To create a monopoly by preventing another from practicing your invention is serious business and should not be presumed as an easy or cheap task.
The average fee charged by a reputable attorney for a patent application is:
Why does it cost so much?
As an industry practice, patent attorneys charge by the hour. While we may be able to offer a flat fee pricing, behind the scenes each quote involves a good faith effort to guess the number of hours we might spend on your matter.
But ‘xyz professional’ that I found Online is much cheaper. Why so?
Unfortunately, there are many unscrupulous professionals out there who will happily take your money but fail to deliver results. You will find numerous Online professionals offering a “too good to be true” pricing/ fee structure.
Since a patent professional is going to calculate the number of hours they spend on your matter those offering to draft a non-provisional utility application for $3,500, with an hourly rate of between $300-$500, would probably spend between 7-12 hours on the matter (depending on their billing rate). However, this is not good enough. Further, you should be wary of a professional offering a lower hourly rate (there’s a demand for patent professionals; if a professional is offering a lower hourly rate, ask yourself why is this professional offering their services below market? There is always a catch!)
Are patent agents basically attorneys, but cheaper?
Absolutely not! Agents are usually a good option when they work under the guidance of an attorney. Agents can assist with writing applications and are familiar with the procedural requirements of patent law, but they are not trained to be lawyers and are legally allowed to offer advise (and generally have poor knowledge) about the substance of the law (that is law decided in court). Why is this important? Because obtaining a patent is only one step. If you cannot enforce your rights after obtaining a patent (which requires legal action), what good is your patent?
The problem with the cheaper xyz professional you found Online.
Once examination of your application begins, you will start receiving office action rejections (as is the norm). However, if the application is not well drafted, you may get stuck in a “hell-hole” resulting in repetitive rejections that soon becomes prohibitively expensive. The result: you are forced to abandon the application — thousands of dollars wasted with nothing received in return.
To summarize: if you opt for a “not so cheap” service you might land up paying a little more ( depending on the attorneys hourly billable rate).
However, if you select a cheap service, you may not get anything at all.
You are also encouraged to read our tips on how to select a patent attorney.
While searching for a patent professional, you may notice the following:
A few tips to select a patent professional are:
1. Attorneys usually bill by the hour, and while we might offer you a flat fee, internally all fees are calculated based on an estimated number of hours one is most likely going to spend on the matter.
2. The Internet has a plethora of professionals who would draft an initial non-provisional application (main utility filing) for as little as $3,000, it is our opinion that those professionals are doing you a disservice, since the success rate of getting a patent allowed with such professionals would most probably be extremely slim. What good is a cheap service if it doesn’t result in a patent? At an average it takes 2-4 years to get a patent granted. That means, filing a patent application (yes, it is only an application until granted) is just one step of many many more to come.
3. Getting a patent allowed is a complicated process and takes time to strategize and plan. And it all starts from the initial drafting. In that respect, patent applications are no different than a game of chess, where predicting the other party’s move in advance can result in winning the game. However, if the initial execution is flawed (as it may be with cheap offerings available online), everything will fall down like a house of cards.
4. If you can, prefer patent attorneys over patent agents. While agents market themselves as “same as an attorney, but cheaper,” you should note that they did not go to law school, and did not pass any state bar exam. While agents, like attorneys, have passed the patent bar exam, the patent bar exam has nothing to do with a substantive understanding of the law. The patent bar exam is only a test of procedural rules followed by the USPTO. The fact is law school (and a state bar exam) assists an attorney to develop certain skill sets (like persuasive writing, negotiation skills, providing a legal analysis of case law when the examiner does not play nicely, etc.) which a non-lawyer patent agent is not trained to appreciate.
5. Finally, always ask for samples of past patent work. You should be careful if an attorney provides you a patent application publication as a sample. Patent publications are patent applications that have been published. They are not patents. Read the document caption carefully, it will let you know if it’s a patent application or patented matter. In the header section a patent publication will state “United States Patent Application Publication,” while an issued patent will state “United States Patent.” To see a patent document, please look at our portfolio section for examples. So, while a patent application document may look similar to an issued patent, an application may very well be abandoned ( and thus may not be significant).
New inventors often get confused with the “detailed disclosure” that they need to provide their attorneys to procure a meaningful patent. While the general tendency is to disclose as minimum as possible (fearing a competitor may copy or steal the idea if disclosed in detail ), such a mindset will most probably result in failure with no patent rights.
It is important to recognize that patent rights can only be secured if you’re willing to disclose your invention fully. If you’d like to keep it a secret, you should hide it under lock and key and call it a trade secret. There is no “middle ground,” and an attempt to “have the cake and eat it too,” will only result in failure (and thousands of dollars wasted in legal fees).
Because a patent application requires full disclosure on how to implement the invention, also known as the “enablement requirement.” This means that you should disclose your invention in as much detail so that a person of ordinary skill in the art (of your invention) should be able to read your disclosure and implement your invention without any guess work or decision making of their own.
Note: If you used a black-box, where things happen “auto-magically,” that reasonably will not be considered as part of your invention — because you did not describe how to implement it and a person of ordinary skill in the art has to become the decision maker on their own — so whoever discloses the black-box, logically that aspect becomes their invention — not yours!
How to Write a Detailed Disclosure for Your Patent Attorney in 3 Steps?
1. What is the unique aspect of your invention?
As an inventor you should always proceed methodically. First write down what is the unique character of your invention — the feature that deserves a patent. Please note, one unique patent worthy feature per application or disclosure.
2. How is the unique aspect of the invention implemented — that is, how are you implementing the invention?
For the feature disclosed above, explain the “know-how” — how is it implemented (or going to be implemented)? This answer will need flow charts, diagrams, etc. Outputs/ results have no meaning unless you are willing to describe how you achieved those results.
3. Have you explained in enough detail so that a person of ordinary skill in the art could combine the answers in questions 1 and 2 to replicate your invention WITHOUT any guess work or decision making of their own?
If your answer is YES — Stop; send it to your attorney.
If your answer is NO — go back to question 2 and flesh out more details.
Your task compared to that of your patent attorney
It is important to reiterate that as an inventor, you (not your attorney) are the subject matter expert of your invention — your attorney has two goals: (i) strategize the innovative concept, and (ii) based on the strategy, procure you the broadest patent rights possible. While patent attorneys can usually “fill in the blanks” you still need to do the heavy lifting and explain the concepts in detail, as you probably know more about the subject matter of your invention than your attorney does.
Read question 3 again, and keep on providing details until the answer becomes yes. Golden rule: when in doubt provide more information.
Usually, inventors would either file a utility (provisional or non-provisional) applications or a design applications. As a patent attorney, I’m asked the difference between the two almost everyday. For starters, you can read about the difference between a design v. utility patent applications here.
Design patents are often ignored by patent applicants (and their patent attorneys) when the invention includes a functionality (that is, a utility). And while it may not make sense to file a design patent application in each case, however, to maximize the true potential of ones invention, filing both a design and utility patent application simultaneously should be considered. In fact such filings often, when possible, complement each other. At other times filing one application (e.g., design) first may be advisable to create a comprehensive strategy for the timing to file the second application (e.g., utility). Depending on the situation, the advantages of such strategies, can be seen when enforcing ones rights based on the procured patents.
Whether it is a software based design or a physical/ tangible product, design patent applications can protect how the invention physically looks, regardless of the underlying functionality (or utility) of the invention.
Therefore, design patents can be helpful in inventions where there can be a number of ways to implement the functionality of the invention (e.g., software based inventions, tangible products, etc.), but the invention offers a unique design to form the basis of the patent. For example, in Graphical User Interface (GUI) based objects, one does not need to learn how the GUI based object functions, and the focus remains on how it looks. A further advantage of design patents is that they have over a 97% allowance (grant) rate rather than an approximately 40% allowance rate of utility based patent applications. Given the fact that investors (not to be confused with inventors) want to hear “patent” instead of “patent pending,” a design patent seems to have become an underutilized tool that can reward inventors in many different ways.
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Track one is USPTO’s Prioritized Patent Examination Program in which a utility patent application is given priority and examined before other non-prioritized (normally filed) patent applications. Under the track one initiative, the USPTO attempts to reach finality of the matter within one year of filing the patent application. Finality means either an allowance (grant) or a final office action, instead of a 2-3 year time frame for normally filed applications. If you’re unfamiliar with these terms, we encourage you to read the patent process first before continuing further.
To prioritize a patent application one needs to pay an extra government fee of $4,000 (large entity), $2,000 (small entity), or $1,000 (micro entity). If after making an application a track one priority, the patent application receives a final office action rejection then the application will be removed from the priority queue and presumed to be a conventionally filed non-priority application, unless the Applicant again submits the priority government fee mentioned above. These fees are in addition to the usual government fees for non-prioritized applications.
The advantage of track one applications is that the chances of approval are higher than conventional non-prioritized patent applications. However, such an approval comes with an unwritten caveat. In order to get an allowance the claims need to be sufficiently narrow enough to convince the examiner that no related prior art exists that can bar patentability of the claims. This is because track one applications impose a deadline on patent examiners and thus they have to rush through the examination process. If the claims are broad enough, the examiner would tend to issue a final office action rejection (better be safe than sorry approach) and remove the application from fast track, instead of an allowance. However, since broader claims are generally preferred, a strategy often employed by patent attorneys is to file a non-prioritized continuation (clone) application with a broader claim set in conjunction with the prioritized application having a narrower claim set.
Thus, prioritizing an application is usually suggested for fast evolving technological areas due to the additional fees incurred. Further, applicants should be prepared to file a narrow claim set to take advantage of the track one program, if desired.
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Product licensing can be achieved cheaply by spending as low as $65, by filing a provisional patent. So, you came up with an idea for product that does not exist in the market, and you believe it will be a commercial success. In order to obtain royalties from a potential manufacturer, you will have to create a monopoly on the right to manufacture, use, and sell the product by seeking patent protection. This can be done by filing a provisional patent application. Once you have licensed the rights to manufacture the product, royalties are typically around 5 percent of gross sales of a distributor, that is the price at which the product is sold to the retailer from the manufacturer.
The steps to license your product are:
You can also read the difference between a provisional patent application and a non-provisional patent application here. Finally, you may be needing to file a design patent application instead of a provisional, more information is provided here. If you’d rather prefer to hire a patent attorney to assist you with securing your patent rights before product licensing, you can read about our tips on selecting a patent attorney.
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