JACKSON ESQUIRE
Patents Trademarks Copyrights
DESIGN PATENT ESTIMATED COSTS
U.S.
Design Patent Application costs
U.S. Patent & Trademark Office current (USPTO) fees
Only U.S. Design patent application filing fee, search, and examination
Small entity (less than 500 employees) $220
Large entity (500 or more employees) $440
Design patent issue fee (due at issue which is 12 to 36 months after filing)
Small entity $410
Large entity $820
There are no USPTO maintenance fees on a Design Patent
Notes to USPTO office fees:
There are many other types of USPTO fees such as petitions, time extensions,
application size, and foreign application filings, etc. that are additional; the
above fees represent the most basic design patent filing fees.
Formal U.S. Design Patent Drawings
Must be in compliance with 37 C.F.R. 1.152, comprising: use drawings,
perspectives, top, front, side, bottom, and a Gazette view.
Note that as opposed to Utility Patents, no cross-sectional or assembly
views are used that would delineate function, the only views that are used are
external configurations, where shading is commonly used to enhance surfaces,
contours, and shapes. Also there are no exploded views, formulas, tables,
flowcharts, or element numbers on design patent drawings.
Patent drawings $700.00
The drawing cost can be more or less than $700 depending upon the complexity of
the invention and the number of views or embodiments required.
Patent Attorney work product follows:
Drafting of the design patent which comprises the following:
Preamble-Stating name of applicant, title of the design, and a brief description
of the nature and intended use of the article in which the design is used.
Descriptions of the drawing figures.
Feature description-of the ornamental aspects of the design features that are
either non-functional or semi-functional, however features cannot be purely
functional.
A single claim-which refers to the drawings.
Creation of informal drawings (for the patent application filing and prosecution
only) that describe the claimed features of the invention along with “use”
drawings, and perspectives of the inventions detail as required, wherein formal
design patent drawings are later made.
A review meeting is held with the inventor to review the 1st draft of
the entire patent as a reality check on what the patent attorney envisions as
the invention and what the inventor sees as the invention are in agreement.
Based upon the meeting with the inventor, revisions may be made to the drawings
and to the 1st draft of the patent.
Final review of patent application with the inventor and execution of the
following documents required by the USPTO:
Design patent application transmittal letter form- basically a table of contents
for what is in the application package and various information required by the
USPTO.
Inventor’s declaration form-this is where inventor declares their citizenship,
that they are the original and first inventor of the invention, that they have
thoroughly reviewed and understood the patent application, confirmation of the
inventor having an ongoing obligation to disclose all known prior art related to
the invention, and a series of other declarations relating to disclosures that
may preclude patenting.
Inventor’s power of attorney form-this is where the inventor officially declares
the patent attorney to act in his behalf for all issues relating to USPTO
business on the inventors application.
Small entity status form-(if applicable).
If the inventor or invention assignee’s business entity including all
affiliates is less than 500 employees, qualifies the small entity for a 50%
discount of some USPTO fees.
Invention assignment form and recording at the USPTO (if applicable). If the
patent and patent application is to be owned by an entity other than the
inventor, this must be recorded at the USPTO. (Note separate fee listed below)
j
Fee
transmittal sheet-
A USPTO calculation sheet for additional services such as, petitions,
amendments, time extensions, non-English application, etc.
Express mail certification. (if applicable).
To expedite a file date to mailing time, as opposed to the standard USPTO
receipt time.
Statement regarding federally sponsored R & D.
Inventor must state whether this invention has any affiliation with a
federal government program, either through funding, resources, or intellectual
assistance.
Information Disclosure Statement (IDS)-
This normally filed within three months of the design patent application file
date, and a supplemental IDS must be filed if new prior art is discovered during
the prosecution of the pending patent application.
The supplemental IDS must be filed within three months of the discovery
of the prior art. An IDS is where
the inventor and all other knowing parties disclose and declare all known prior
art related to their invention to the USPTO. The IDS requires preparation of the
transmittal letter, prior art description and comparison to the invention,
copies of the prior art, language translation into English if required, and
completion of the USPTO IDS forms.
(Note separate fee listed below)
Related application statement-
This is where the inventor discloses, a continuation of a prior application, or
a divisional-splitting one application into two.
Return receipt postcard-
If applicable, as this is not required fir internet filing, if required this is
a self addressed, self-stamped postcard that has a checklist of what was sent in
the patent application. When the
USPTO receives the application they confirm what they received, and when they
received it, on the card and also assign a patent processing serial number.
This post card is then mailed back to the patent attorney as an
acknowledgement of the USPTO’s receipt of the entire application along with a
file priority date and the USPTO serial number that will be used during the
patent prosecution phase.
Note that with the current possibility of Internet based patent application
filing, this postcard would not be needed and would be in the form of a return
Email. In addition, these postcards
are used for most all other USPTO correspondence that is not conducted entirely
electronically to acquire evidence of the USPTO receipt date of various
correspondence that has a due date.
Foreign priority documents (if applicable).
If any foreign priority is claimed a certified copy of the foreign
application must be included (that normally has an additional cost of $250), and
declared on the declaration by the inventor.
Patent Attorney fee for completing the above items
Basically the drafting and filing of the entire design patent application.
$1,500.00
Estimated overall cost
totals, for a design patent
(with expense point in time and cumulative totals)
Start
Search and Opinions $1,450 (Cumulative)
[0 months] {Optional}
Patent drafting $1,500 ($2,950)Drawings $700 ($3,650)
USPTO fees (Design patent U.S. only)
USPTO filing fee [0 months]Small entity $220 ($3,870)
Large entity $440 ($4,090)
IDS [2 months]
Small entity $250 ($4,120)
Large entity $250 ($4,340)
Assignment (optional anytime, not included in totals)
USPTO recording fee $40
Attorney fee for assignment contract $250
Prosecution fee for response to USPTO office action [12 months] (may be
more or less)
Small entity $1,000 ($5,120)
Large entity $1,000 ($5,340)
USPTO Issue fee [18 months]
Small entity $410 ($5,530)
Large entity $820 ($6,160)
Post allowance admin. fee [18 months]
Small entity $550 ($6,080)
Large entity $550 ($6,710)
Total Design patent costs [18 months]
Total (with search and opinions)
Small entity $6,080
Large entity $6,710 Total (without search and opinion)
Small entity $4,630
Large entity $5,260
Costs do not include, travel, language translation, or certified copy fees if
required.
Actions subsequent to the design patent application
filing
Once the
patent application is filed you should expect a 1st office action
around 6 to 14 months after filing.
This is essentially the first official response of the USPTO to your
application. As it is unknown what
the USPTO 1st office action will require there can be no precise
estimate of what additional fees may be required.
The USPTO may find disabling prior art that would preclude patenting or
may require that the drawings be narrowed in their scope of coverage.
The USPTO 1st office action response will typically be a
rejection of some or all of the features in the figures and possibly an
objection to some matters of form for drawings or the application.
The result is usually an amendment response that needs to be prepared
within 3 months of the USPTO office action by the patent attorney.
This response would include amendments to the drawings, research and
preparation of legal argument to justify the drawing amendments, or the
non-amendment of certain drawing features, correcting matters of form, and
possibly teleconference(s) with the USPTO Examiner.
Additionally, if it is beneficial an in person interview with the USPTO
Examiner may be done to further convince the Examiner of our position in trying
to have the drawing features allowed, is available at extra cost for the patent
attorney time and travel cost. There
is also the possibility of a 2nd and final office action from the
USPTO concerning the drawing features requiring another amendment and additional
patent attorney time. An estimate of
the costs for answering the USPTO office actions which consist of drawing
revisions and argument to convince the examiner on the validity of our position
is around $1,000 for the patent prosecution period going from application filing
to issue, this costs may be more or less depending upon the complexity of the
patent application and nature of the USPTO Office Action rejections (substantive
law) and objections (matters of form).
Design Patent Budgetary Notes
We cannot quote patent cost beyond the application filing with certainty.
The uncertainty of the USPTO’s 1st office action and the
related amount of patent attorney amendment work that may be required to respond
to the 1st office action and possibly 2nd and final office
action from the USPTO is unknown.
The post allowance administrative fee includes checking of the formal
drawings, proof reading the issued patent, and administrative work related to
issuing the patent from the pending patent application.
All of the fees quoted are estimates only for budgeting purposes as the
complexity of any given invention varies.
The legal fees can be fixed at the time of the Attorney-Client fee and
Representation Agreement for a set amount of legal duties.
The USPTO fee’s are subject to change beyond our control.
Also, the patent draftsman fees and other 3rd party service
provider fees are subject to change beyond our control.
Costs do not include, travel, language translation, and certified copy
fees if required. Other incidental,
actual out of pocket costs and expenses are per the Attorney-Client fee and
Representation Agreement.
Notes particular to a U.S. Design Patent
a. Protects the ornamental non-functional aspects on an invention, in other
words the appearance, configuration, shape, etc. of the item is what is
protected.
b. Has a term of 14 years as opposed to a term of 20 years for a utility patent.
c. Design patents are often used in conjunction with utility patents for the
same invention, wherein the utility patent protects the functional aspects of
the invention and the design patent protects the ornamental and non-functional
aspects of the invention.
d. Multiple embodiments (versions) of an inventions design can be filed
in a single design patent application that have minimal configuration
differences to maximize design patent coverage.
e. A design patent is examined like a utility patent at the USPTO in
relation to the prior art.
f. A design patent is subject to all the same prior disclosure rules as a
utility patent.
g. A design patent only has a foreign priority period of 6 months as
opposed to 12 months for utility patents, wherein to obtain the original filing
countries priority date a foreign filing must be made in 6 months.