The Patent Application Process and Associated Costs
The cost to obtain a patent is usually one of the first questions an inventor asks when thinking about getting a patent. Trying to obtain a patent can take years, and there is no guarantee that it will result in a patent. Along the way, there are associated costs, which usually involves the fees the government charges and legal services fees. For a list of all government fees, please check the fee schedule in the Patent Rules here.
In the patent application process, there are certain ways to reduce the costs to you. However, handling patent application by yourself may not be worth the risk to you. If you have any questions, please contact us for a free and confidential consultation.
The Typical Patent Application Process and Associated Costs
The typical patent application process includes the following steps and there are costs associated with these steps:
1. Patentability opinion (optional)
Ideally, you will have a patentability opinion before a patent application is prepared. As a result, you can see the chance that a patent may be granted for your invention.
Initially, we will discuss with you so that we can understand your invention. Based on our understanding of your invention as approved by you, we will search for patents and patent applications that are related your invention as we understand it. Of course, you can do the search by yourself, for example, on google patents.
Your invention is then analyzed in view of the patents and patent applications found. We will then provide you with a patentability opinion. Based on your needs, we can provide you a list of patents and patent applications for you to review by yourself or we can provide you with a detailed analysis. The patentability opinion service may cost a few hundred dollars to a few thousand dollars. Please note that, it is impossible for the patentability opinion to be bulletproof and you should not base your decision solely on the patentability opinion. For example, if an invention is particularly important to your business, you may want to fight for it in any case.
2. Preparing a patent application
With or without a patentability opinion, you must have a patent application prepared for filing if you decide to proceed further. Generally speaking, the application includes an abstract, a description, claims, and drawings. The application must enable a person skilled in the art to practice the invention disclosed in the patent application. The claims must clearly define the scope of protection sought and be supported by the description.
Drafting patent application is usually done by a patent agent because the drafter must take into account the various requirements for a patent to be granted and the needs of the inventor. One common mistake of a patent application drafted by an inventor themselves is that the patent application simply describes the invention exactly as the inventor practices, and the claims only protect the exact invention as practiced, thus making it easy for other parties to avoid infringing the patent.
Usually, the more complicated the invention is, the more it costs to prepare the patent application. For example, it may require more detailed description so that persons skilled in the art will be able to practice the invention. As such, the cost of preparing a patent application can range from several thousand dollars to more than then thousand dollars.
Depending on the technology field and complexity of the invention, we cap our patent preparation services at different tiers. From our experience, clear and detailed disclosure of the invention from the inventor can usually help reducing the cost.
Some patent practitioners would recommend reducing cost by drafting a brief patent application for filing as a provisional application for patent in the United States. A provisional application could be advantageous when you need to quickly secure a filing date, for example, because you are going to show your invention to the public on a short notice. A provisional application could also be advantageous when your invention is not fully developed and you want to secure an early first filing date. However, if your invention is fully developed, and you are not in a hurry to get a filing date, then you should consider having the patent application fully drafted with appropriate claims because there is a risk that the Examiner may deny the benefit of the filing date of the provisional application for patent when your subsequent nonprovisional application for patent is examined for patentability if the provisional application for patent does not include all the necessary information. In such a case, you may consider filing a patent application that is suitable for nonprovisional application as a provisional application.
3. Filing the patent application
After the patent application is drafted and approved by you, we will file the patent application to the patent office of your choice. The patent offices invariably charge a filing fee for the patent application. There are also services fee for us to prepare the necessary documents for filing. Although usually not necessary at this stage, if the patent application is to be filed in the name of an applicant who is not the inventor, you should consider having the inventor sign an assignment to the applicant to establish the right of the applicant.
We will discuss with you about your business needs before preparing the patent application so that you can make an informed decision regarding where to file the patent application initially. For example, you may want file a patent application in Canada if your business is focused in Canada and you have no plan to expand to foreign jurisdictions. Or you may want to file a provisional application for patent in the United States because your invention is not yet fully developed or you want to reduce the upfront cost. If your invention is fully developed and you want to obtain patent rights in multiple jurisdictions, you may want to file a PCT application initially or based on a patent application in the United States or in Canada.. We will take this decision into account when preparing the patent application.
4. Examination of the patent application
Before a patent can be issued from a patent application, the patent application must be examined by the patent office. There usually is an examination fee associated with the examination of the patent application that is charged by the patent office. Some patent office requires a request for examination to be filed before the patent office starts examining the patent application. There usually are professional fees associated with requesting examination.
When the patent application is being examined, the patent office will usually send communications, which are often called Office Action, Examiner's Report, Search Report, or Examination Report, indicating why the patent application should not be issued to a patent. For example, the patent office may think that your invention is not new, or is obvious based on prior art. We will then help you to respond to the communications by making arguments and/or amendments to the application. This service usually costs hundreds to thousands of dollars depending on the number of communications and the number and complexity of the objections.
5. The Patent Application Is Issued to Patent or Rejected
After several rounds of communications and responses with the patent office, the patent application may be allowed as a patent or the patent office may reject the patent application.
If the patent application is allowed, a final fee or issue fee usually needs to be paid, which is usually several hundred dollars. A letters patent will then be issued by the patent office and forwarded to you.
If your patent application is rejected, you usually will have the opportunity to appeal the decision. However, this could be an expensive and time-consuming practice. We will discuss with you about the situation to help you make an informed decision.
6. Maintaining the patent application and/or the patent
On top of the other fees, there are also maintenance fees that are usually required before and after the patent is issued so that the application will not be abandoned and the patent will not lapse. This fee usually increases for later years. If you believe the patent or patent application is of no commercial value to you anymore, you can simply stop paying the maintenance fee and let the patent or patent application go.
7. Additional costs associated with filing the patent application in foreign jurisdictions
If the patent application is filed in a foreign jurisdiction, it may also involve the costs of translating the patent application to the local official language, and the professional services fees of the patent professionals in that particular country.
How to reduce your costs in the patent application process:
As you can see, the patent application process could cost thousands of dollars or more. If you are an aspiring inventor or a small business, the anticipated costs could be daunting. Fortunately, there are ways to reduce your costs.
The most expensive steps are usually the preparation of the patent application and the examination of the patent application. For the preparation of the patent application, you could help reduce the cost by clearly explain your invention in detail, thus making it easy for us to understand your invention and prepare the patent application based on the understanding. You could also inform us how the invention relates to your commercial objectives. This could help us responding to the objections from the patent office.
You could also seek funding from other sources. However, this usually involves disclosing your invention to the potential investors, which could damage your chance of getting a patent. Thus, you usually would want to have a non-disclosure agreement (NDA) or the like with the potential inventors or file the patent application before disclosing your invention to the potential investors. To reduce your cost, you could consider filing a provisional application for patent at this stage.
Another characteristics of the costs associated with the patent application process is that the costs are spread over years such that it becomes much less of a financial burden and more of a running cost of your business. And the fact that the patent application process takes years also provides you with ample opportunity to seek external funding.
How long does it take to obtain a patent?
As you can guess from the typical patent application process above, it could take years before a patent application can be issued as a patent. In some countries, for example, Canada, a patent application is not examined unless examination is requested, which provides you an opportunity to control the pace of the patent application process. Depending on your budget at the moment or other considerations, for example, if you want to keep the scope of protection intentionally vague, you may want to postpone the start of the examination stage of the patent application process. Once examination starts, it usually takes 2-3 years before a patent is issued or rejected. However, depending on the invention, the process can take shorter or longer.