Eight Ways to File a Patent Application for your Invention
While many patent agents & filing services may quote a single, fixed price for preparing a patent application, it may be hard to determine what kind of service you are really getting. Here are eight ways to file a Patent Application -- each way tailored to your specific need and budget. (If you are interested in seeking protection internationally, in countries outside the United States, you have additional options to consider and timing is extremely important. Make sure you find out what you need to do if you want protection in other countries.)
NON PROVISIONAL APPLICATION (NPA): A U.S. non-provisional application is a patent application that is formally written and will be scheduled for examination by a Patent Examiner at the United States Patent and Trademark Office. A non-provisional application requires formal drawings that meet certain style and format requirements. The written portion of the application, called the Specification, also must meet various formal requirements and must include certain sections. Since a non-provisional application must be prepared to meet many formal requirements, it typically takes several weeks to adequately prepare. Given the time and formality, preparing a U.S. non-provisional application for individual and small business inventors typically costs around $7500 plus government filing fees and professional drawing costs. If the invention requires sophisticated electronics and/or software the cost may be more. If an inventor is running against a deadline, such as the one-year deadline after filing a provisional, it is sometimes possible to avoid total abandonment. This may be done by preparing a rush application of limited scope at a reduced fee.
PROVISIONAL APPLICATION (PA) with draft claims: A U.S. provisional application is a patent application that is semi-formally written and filed at the United States Patent and Trademark Office. Unlike a non-provisional application, it will never be examined by a Patent Examiner at the United States Patent and Trademark Office. A provisional application, however, secures a filing date for the material contained in the provisional application. This is important if an inventor or small business is about to disclose the invention to others and/or may want to keep the option to file for patent protection in other countries. Since a provisional application will never result in a patent by itself, an inventor or small business must file a non-provisional application (or certain international application) within one year and claim the benefit of the provisional application and the provisional application's filing date. As you may imagine, it is best to have the provisional application written as formally as possible -- as similar as practical to a non-provisional application -- to adequately disclose the invention and various aspects and examples of the invention. This means that the cost in time and resources to produce a well-written and well thought-out provisional is nearly the same as that of a non-provisional. While a provisional will not have any examination of claims, it is possible to submit a provisional with a draft set of claims. This allows preparation of the non-provisional claims and corresponding written description during the year between the filing of the provisional and the filing of the non-provisional and/or filing of international applications. Given the cost in time and resources to write such a provisional application, the cost for provisional preparation is typically two-thirds that of a non-provisional application. In such case, the cost of the corresponding non-provisional (to be filed within one year) may be reduced, as much of the work in preparing the provisional may be applied in the writing and preparation of the non-provisional. Preparing such a U.S. provisional application for individual and small business inventors typically costs around $5000 plus government filing fees and professional drawing costs. This type of provisional application includes a number of draft claims in the disclosure of examples of the invention. If the invention requires sophisticated electronics and/or software the cost may be more.
PROVISIONAL APPLICATION (PA) with one draft claim: There are situations where it is important to get a provisional application filed quickly to secure a filing date. There may not be time or budget to spend time developing a fully detailed provisional application with draft claims, as mentioned above. In such situations, it is possible to at least identify one or two representative claims that describe at least one important aspect or example of the invention. With one or two aspects of the invention identified, a description may then be written to describe at least one aspect of the invention along with one or more examples of the invention. Depending on time and budget, either rough drawings or professional drawings may be used. Preparing such a U.S. provisional application for individual and small business inventors typically costs around $2500 plus government filing fees and professional drawing costs (if the inventor wants to use professional drawings). This type of provisional application includes at least one draft claim in the disclosure of examples of the invention. If the invention requires sophisticated electronics and/or software the cost may be more.
PROVISIONAL APPLICATION (PA) using inventor-provided write-up: There are situations where it is important to get a provisional application filed quickly to secure a filing date and budget is important. In such situations, it may be possible to use a well-written description and drawings from the inventor as the primary basis for the provisional application. To do this, the inventor must have a fairly detailed description of their invention, including description of their drawing(s), in an electronic format, such as WORD, WordPerfect, WordPad, etc. The inventor-provided written description will be reviewed and used to prepare a provisional application that is in a format acceptable for filing with the United States Patent and Trademark Office. Typically, the written material is corrected for spelling, grammar, and to embellish aspects and/or examples of the invention. Preparing such a U.S. provisional application for individual and small business inventors typically costs around $1500 plus government filing fees. If the invention requires sophisticated electronics and/or software the cost may be more. While this type of provisional application may cover only limited aspects of the inventor's ideas, depending on what is included in the writen disclosure provided by the inventor, it is possible for the inventor to consult with the patent agent/attorney at an additional hourly rate to explore other aspects of the invention(s) further.
PROVISIONAL APPLICATION (PA) filing service: There are situations where the inventor or small business has the written disclosure and drawings already written and wants to make sure a provisional application is filed quickly and properly to secure a filing date. In such situations, a filing-only service is provided where the details of filing are handled and a filing date is secured. To do this, the inventor must have a prepared, detailed description of their invention, including drawing(s) & description of their drawing(s), in an electronic format, such as WORD, WordPerfect, WordPad, etc. The inventor-provided written description will be reviewed to make sure that it is in a format acceptable for filing with the United States Patent and Trademark Office. The substance of the written description and drawings are not reviewed, except for meeting form requirements. Filing such a U.S. provisional application on behalf of an individual or small business inventor is $750 plus government filing fees.
PROVISIONAL APPLICATION (PA) Do-It-Yourself: There are situations where the inventor or small business has studied how to file applications and/or wants to file themself without having an attorney or agent prosecuting the application. One example of such a situation is where an engineer has some past experience in patents, has a good knowledge of their field, and feels reasonably comfortable in writing their own description of their invention. In such situations, it is possible to review the self-written application draft and provide comments and suggestions for further improvement. To do this, the inventor provides the prepared, detailed description of their invention, including drawing(s). Their draft description is reviewed and a verbal consulation is scheduled (by phone or office appointment). The inventor receives verbal comments and suggestions regarding their draft. The inventor may then consider those comments and/or suggestions in preparing a second draft. The inventor has an opportunity, within one month, of submitting the second draft for further review. The verbal consultation is repeated (by phone or office appointment) for the inventor to receive any further comments and/or suggestions. This Provisional Application review option is a flat fee of $1000. With this option, application filing is not provided. (See "filing service" to have an application filed for you.) The inventor or small business may then proceed to file on their own or use the Provisional Application filing service, as described above.
PROVISIONAL APPLICATION (PA) Consultation: There are situations where the inventor or small business may want to understand the patent process and options available and, in particular, what options are available for their invention(s). For example, for some inventions it may be better to file a provisional first -- for other inventions, it may be better to move straight to a non-provisional or to first do a patent search. The circumstances surrounding every invention is different and all these circumstances change what options are available and what options are more desirable. For instance, if overseas protection is critical for a particular invention, and the inventor is about to announce the invention at a trade-show, then those two facts alone most likely change which way to go in seeking patent protection. Understanding the invention and how well the inventor has developed the concept is also very important. In such situations, an in-depth consultation with the inventor may be used to get a clearer picture of what options are avaiable and how to make good use of the budget. To do this, a verbal consulation is scheduled (by phone or office appointment) with the inventor. The consultation fee is a flat $500 and the consultation takes the amount of time necessary to review the invention and the circumstances surrounding the inventor or small business with regard to the invention(s). Typically, the consultation takes less than two hours, but there is no extra charge if the consultation takes longer. The consultation fee may be applied towards a provisional, non-provisional, or patent search if commissioned within one month of the consultation.
PROVISIONAL Application (PA) Workshop: As part of a program to help the individual inventor and small businesses, a limited amount of time is set aside to provide provisional application filing workshops. In this workshop, the inventor works side-by-side with the patent agent/attorney to develop their provisional application for filing. The workshop is designed for an inventor to come in the morning with their invention and have a provisional application filed by afternoon. To accomplish this, the inventor brings a detailed written description of their invention along with drawings (hand drawings ok -- as long as they can be scanned). We recommend that the inventor also brings their laptop and a memory stick. From there, a discussion and analysis of their invention begins. The inventor and patent agent/attorney work together to use the beginning materials to write a provisional patent application. The drawings may or may not be redrawn, additional examples of the invention captured, and/or new aspects or ways of describing the invention written. The workshop culminates in converting the application into proper form for filing, actual filing, and generation of electronic filing acknowledgement. The workshop fee is $1500 plus the government filing fee of $100. On many Saturdays, by appointment, up to two slots are available at a reduced price of $750 plus the $100 government filing fee. (For more information on booking a Saturday workshop, go to Appointments.)
An important Note: A common mistake is failing to secure intellectual property protection prior to discovering an infringer or being accused of infringing. The costs of asserting or defending an infringement are significant. By then, the ability to secure intellectual property protection may be gone or greatly reduced, depending on the circumstances. Most often, securing intellectual property rights early is relatively lower in cost and typically creates an environment favorable for preventing expensive infringement situations.