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[RJC]

While browsing this forum I have seen the figure $2,500 mentioned a few times when discussing the cost of getting a patent attorney to write and file a patent.  This is considerably cheaper than the price UK patent attorneys charge, plus a US patent would be rather more desirable due to the larger size of the market.  I had a few questions related to this which I’d be very grateful for some advice with:

1) The price for writing a patent will obviously vary with the complexity of the invention, but is this $2,500 figure a realistic representation of what reputable US patent attorneys charge?

2) Can I file a US patent if I’m a UK resident?

3) In the UK you can find registered patent attorneys on the website of The Chartered Institute of Patent Attorneys (http://www.cipa.org.uk/).  Is there a similar organisation in the US whose website I could use to find a reputable patent attorney?http://

4) Will the patent attorney be able to tell me if my invention is patentable and if so how much will he charge or this?

Thanks a lot for any answers you can provide to these questions. 

[Wiscagent]

1) The price for writing a patent ...
       $2500 is near the low end of the price range.  Solo practitioners and small firms tend to charge less than large firm; also patent agents tend to charge less than patent attorneys.  Also, US patent office application and prosecution fees are typically about $600 - $1000 plus about $500 if the patent is granted.

2) Can I file a US patent if I’m a UK resident?
       Yes, but there may be UK laws that require you to get permission from their patent office prior to filing in the US.  You'd have to check with a UK patent practitioner or the UK patent office.

3) ...find registered patent attorneys ...
          The register of US patent practitioners is available at https://oedci.uspto.gov/OEDCI/

4) Will the patent attorney be able to tell me if my invention is patentable ...
          A patent attorney or patent agent can give you an opinion on whether or not your invention is patentable; but it is the decision of the patent office (and potentially the courts) that is determinative.  Generally the patent practitioner would want a search conducted prior to providing such an opinion.  The cost of a patentability opinion (including a search) would probably be in excess of $1000.

[RJC]

Thanks a lot for the detailed answers and link to the patent practitioners website.  I'll look into the difference between a patent agent and patent attorney and whether I need to get permission from the UK patent office to file in the US and then decide how to proceed.

Your reply was also very useful in giving me an idea of cost.  I was going to file patents on three variations but with the combined expenses of the attorney, filing fees, search and assessment of patentability I'll probably have to drop one, though the third variation was significantly inferior to the other two so it's no big loss. 

One final question, can you skip assessment of patentability?  If you assume $2,500 for the patent agent/attorney and $800 filing fee per patent that's $6,600 for the two patents, but if you have the assessment of patentability performed that takes the total to $8,600.  I think I'd rather risk the $6,600 with the possibility of the patents being rejected than pay the extra $2,000.  Is that a reasonable option or is the search necessary to improve the odds of the patent being accepted?

Thanks again for your detailed response. 

[still_studying]

Applications get filed all the time without any searching being done, much less getting a formal opinion of patentability from a practitioner.  The search will just help you to know what's out there and what hurdles there are.  It might also save you the trouble and expense of filing at all, if you run headlong into a published application or issued patent identical to what you've come up with.

You can do at least some searching yourself.  Google's patent search engine is useful for basic poking around, but since they use a somewhat inaccurate OCR program for converting from scanned images of patents to text, you have the added worry of their having introduced typos (scannos?) into the patent text.  Your search might miss something because they OCRed, e.g., "seatbelt" as "seatbeit".

You have to realize that searching is done across all literature -- patents, journals, magazines, books, old family recipes -- not just the few patents in exactly the same field as your invention.  For example, inkjet printer heads are closely related to automotive fuel injection systems.  Also, there was a moderately famous example of a major food corporation failing to get a patent because an examiner found a hundred-year-old recipe that discussed their invention.

There's a slight disincentive to search because anything relevant that you find must be disclosed to the patent office (in the U.S., it's called an "IDS") and because of the added expense.

[RJC]

still_studying, thanks a lot for your reply.  That's given me a lot to think about.  I have tried searching Google patents and found a few devices with a similar purpose but entirely different implementations.

I'm leaning towards skipping the search and having a gamble by going straight for the patent, but I'll think about it a bit longer.

Thanks again for the detailed replies.

[bcapehart]

RJC -

There are additional items that will add to the cost of a patent application.  Your have discussed possible costs for preparing the application, but you should also consider the cost for prosecuting the application.  The $2,500 amount you mentioned would probably be directed toward the initial preparation and filing, but not the prosecution.  There will usually be a cost for receiving, reviewing and responding to correspondence (i.e. rejections) from the Patent Office.  It is not uncommon for there to be multiple rounds of correspondence, i.e. initial rejection, final rejection, RCE, etc., prior to the allowance of the application.

As to how much will prosecution cost?  It depends on various factors - hourly rate of attorney/agent, complexity of the invention, significance (closeness) of prior art cited against the application, number of rejections, if an RCE is filed, etc.  When I first started practicing (many moons ago), my mentor would use the amount amount of the preparation/filing as a ballpark estimate for the cost of prosecution.  In this situation, if you can have your application drafted and filed for $2,500 then you should plan on approximately the same amount for prosecution.  This, however, was before the RCE gravy train and the extended backlog of applications. 

Best of luck,
Brent

[Bill Richards]

One other comment about patentability searches.  In my opinion, applications that are written with a good search in hand are better drafted and have better claims.  In addition, depending upon the quality of the search, prosecution at the PTO can go much more smoothly.

[RJC]

bcapehart, thanks for the advice.  I didn't realise there would be further legal expenses after the filing.  From the sounds of it for two patents with searches and prosecution it would cost at least $12,000 and possibly much more.  It's almost enough to put you off bothering.  Still, thanks for letting me know as I can now take this into account.

Bill Richards, thanks also for the advice.  It sounds like a search would be useful in reducing prosecution costs and might be worth it after all.

How long would it normally be between the initial filing expense and the prosecution expenses?  I'm wondering if I should file now and start saving for the prosecution costs or wait until I have all the required funds.

One other question, given that the patents are for two variations of the same device will I likely see any cost reduction if I get the patents written together?

[Lightning50]

Depending on how similar your three variations are, they may actually be covered with one application and ultimately with one patent. That is something you should discuss with the practitioner during the initial consultation.

[daniel_basov@yahoo.com]

$2,500 is most likely a lowball number, and if offered by a patent attorney or agent, it probably means that you have to do a lot of work yourself.  Typically, a simple mechanical patent application costs $4-6K, and could possibly include related inventions.  However, you would have to split your patent at some time during prosecution, when the examiner issues a restriction requirement (requiring you to separate different invention into different applications).

It takes at least 1 1/2 - 2 years (or perhaps even longer, depending on the technology) before your application is substantively reviewed substantively by the examiner.  At that point, you will need to respond to the office action and incur additional legal costs.

-Daniel
www.SRBLaw.net