How can I get patent in US for my invention, Product, software or concept ?

 


 

This is most common question raised in mind of anyone who becomes interested in protection of their innovative ideas / invention. So how to get patent in US is the question that comes from every sector, age, industry and domain you can imagine.

 You may be:

  • An entrepreneur : with an idea, concept or innovative product to be patented

  • A research student: with the research project that you are working on to be patented

  • Professional (employee): with a new innovative software, mechanical device or chemical compositions to be patented

  • Student: with an intent to learn more about getting patent in us for your innovative ideas and products

  • or A business owner: with new product or a new way of solving a problem in business to be patented

Probably you are influenced by reading about patent and news or articles like millions of dollars are raised by an innovative startup which has a granted patent or patent pending for their unique invention.

And that made you think whether that idea, concept of product you have is really worth winning a patent? 

You may get a lot of information on many places online, blogs, websites, books etc. but its not always very clear to the reader as every person in coming from different background, motivations and mindsets. Moreover, just like any other law, patent law also involved certain degree of complexity, influenced by case laws etc... So best advice would be,

 Get patent attorney involved for writing and filing your patent application

Writing a patent application in US (patent drafting) is a specialised job and it requires years of practice and experience especially when we are talking about writing claims for the patent application.

Patent is a Techno-Legal document, the commonly observed mistake by inventors writing patent application on their own is writing it consideration to technical side only (like a PHD thesis).

what is patent and how can we protect your invention by means of patent?

As per definition “The patent is an exclusive right granted for an invention” In other words, if you have an invention like

  • new and technical solution to a problem

  •  a novel product or process

  • a new way of achieving better results with some technical advance

Having a patent on you name for an invention gives you the right to decide if the invention can be used by others and on what terms… In return for this right, the patent owner makes the technical information about invention publically available in the form of patent. Having a granted patent in US for your invention gives you right to exclude others from

  • making,

  • using,

  • offering for sale,

  • selling” the invention in the United States

  • “importing” the invention into the United States

Point to be remembered here is: it is right to exclude others!!! That is you can stop others... hence it is your (patent owners) responsibility to enforce the patent, and stop others from copying your patented invention without your consent or permission (something called patent infringement).

Cost, time line and Procedure to get patent in US 

How much is the cost of getting patent in US ? There is no precise and accurate answer to this question as cost for obtaining patent is dependent on multiple factors... What best we can have is range for costs involved in...

There are two elements for cost of getting patent in US:

  • The costs for Patent Office (USPTO) fees for Forms and requests.

  • Professional Charges for patent professional, patent agent / attorney

lets see these fees and charges involved in getting patent in US in step by step, detailed and easy to understand manner as below:

Before we proceed, One thing (question) most certainly hits inventors mind at least once in the process of getting patent for his invention that is

“ If I am the creator of the invention, I know it inside out and I can describe it in detailed manner then why Patent Attorney charge so much fees ? just to write my patent application in right format ?”
 

To get quick and self evident answer to your question, check our section on Why Patent Attorney charges so much fees just to write my patent application in right format?

patent attorney charges in US

As a matter of fact Patent attorney Professional charges is the most expensive component which drastically varies based on complexity of the invention to be patented, field of invention and the experience of the patent attorney.

Government fees too, are different for an individual inventor, micro entities, small entities and large entities. and fees for patent application also defers based on number of claims and charges for professional drawings etc...

So, a lot of factors need to be considered when talking about costs involved in getting patent in US.

Yet to give you an idea, the cost to get patent in US is approximately $5000 to $12,000. This is assuming that you have hired an experienced patent attorney in US who is right fit for your patent requirement for patent research, writing and filing patent application for your  invention. Selecting Right patent attorney for your invention at right cost can be more complex process than you would have imagined.

you can check quick guideline about the process of selecting right patent attorney in US for your invention.

Stage wise procedure and Cost for getting patent in US

The cost requires in stages as your invention proceeds from Novelty Search (about $ 2000)Patent drafting and filing in US (about $8,000) and after 1 to 2 years for responding to office actions if any objections are taken by controller in examination report on application about your invention, such response to office actions typically requires (about $1000).

Note: these costs are mentioned are exemplary and may vary with respect to patent attorneys and companies.

The link here is the fees structure mentioned at USPTO website.

Here is how you will need charges as per stages in patent filing. We are assuming you have hired a patent attorney helping you with patent filing, which is recommended and makes this all patenting efforts worthwhile with his experience and expertise in techno-legal writing.

Stage 1: invention disclosure

This is initial phase when you (inventor) disclose your invention to the patent attorney you selected to work with by signing a Non disclosure agreement. This agreement is to ensure the confidentiality of your invention and there are no charges for signing NDA.

When writing Invention disclosure for your invention you should submit each know fact about your invention, description diagrams and experimental results (if any). Hold nothing back. The disclosure of the invention must be

  • described in substantial details

  • includes picture, flowcharts, diagrams where ever applicable

  • Optionally includes experimental data proving novelty and non obviousness

  • Charts and tables about research and development

This helps patent attorney in patent research as well as drafting process.

Stage 2: Novelty search / Patentability search

Simple invention Complex invention Very complex invention
$1000 $1500 $2500

In this phase, patent professional performed an extensive search for prior art in all possible databases for patent, articles, thesis etc... And builds a patentability search report based on closest prior art found for your invention.

Although an optional step, Doing novelty search for your invention can really save you thousands of dollars for involving in patent process for an invention which is not novel and already known to public.

Cost: the charges for conducting novelty search are in the range of $500 to $2000
Time required: it takes about 2 to 5 working days for a researcher to complete novelty search

Patent attorney generally prefers to have independent opinion about the novelty search so most of them outsource it to a patent researcher.

Stage 3: Opinion about patentability

Upon receiving the novelty search report for your invention, next step is a critical review by patent attorney to build an opinion about patentability of your invention. Here the cost defers based on complexity of invention and number of closely associated prior arts found in the research. This opinion tells you (inventor) whether the invention is patentable or not. In other words, it answers the question regarding whether to proceed with the patent filing process or not!!!

Cost: the cost for providing patentability opinion ranges from $200 to $1000
Time required: The time required for providing patentability opinion ranges from 3-4 hours to couple of days based on complexity of invention and prior arts cited in the novelty search report

Stage 4: Decide whether to file patent application or not

On reviewing the patentability search report and discovered closest prior arts for your invention you can take a decision whether to go ahead with patent application filing. Your patentability opinion should be positive, that is, your invention needs to have “inventive step” as compared with existing prior art to be able to qualify for a patent.

When you decide to go ahead with patent filing next step is writing patent application also called as patent drafting.

Stage 5: Patent writing or patent drafting

4 (a) drafting Provisional Patent application in US:

Simple invention Complex invention Very complex invention
$2000 $3000 $5000

4 (b) drafting Non-Provisional (complete) Patent application in US:

Simple invention Complex invention Very complex invention
$5000 $8000 $10000

Drafting a patent application is a specialized job and requires both technical (field of invention) and legal (US patent law) understanding.

As you may have heard, patent is a techno-legal document. Many inventors trying to write patent application on their own writes it from completely technical perspective. Writing patent application as a technical document without considering legal aspect may be a mistake which can make your application not worth a lot. And all the efforts you took for research and development can go waste.

Hence, right patent professional (patent agent) with appropriate experience can remarkably add value to patent application.

If you are still confused and thinking whether you would be saving few thousands of dollars by writing and filing your patent application on your own (without help of patent attorney) you need to read section on do I really need to hire patent attorney for writing and filing patent application ?

This is the step where the real skills of a patent attorney come in to play as patent drafting is:

  • the most time consuming

  • most complex

  • and skillful task that requires years of experience in technology as well as patent law

This is indeed the most important step in entire life cycle of Patent for protection of your invention.

Cost: The cost for drafting a patent application in US varies in a great deal as it is dependent on multiple factors like field of invention and complexity and the cost can range from $2000 to $15000.

Time required: it takes about 1 to 2 weeks time for patent attorney to draft an application for an invention. It certainly can take more time based on complexity, length of description and availability of patent attorney.

Stage 6:  Filing Patent application  

Patent filing involves patent office fees as explained in table below

Government filing fees for Provisional application in US

Large entity Small entity Micro entity
$260 $130 $65

Filling Fees for Non provisional Patent application

Large entity Small entity Micro entity
$280 $140 $70

When you done with the review of patent drafted and satisfied with the scope and technical details in the patent application, you can file the patent application at USPTO, with appropriate forms with appropriate fees.

Publication of patent application occurs after the expiration of an 18-month period following the earliest effective filing date or priority date claimed by an application.

Stage 7: Patent Examination  

Patent examination fees is as following

Large entity Small entity Micro entity
$720 $360 $180

After the application is filed, the U. S. Patent Office takes  the application up for examination (usually in about 12-36 months). In this stage patent examiners at USPTO conduct their own search related to your invention (patent application) and issue and office action.

Stage 8: Office action 

Office action contains the objections raised about your patent application by patent examiner, which can range from variety of objections. You (inventor) has a chance to respond to objection and put your side in-front of examiner, this is something called "response to office actions" in most of the cases the response is drafted with the help of your patent attorney.

This is a chance for an inventor to communicate his novelty or inventive step over prior arts found in the examination report. The inventor and patent patent attorney create and send a response to the office action that tries to prove that his invention is indeed patentable and satisfies all patentability criteria’s.

or optionally modifies the claims accepting objections raised, that is the applicant may amend the patent application as  specifically required by the examiner and proceed with the grant of patent.

The patent attorney charges anything from $500 to $1500 for response to office action.

Stage 9: Grant of Patent

The patent is granted to you (inventor) if it is found to be meeting all patentability requirements !!! or it may be rejected if it happen to be not meeting patentability criterias.

If a patent application is found to be in order of grant a Notice of Allowance and Fee(s) Due will be sent to the applicant, or to applicant’s patent attorney. a fee for issuing the patent and if applicable, for publishing the patent application publication.

Stage 10: Renewal of patent fees 

Once the patent is granted, it will be valid for up to 20 years from the date of filing the application. Inventor required to pay a maintenance fees periodically (as mentioned below) to maintain patent in force.

  • 3.5 years after patent date: $800

  • 7.5 years after patent date: $1,800

  • 11.5 years after patent date: $3,700

"patent date" means the date on which the Patent is granted, and the maintenance fees are for "Small Entity" that is for individuals, nonprofit entities and small companies.

Congratulations !!! Now you know steps involved in getting patent in US for your invention along with stages and costs.

 

You may also like to consider reading a guideline on deciding is it really worth to go ahead for patent for your invention ?

to know How you can save costs initially by going for provisional patent application in US, you can read section on Is filing provisional patent application is a way to save costs with patents initially ? by utilizing the time for researching commercial worth of invention and deciding on whether to go ahead with patenting procedure.

Prasad Karhad

Prasad Karhad

Registered Patent Agent India at Link to profile
Registered Patent Agent India (IN/PA 2352), Working from 10+ years in Patents field. Bachelors degree in electronics and telecommunication engineering.

Associated with leading Intellectual Property firm in India called Khurana & Khurana, Advocates and IP Attorneys (K&K). With team of 65+ Intellectual property (IP) professionals including patent agents, trademark agents and attorneys and offices at Delhi, Mumbai, Pune and Bangalore, Successfully helping inventors and businesses in securing their Intellectual Property Rights (IPR) including Patents, Trademarks, Designs & Copyrights along with Contract & Commercial Matters.

Founder of Patent in India Platform with more than 11000 visitors every month, Patent in India platform continues to be leading patent consulting platform in India. http://patentinindia.com/
Prasad Karhad

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