Patent Prosecution

The following is a short synopsis of what you may expect, in terms of procedure and costs, with respect to filing a patent application.

The major cost for preparation of a patent application relates to attorneys fees as a typical patent application requires 20-30 hours to prepare. In addition, there are certain U.S. Patent Office (PTO) fees, which are generally revised annually. In addition to the hourly work and the required PTO fees for filing a patent application, other legal and official fees as well as miscellaneous expenses will be required to prosecute the patent application into an issued patent.

A patent application must be filed with a Declaration and Power of Attorney either at the time the application or before the application is indicated for allowance by the PTO. There is a surcharge for the filing the Declaration after the application has been filed.

The PTO will undertake an initial review of the application after filing.  Often the PTO will require formal drawings which will need to be prepared by a patent draftsperson skilled in the intricate requirements of acceptable patent drawings. Our fee for working with the draftsperson, review of the formal drawings, and filing the drawings will again be at our hourly rates.

An Assignment to transfer the rights of the inventor to another entity may be filed and recorded in the Patent Office at any time during the life of the patent. There is a fee associated with preparing, filing, and recording the Assignment.

Three months after filing a patent application, an information disclosure statement (IDS) must be filed to advise the Patent Office of all prior art of which you are aware that relates to your application. Depending on the number of documents, the fee to prepare the IDS can vary.

Once the patent has been examined, which usually takes approximately two years after the application has been filed, an Office Action or Notice of Allowance will be sent by the Patent Office. A reply to the Office Action, in the form of an Amendment and Remarks is often prepared and filed, preferably within three months; otherwise, extension fees will be incurred. Additional Office Actions may thereafter be sent by the Patent Office and replies will need to be prepared with appropriate responses. The legal fees for preparing and filing each reply will be at the hourly rates indicated in our retainer letter, plus the cost of any miscellaneous out-of-pocket expenses.

Upon receiving a Notice of Allowance indicating that your patent application is in acceptable condition, an issue fee and any outstanding formal requirements not already filed will be due.

After the patent issues, maintenance fees are due at 3.5, 7.5 and 11.5 years. When possible, we will provide reminder notices to the client in advance of when the maintenance fees are due and, upon instruction and receipt of funds, file the maintenance fees.

The cost of filing, prosecution, and maintenance of foreign patents which should start within one year of the filing of the U.S. patent application is very dependent upon particular countries of filing, and we would be happy to obtain quotes for you when the need arises.