What to know about Patents


How much does it cost to obtain a U.S. patent?

Each case is different, but it typically costs a minimum of $15,000 to $30,000 by the time a single US utility patent is issued.  Additional funds should be budgeted for prior art searches, freedom to operate analyses, attending to the applicant’s duty of disclosure to the Patent Office, assignments, licensing issues, foreign filing, maintaining and enforcing an issued patent, filing additional patent applications and related IP counseling.

Design patents can be obtained for much less (about $2,000 to $3,000 is typical), but design patents will only protect the non-functional, aesthetic features of a product.

Preparing a provisional patent application for filing typically costs between $5,000 and $15,000, and preparing a utility patent application typically costs between $10,000 and $20,000.  Again, each case is different and there are many factors that can drive costs up or down, so you should consult with a patent attorney or patent agent about your particular situation.

Can a patent be obtained for less than costs outlined above?

Yes, but such patents will most likely be ineffective in keeping competitors out of your market, and of little use in attracting investors, strategic partners, licensees or acquirers of your company. Properly describing an invention in a patent application, defining precise legal boundaries around it (patent claims), and properly prosecuting the application through the Patent Office are time consuming processes that take many years to master.  If your patent claims are drafted too broadly your patent will likely be easy to invalidate, and if drafted too narrowly it will be easy for your competitors to work around your patent.  Arguments made during the application process that are not well thought out can have drastic effects on the patent portfolio for the next 20 years. Spending less than a minimum of $15,000 to $30,000 to obtain an issued patent will most likely result in a patent that will not support your business objectives.  Your money would be better spent instead in areas other than patents.

If your company is in the pre-funding stage and you want to get started without a patent practitioner, a good resource is “Patent It Yourself: Your Step-by-Step Guide to Filing at the U.S. Patent Office” by David Pressman (http://www.amazon.com/Patent-It-Yourself-Step-Step/dp/1413317197).  Also, some large law firms with higher billing rates will offer reduced patent fees initially in exchange for equity in your company.  Shay Glenn does not.

How long does it take to obtain a U.S. patent?

The average pendency of a patent application in February 2015 was 35 months.   This is due to a large backlog of unexamined applications at the Patent Office.  The wait time for the Patent Office to pick up a new application for examination can vary greatly between different technology centers and art units. There are a number of different ways to speed up the pendency of a patent application. See MedTech Brief dated December 12, 2010 – Where Are Our Patents?! Ten Tips for Speeding Up Patent Prosecution. For example, a $4,000 Track 1 fee ($2,000 for a Small Entity) can be paid to the Patent Office to accelerate examination, such that an allowance may be obtained in about 6 to 9 months.

When should a patent application be filed?

To fully preserve all patent rights, including the right to file patent applications outside the U.S., a U.S. application should be filed prior to any public disclosure of the details of the invention, public use, sale or offer for sale of the invention. Patent law places a fairly low threshold on what is considered a public disclosure. Almost any disclosure without limitation or obligation of secrecy may constitute a public disclosure. However, in jurisdictions such as the U.S., in order to act as a bar to patentability the disclosure must be “enabling”–that is, it must give enough information to a “person having ordinary skill in the art” to actually duplicate the invention. To discuss the details of an invention with others before a patent application is filed, first enter into a Non-Disclosure Agreement with the receiving party.

Do we need to file in all countries before we disclose the invention publicly?

No, you can preserve patent rights in most all countries by filing one application in one country and then later appropriately claiming priority to that application.

Will obtaining a patent allow us to practice our invention?

No, obtaining a patent may allow you to prevent others from practicing (e.g. making, using or selling) your invention, but practicing your invention may still infringe one or more prior patents held by others. This relates to the important distinction between “patentability” and “freedom to operate” (FTO). When considering whether your invention is patentable, all information (not just the claims) in prior patents (even expired patents), publications, etc. must be compared with what has been fully disclosed in your patent application (rather than compared with your current product or service.) To assess freedom to operate, the claims (rather than the drawings and written description) of prior, valid, and non-expired patents must be compared with the features of a particular product or service (not compared with the information disclosed in your patent applications.)

This proprietary content has been prepared for educational and informational purposes only. The content does not provide and shall not be construed as providing legal advice on any specific matters. Transmission of this information is not intended to create, and receipt does not constitute, an attorney-client relationship between the author or his law firm and the recipient.

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