JACKSON ESQUIRE
Patents Trademarks Copyrights
PROVISIONAL PATENT ESTIMATED COSTS
U.S. Patent & Trademark Office current (USPTO)
fees only:
Provisional utility patent application filing fee
Small entity (less than 500 employees) $105
Large entity (500 or more employees) $210
Provisional application size fee (each 50 sheets)
Small entity (less than 500 employees) $130
Large entity (500 or more employees) $260
Notes to USPTO office fees:
There are many other types of USPTO fees such as non-English
specification, late cover sheets, etc. that are additional; the above fees
represent the most basic U.S. provisional utility patent filing fees.
Formal Patent Drawings Must be in compliance with 35 U.S.C. 113, 37
C.F.R. 1.81, 37 C.F.R. 1.83, and 37 C.F.R. 1.85, comprising: assemblies,
sections, part details, use drawings, perspectives, top, front, side, bottom,
exploded views, workpiece, formulas, tables, flowcharts,
schematics, and a
Gazette view.
Also figure and element numbers must match patent specification. Patent drawing
cost estimated at $700.00 For a professional patent draftsman the cost is
based upon invention complexity and the number of embodiments, which can cause
the drawing cost to be more or less than $700.
Patent Attorney work product follows:
Drafting of the U.S. provisional utility patent application which comprises the
following:
Abstract-this is a concise 150 word summary of the invention for the Gazette
publishing and is the first piece of text in the patent.
Background of the invention-
Field of the invention- Contains a description of the technical field that the
invention pertains to.
Discussion of prior art-
A description of the information known to the inventor, including specific
documents such as prior patents and publications related to the current
invention. Includes a discussion of
the state of the current technology, the problems of the current technology, and
how the new invention solves those problems.
Summary of the invention-
A listing of the objects of the invention, basically the substance or the
essence of what is novel in the invention over the prior art as discussed in
“Discussion of prior art” above.
Descriptions of the drawing figures-
An explanation of what each drawing figure depicts.
Detailed description of the invention-
Called “Description of the Preferred
Embodiments”, has three basic requirements:
Enablement-A full description of the process of making and using the invention
to one skilled in the art. In other
words, many years from now when the patent is expired, an individual with
ordinary skill in this technical field should be able to make and use
this invention based solely on the enablement description in the patent without
having to consult the inventor.
Best mode-
As contemplated by the inventor, an invention may have multiple versions or
modes, and the one mode that the inventor most desires must be fully described.
Description-
The invention is completely described in clear, concise, and exact terms and is
to be distinguished from the prior art.
Typical items covered are the invention’s physical structure, material options,
manufacturing processes, and method of using the invention.
Novelty, utility, and obviousness are also addressed to ascertain the
invention's patentability along with support for the claims as subsequently
described.
The above items, are essentially the 1st draft of the entire patent application.
A review meeting is held with the inventor to review the 1st draft of the entire
patent application as a reality check on what the patent attorney envisions as
the invention and what the inventor sees as the invention are in agreement.
Claims:
Although not normally required in a provisional patent application, it is a good
idea to include at least one broad claim, as many foreign countries do not
recognize a patent application for priority unless it has at least one claim,
also a claim(s) help "frame up" the nature of the invention for writing a better
supporting description-much like a non-provisional patent application is
completed.
Other required documents for a provisional patent
application
Based upon
the meeting with the inventor, revisions may be made to the drawings and to the
1st draft of the provisional patent application.
Final review of patent application with the inventor and execution of the
following documents required by the USPTO:
Provisional utility 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-
(although this is not normally required for a provisional application, it is a
good idea to have for the purpose of clarifying inventorship) 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 are to be owned by
an entity other than the inventor, this must be recorded at the USPTO. (Note
separate fee listed below)
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 in light of the possibility of Internet based filing).
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.
Return receipt postcard-
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.
Legal fee for completing for the above $4,000.00
Basically the drafting and filing of the provisional utility patent application.
(Note that this legal fee is for a non-complex invention with a minimal number
of embodiments, a large number of embodiments or a relatively complex invention
will result in the legal fee being from $4,000.00 to $6,000.00 or more)
Estimated
overall cost totals, for a provisional utility patent application
(with expense point in time and cumulative totals)
Start
Search and Opinion $1450 (Cumulative) [0months] {Optional}
Patent drafting $4,000 ($5,450) [0months]
Drawings $700 ($6,150) [0months]
USPTO fees(Provisional utility patent application U.S. only)
USPTO filing fee [0 months]
Small entity $105 ($6,255)
Large entity $210 ($6,360)
Assignment
(optional anytime, not included in totals)
USPTO recording fee $40
Attorney fee for assignment contract $250
Actions subsequent to the patent application filing-
A provisional patent filing gives a patent pending status only for 12 months;
there is no examination or office actions from the Patent Office.
Prior to twelve months to the day after the provisional filing a
non-provisional utility patent application must be filed or else the provisional
patent application will go abandoned.
We cannot quote patent cost beyond the application filing.
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 any
other 3rd party service providers’ fees are subject to change beyond
our control. Other incidental,
actual out of pocket costs and expenses are per the Attorney-Client fee and
Representation Agreement.
To summarize the particular aspects of a provisional
patent application:
No foreign priority can be claimed of an earlier filed foreign application.
No Statutory Invention Registration is allowed.
A provisional cannot be used for design patents.
The 12-month provisional pendency is not counted toward the later filed, within
12 months, non-provisional utility patent term.
No exclusive rights exist in a provisional, no capital economic value of patent
pending.
No Information Disclosure Statements are used
It is questionable if a U.S. provisional can provide priority to a later foreign
filing without claims.
A provisional automatically expires, going abandoned at the end of 12 months if
no co-pending non-provisional utility patent is filed.
Allows the inventor to claim patent pending status for 12 months only.
A provisional can only provide file date priority if a co-pending
non-provisional utility patent application is filed prior to the provisional
expiring and the non-provisional application does not include any new matter.
There is NO patent Office examination of a provisional application.
Your foreign filing decision is due at the end of the 12 month provisional
pendency period also.
Notes to Provisional Utility Patent Applications-
Created for University researchers to preserve international patent rights prior
to a public disclosure by the inventor or invention assignee via presentation,
seminar, etc. The provisional patent
application requires a complete non-provisional utility type of patent
application specification description minus the claims, unless one independent
claim is required if the provisional is used for foreign priority, with the
provisional patent application only allowing for 12 months of patent pendency
only.
Note this provisional patent has NO exclusionary rights associated with
it, in other words we cannot sue anyone for patent infringement with a pending
provisional application and thus the provisional application is of limited
value, however it can be used for file date priority in the U.S. if there is no
added matter to the original specification in the later filed, within 12 months,
non-provisional application.
This later filed non provisional utility patent application patent requires a
second application and fee no later than the 12-month point in time from the
filing of the provisional patent application, thus adding to overall cost, to
preserve priority of the original provisional patent application file date.
Note also, that provisional’s cannot be used with design patents and
cannot claim priority of another previously filed patent anywhere in the world.
In addition, if you have any inkling of wanting foreign patents, filing a
provisional as a first filed patent application is a bad idea as the foreign
patent costs are considerably higher than if you just filed a non provisional
utility patent application first, i.e. not filing a provisional patent
application at all. This is because the
provisional has no search or examination (as opposed to a non provisional
utility that has a search and examination), thus the foreign patent offices
charge a typical premium on the filing fees being about $1500 to $2000 extra
over the normal foreign filing fees.
Another argument against the provisional is economic, as the standard non
provisional utility filing fee is $435 and the provisional filing fee is $105
(both small entity) the difference is $330, for this $330 you obtain at least
one search and two patentability opinions which is an excellent deal financially
on the filed non provisional utility patent application, plus this information
is very valuable to you and any potential licensees.
Compare this to what a search and two patentability opinions are worth on
the open market, which is about $2,000 to $2,500, in fact if you file for a re-
examination of an existing patent at the USPTO the fee is $2,520 which reflects
more or less the true cost of a search and two patentability opinions.
Based on the above there is rarely a justification for a provisional.