Patenting an invention may require a substantial investment by an inventor or small business.  Horror stories abound among inventors of exorbitant legal fees and poor results.  What are the different costs involved in patenting and what are reasonable expectations?  Any patent attorney you consider engaging should be able to provide answers.

Patent searches: Prior to committing time and money to preparing and filing a patent application for your invention, your patent attorney will want to conduct a patent search to determine whether your invention meets the standards of novelty and non-obviousness that are required for obtaining a patent. Some patent attorneys charge separately for patent searches, so make sure to ask.

The patent application: The heart of the patent application is the specification of the invention and the claims. The specification describes the invention in sufficient detail so as to enable a person of ordinary skill in the relevant art to make and use the invention. The claims lay out the legal metes and bounds of the inventor’s exclusive intellectual property. Both specification and claims are custom crafted legal documents, requiring the professional skill and care provided by your patent attorney. Legal fees for this work are the main expenses you incur in filing for a patent and can vary widely. It pays to shop around.

Draftsman fees for drawings: Costs incurred in preparing and filing the patent application include patent draftsman fees for preparing drawings that meet the required strict legal standards. Prior to engaging your attorney, ask for an estimate of draftsman fees.

USPTO filing fees: The USPTO charges fairly substantial fees for filing, searching and examining applications, subject to discount for individual inventors and small business entities. These fees are subject to change from time to time. Ask your attorney to tell you the current fees.

Patent prosecution: After your application is filed, it will end up before a patent examiner within 18 months or so after filing. The patent examiner will issue an “office action”, a written opinion or as to whether or not your invention is entitled to a patent. Often, claims in a patent application are initially rejected by the examiner. Your attorney will respond to office actions on your behalf, either amending the application or making reasoned arguments as to why the rejection of claims in the application is improper. The examiner may then issue a second office action, which may allow the application to issue or may again reject some or all of the claims. Rejections require further responses from your attorney. This back and forth between your attorney and the examiner is patent prosecution. Make sure to get an idea of your attorney’s hourly rates and usual prosecution costs.

Patent allowance and issue: If the examiner determines that your patent application is allowable, the patent office will notify your attorney. You will need to pay an issue fee in order for the patent office to issue the patent. Ask your attorney to tell you the current issue fee.

You’ve developed your invention and have decided it is time to patent it.  Now it’s time to find a good patent attorney to prepare and file your patent application and to represent you in prosecuting your application before the U.S. Patent and Trademark Office.  How do you find the attorney who is right for you?

Registration to Practice: To represent another before the USPTO, a person must have technical qualifications and pass a rigorous exam in order to become a registered patent practitioner.  No one who is not registered, even though they may be an attorney, may represent another person in patent matters before the USPTO.

Nationwide License: While most legal matters require an attorney to be licensed in the particular geographic jurisdiction in which they practice, a registration to practice before the USPTO is a nationwide license.  A registered patent attorney may represent a client anywhere in preparing, filing and prosecuting a U.S. patent application.

Free initial consultation: Many patent attorneys will provide a free initial consultation to find out the general nature of your invention and to provide you with a description of their practice.  First time patentees are well advised to seek out patent attorneys who provide such a free consultation, because this is a good way to find an attorney who is right for your needs and budget.

Attorney listings: Information on finding a patent practitioner is available from the USPTO at Finding a patent practitioner | USPTO.  In addition, online services such as Avvo.com, Lawyers.com and Nolo.com, provide search tools for finding patent attorneys.v

Fee quotes: Patent attorneys you consult for potential engagement should be able to provide you with a quote for the services you may need to move forward with patenting your invention.  In early discussions, it may not be possible to arrive at a firm quote, but the attorney should give you a pretty good idea of the outlay that will be required in each stage of the patenting process.

Personality: As with any professional you hire, you should feel comfortable in working with your patent attorney.  Patenting is a drawn out process that requires a good professional relationship.  If you are not comfortable with a potential attorney, seek out another one.

A patent is a grant by the federal government to the patent owner (the “patentee”) of the right to exclude others from making, using, selling or importing the invention.

When most people think of patents, they think of utility patents, which are patents issued for the functional aspects of products and processes (there are two other kinds of patents, design patents and plant patents, which aren’t discussed here).

Patents do not protect mere “ideas”. Rather, they protect structures and methods that apply technological concepts.

A patent is not a grant of a right to use the patented technology. Rather, it is a right to exclude or prevent others (“infringers”) from using the technology defined in the patent claims. The patentee might not be able itself to use the technology of the patent because it is merely an improvement on technology previously patented by another. In that event, a license from the previous patentee is needed.

A U.S. patent is enforceable against infringers from the date it is issued by the Patent Office until it expires (generally twenty years from the date a patent application is filed). A U.S. patent is presumed to be valid, and that presumption can be overcome in litigation only by clear and convincing evidence presented by a challenger of the patent.

“Prior art” under the Patent Code is any information in any form, relevant to the inventor’s claims of originality, that has been made available to the public before the effective filing date of the inventor’s patent application. If an invention has been described or otherwise disclosed in the prior art or would have been obvious in light of what has been disclosed in the prior art, the invention is not entitled to a patent.

A patent is an instrument of commerce. If patenting your invention will give you added commercial advantage that outweighs the cost of patenting, then patenting is indicated. If patenting will give no such advantage, we recommend you exploit your invention in other ways. A patent is an instrument of commerce. If patenting your invention will give you added commercial advantage that outweighs the cost of patenting, then patenting is indicated. If patenting will give no such advantage, we recommend you exploit your invention in other ways. 

Initially, you should determine whether there is a good chance that a patent may be obtained for the invention in the first place. You are entitled to a patent for your invention, unless your invention just doesn’t work (it is inoperative), or it is not new (it lacks novelty or is obvious). If the invention works, or if it seems that it will work when it is practiced, the invention is arguably operative. If there appears to be a substantial market for the invention and there is nothing like it out there, there is probably a strong enough argument for the invention’s being new to justify considering patenting seriously. A patent novelty opinion from a patent professional can be helpful in making this determination.

If it appears that a patent may be obtained for the invention, the inventor should then decide whether patenting the invention is justified. A number of factors can enter into this decision.

First, is the invention advantageous, that is, does the invention provide an advantage (e.g. better, faster, cheaper) over what was done before? The more advantageous a technology, the more patenting may be justified.

Second, is the invention differentiating, that is, would the goods or services provided by someone practicing the invention be different from similar goods or services provided by someone not practicing the invention? More differentiating technologies also argue in favor of patenting.

Third, is the invention customer-facing, that is, does the practice of the invention directly affect the customer? Improved manufacturing methods for existing articles, for example, are not customer-facing, while improvements in the articles themselves may be. More customer-facing technologies also argue in favor of patenting.

Fourth, would a patent directed to the technology be enforceable against infringers? This analysis focuses on whether the nature of the invention permits detection of infringement (improvements in manufacturing processes sometimes presenting difficulties here), and whether significant damages may be obtained from infringers (really going to the ultimate value of the technology). If a patent to the technology would be difficult to enforce, patenting may not be justified.

Fifth, will a patent to the invention have value in the future, when the patent finally issues? Patenting an invention takes time. In addition to the time to prepare and file the patent application, it can and often does take three years or more from the date a patent application is filed until a patent issues for the invention. Will the technology of the invention still be advantageous or even relevant when the patent issues? In some fast moving areas of technology, the answer to this question may be negative, and if so, patenting is not justified.

Ultimately, the decision to patent an invention is a business decision. Patenting is never inexpensive and should be pursued only when it makes business sense. If your technology is valuable, but patenting may not be justified, consider other ways to protect your technological advantage, such as the use of copyright and trade secret law, which may give you the IP edge you need without the expense of patenting.