goal with this article is to help entrepreneurs and small business owners gain a more realistic expectation of patent costs after the initial filing while understanding the high likelihood of unexpected events that will incur additional costs.
Unexpected patent costs vs. hidden costs
We try hard to help clients understand the high likelihood of additional costs that will arise after filing a patent application, particularly in the case of a utility nonprovisional patent application. When a patent prosecution event arises that requires a fee, we typically advise the client ahead of time and, if practicable, quote a flat rate estimate for handling the matter. In short, there should be no hidden fees with our firm. But, there may be unpredictable costs. Let’s delve into the bigger costs that are unpredictable, and yet to be expected.
How much does it cost to respond to patent rejections?
In a typical utility nonprovisional patent application, it is almost certain that you will receive at least one rejection called an Office Action. In most cases, the patent examiner will state that your invention is not novel and nonobvious because it has already been done before. In responding to an Office Action, the goal is to show that your claims cover a new and unique invention that is worthy of patent protection. Such an Office Action response may require a combination of claim amendments and arguments, aka remarks.
A typical response may range from $900 to $2,800 for attorney’s fees, not including USPTO fees. The lower end of the range would apply in simpler Office Actions that do not involve rejections based on the prior art. For example, the claims may contain some indefinite language that need to be deleted or replaced with clearer terms. Another example may involve objections to the patent drawings that can be resolved with clearer drawings, or possibly with canceled claims.
A more expensive Office Action response may involve multiple prior art references, several claims and/or multiple grounds of rejection such as obviousness or ineligible subject matter. The higher the complexity, the greater the cost.
Another major factor in the cost of a patent response is whether the Office Action is non-final or final. A Final Office Action (FOA) typically requires greater costs because of the USPTO fee for a Request for Continued Examination (RCE), if an RCE is advisable.
How much does it cost to talk to the patent examiner?
In certain situations, it may be cost-effective to talk to the patent examiner before filing a written response to an Office Action. Our firm charges flat rates which start at $600 for an Examiner Interview. Situations that may warrant a call to the examiner include:
- First Action Interview (FAI) Program
- Examiner not understanding the claimed invention
- Examiner not understanding the cited prior art or applying references correctly
- proposed claim amendments in response to a Final Office Action
Ongoing patent costs: disclosing known prior art
In addition to Office Actions, you may have to disclose known prior art references to the USPTO by filing an Information Disclosure Statement (IDS). If you already knew of certain prior art references and passed those along to your patent attorney, an IDS may be submitted with the initial filing of the patent application or shortly thereafter. Our firm charges a flat rate of $200 for each IDS submission, and you may have to make multiple IDS filings depending upon the circumstances.
The probability of an unexpected IDS increases when you have filed multiple patent applications that are related and co-pending. For example, you may have at least two pending US patent applications which relate to the same subject matter. Another scenario may involve one US patent application and one counterpart foreign or international application.
Whenever new prior art references are cited in one application, you may need to disclose those references to the USPTO in the other related application(s). Don’t blame your patent attorney – this duty of disclosure is an obligation imposed by the USPTO. You might be able to avoid an IDS if you decide to abandon the other application(s) or if the prior art references are not relevant (e.g., “A” type references in a PCT International Search Report, as opposed to “X” or “Y” references). Also, most foreign patent offices do not impose such an obligation so the duty applies primarily in the US.
What is the cost of multiple inventions in a single patent application?
It might make sense to combine multiple aspects of an invention into a single patent application. However, additional costs may be incurred if the examiner believes your application contains multiple inventions and issues a Restriction Requirement forcing you to choose one. You must then file child applications, also known as divisional applications, to pursue the non-elected claims/inventions. Responding to a Restriction Requirement may have a nominal cost, but filing divisional applications can add up due to attorney’s fees and USPTO filing fees.
What are ballpark cost estimates for a utility patent application after initial filing?
Based on a typical utility patent application having two to three Office Actions, a ballpark range of costs after initial filing can vary between $7,000 to $10,000. Costs can certainly exceed the high end of this range if patent process includes further Office Actions and/or an appeal.
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