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[Pole Position]

I've discussed my invention with a potential investor who wants to know what it will cost to patent my invention using a patent attorney.

For sake of discussion, as far as complexity is concerned, my invention can be compared to an electric can opener.

I have a working prototype.

1) I'm in Southern California and want to know how much a patent attorney will probably charge (for the complete process, not just an hourly rate). What might we be looking at as far as minimum charge and maximum charge?

2) Also, what is the best way to find a competent patent attorney? Just go through the yellow pages?

3) What questions should be asked while shopping for a Patent Attorney?

If the answers to my questions already exist somewhere within this forum, please forgive me and please point me towards those answers.

Thank you.

[JSonnabend]

Fees for patent application drafting and subsequent patent prosecution (i.e., patent office communications, etc.) vary greatly.  For example, fees at the big firms, like some I worked at for most of the 90's, start around $10,000 for application drafting.  On the other hand, some sole practitioners may charge as little as $3k-$4k for application preparation.

I suggest you ask around your network of friends and business associated to find qualified patent attorneys.  Also, there are several here on the forum, myself included, who would be happy to discuss your application with you.

In choosing a patent attorney, I suggest having an unrushed conversation with prospective sevice providers.  During that time, the patent attorney can explain the process to you (including patent search options and patent scope issues), answer your questions, and give you an idea of his experience.  If  the attorney is able to effectively communicate everything to you and you get a good comfort level from the conversation, then that should be enough, in my opinion.

- Jeff

[marucoke]

First, costs for a patent attorney may differ depending upon which area of the country and which city that attorney is located.

Second, my firm does not have a flat rate policy for patent applications.  However, here are some ballpark numbers as far as how much they might normally cost - low end and high end:

1) Simple mechanical - $6K
2) Complex computer patent - $12K

Additionally, you can also consider a patent agent as they generally are less expensive than a patent attorney.

Third, you can get a provisional patent application while commcerciability is being tested (pref. after filing one).  A patent attorney might be able to draft one for as little as $1K.


Hope this helps.   You can e-mail me if you want further information.   I know of some reputable Southern California law firms, having worked previously there.

[eric_stasik]

pole position,

here is some more detailed information on the costs of obtaining a U.S. patent:

http://www.patent08.com/the%20cost%20of%20patenting.htm (self link)

if you qualify as a small entity, the USPTO fees are reduced by 50%, but the attorney fees remain the same.

note that these figures are based on my personal experience having been responsible for the a portfolio of several thousand patents. my data is 2-3 years old now, but i imagine it is still relevant.

for an average electrical/computer you can expect to pay anywhere from 4000 - 8 000 USD in attorney fees for preparation, drafting, filing and prosecution. if the application is particularly complex, or runs into trouble at the patent office, these fees can easily double.

you get what you pay for.

i hope this information is useful and i would appreciate feedback from other readers about the accuracy of my cost estimate. what are your personal experiences with costs?

regards,

eric stasik

[JSonnabend]

Third, you can get a provisional patent application while commcerciability is being tested (pref. after filing one).  A patent attorney might be able to draft one for as little as $1K.

If a patent would normally cost $6k-$12k to draft and file, then a provisional drafted for $1k isn't worth the paper it's printed on, in all likelihood.  While a properly drafted provisional aplication is cheaper to draft than a corresponding formal application, the difference in price should not be more thant %40-%50, in my opinion.  That simply reflects the difference in time required to draft substantively similar applications, one with claims and one without.

[JimIvey]

Re provisional applications, Jeff's advice is right on the money:

http://www.spectrum.ieee.org/WEBONLY/resource/jun03/inve.html

Regards.

[guest]

While the above advice may help, it is not entirely accurate.  This is the case because MANY experience patent practitioners do draft claims when they file provisional applications.  Even a well drafted provisional could be worthless is the subsequent non-provisional is drafted with claims that are not disclosed in the original spec.  Drafting claims for a provisional usually helps to prevent this problem.

[JimIvey]

Friends don't let friends file provisional patent applications.

My views on the topic are well-documented in the archives.  I don't believe there's a good reason to file a provisional application, except one: intentional deferral of expiration of the patent.

Regards.

[Amy Atkinson]

Does anyone know what it would cost to have a consultation with a patent attorney?

[JSonnabend]

That likely varies from attorney to attorney.  As for me personally, I provide initial consultations for free.

- Jeff

[JSonnabend]

While the above advice may help, it is not entirely accurate.  This is the case because MANY experience patent practitioners do draft claims when they file provisional applications.

Then why file as a provisional?  What is the applicant saving?

[clarklawyer]

Filing a provisional may be a way of managing finances.  Maybe it
won't save huge amounts of drafting fees, but for some people
putting off the costs of prosecution for awhile might be
something some clients want or need to do.

[JimIvey]

The "cost-saving" aspect of provisionals always baffles me.  Using the above estimate for "simple mechanical" inventions, the practitioner fees are about $6,000.  The minimum filing fees are $500 (filing, search, and examination -- small entity).

Thus, filing non-provisional is roughly $6,500.

Filing provisional is roughly $6,100.  But that's not the end of it.  Within a year, you still have to pay the $500, plus about another hour of practitioner time (minimum -- more if they have to draft new/more claims).  The bill for the follow-up non-provisional can easily exceed $1,000.

So, option 1: pay $6,500 today = $6,500 total.

Option 2: pay $6,100 today + $1,000 in a year = $7,100 total.

And, in option 2, you delay your rights by a year, meaning a year further away from royalties.

Now, I realize that the "prosecution costs" that you'd be deferring could refer to responding to an Office Action (rejection).  They start at around $1,500 from what I understand and odds are that you won't see that expense for at least a year.  In Internet-related applications, I've seen as long as 6 years to a first Office Action -- and then it was only a restriction requirement!

Using the costs outlined above, you'd end up paying $1,000 up to about a year after filing to delay a $1,500 cost for only about a year.

I just don't see the economy there.  It seems really expensive to save less than 10% of the initial costs.  Maybe I'm missing something.....

Regards.

[pro-provisional]

The cost savings of filing a provisional can be significant.  Let's say a company wants protection for its product as they begin to market it.  The company may want to determine how well the product does in the market before it invests a lot of money in it.  Filing a provisional can help.  First, you can greatly save by filing hand-drawn figures as opposed to having them professionally drafted.  If an application has 10 figures at $100/figure, that's at least $1,000 right there.  Also, you can file fewer/or no claims than you normally would.  This saves the practitioner a lot of time in drafting the application.  Accordingly, the summary section can be shorter/omitted.  As long as you disclose what the invention is in the detailed description, you will be protecting the client.

Filing provisional applications is becoming a widely-used practice.

[JimIvey]

You don't need formal drawings for a non-provisional applications, so the savings is illusory.

Second, a provisional application is worth absolutely zero unless it supports claims that will eventually be allowed.  How do you know whether you've written such an application?  Hint: the way I do it is by drafting claims I think will ultimately be allowed -- same as I do for a non-provisional application.  

Third, omitting the summary section is only acceptable (in my opinion) if the provisional application supports the summary section you hope to add into the non-provisional application.  How do you know the provisional application would support that future summary?  The way I know is that I don't omit the summary.

Fourth, how much work does it involve to show that newly added claims/summary are, in fact, supported by the provisional application?  Claim 1 recites ".... limitation 1 ..." which is taught by the provisonal application as originally filed at page n, lines k-l: "yadda yadda yadda ... limitation a, in one embodiment, yadda yadda yadda...."  Now, repeat for all limitations of all claims and for every sentence of the summary....

Lastly, provisional applications have been a fairly common practice since they first became available nearly 10 years ago.  That entire time, I've been telling people not to use them for any purpose other than the purpose for which they were devised.  People ignore me and suffer the consequences:

http://www.spectrum.ieee.org/WEBONLY/resource/jun03/inve.html

The bottom line is this:  there are no reduced/relaxed standards for sufficiency of disclosure of provisional applications -- they must meet precisely the same legal standards as non-provisional application -- absolutely no less.

Regards.