All bodies that publish and grant patent documents are required to use IPC classes. This means that every patent document published has one or several IPC classes. The IPC is a vast system that comprises over , different classes. It is even more extensive than the IPC, comprising over , classes.
The exact costs depend on the technological domain and the research subject matter. A patent application or patent includes information about the applicant and inventor, the date of filing, status of the application, and the countries or regions in which the patent application has been filed and granted. Of course, the invention itself is also in the patent.
Besides information about the subject matter and the invention, you can also read what falls under the scope of protection of the patent. The last aspect is determined by the claims in the patent. There are various types of patent searches.
The most commonly used search types are: novelty search, infringement search, validity search, patent monitoring, landscaping, and bibliographic searches. Before filing an application, you need to draft a written application for a patent, or have this drafted for you, and file this with a patent-granting authority. To do this, you need a description of the invention. The application also needs to include one or more patent claims which define the scope of protection required for the invention.
A further requirement is an abstract of the application. Finally, you need to clearly show in the application that you are applying for a patent.
This can be done, for example, by using a form made available by the patent granting authority in which one indicates that one wishes to have a patent based on the attached documents the aforementioned specification, claims, etc.
You will also need to pay all of the required fees. These depend on the country or region in which the application is filed. There may be additional requirements, depending on why you are applying for a patent. For instance, if the application include sequences of nucleotides or amino acids, then the description should also contain a list of these sequences.
Applications that do not meet the requirements will be rejected. Furthermore, it is also important that you have the formal right to file the application.
In principle, you have this right if you are the inventor. Whether this is also the case in practice depends on the specific situation and national laws. For instance, under the laws of the Netherlands and Germany, the right of employees whose work activities encompass inventions passes in principle to their employer.
In Germany, this is regulated by the Law on Employee Inventions, which incidentally also includes guidelines on remuneration. It is important to properly document how you are the holder. You do not need to demonstrate this when you file the application, but inadequate or missing documentation can later lead to disputes about who is the holder, or even to the patent becoming invalid.
It is advisable to seek advice from a patent attorney who is a specialist in all of the substantive and procedural aspects involved with applying for a patent. Patent-granting procedures can involve a considerable investment. As a patent is essentially a national right, both the granting phase and the maintenance procedure need to be separately completed in each country. Firstly, there are costs involved with drawing up and filing the application.
These often range from 6, to 10, euros, including official fees. In certain countries, including the Netherlands and Belgium, you do not usually need to incur any additional costs until the patent is granted.
Once the patent has been granted, you will have to pay maintenance fees each year. However, in many countries, including Germany, a granting procedure involves additional costs. Anyone who would like patent protection in multiple European countries usually chooses a so-called European patent. This is a cost-effective and uniform granting procedure that is centrally administered via the European Patent Office.
This procedure applies to all countries that are signatories of the European Patent Convention. The costs of preparing and filing the application and the procedure up until the granting of the patent can vary considerably, depending on the complexity and length of the procedure.
For a European patent-granting procedure, these costs are usually in the region of 20, euros. Once a European patent has been granted, you have to choose the participating countries in which the patent should be valid, where you will have to deal with the necessary formalities this is known as validation.
For instance, many countries require the patent, or at least the patent claims, to be translated. You will also have to pay maintenance fees each year. The validation fees in Europe can quickly rise to over 1, euros per country. That is why many companies choose to limit the number of countries where a granted European patent is valid, for instance, countries with the largest potential markets or countries where their main competitors have a manufacturing facility.
Similar considerations are involved in granting and maintaining patents in large countries outside of Europe, such as China, Japan or the US. Yes, it is. However, it is important to be aware that a patent application is a legal document that provides a very accurate description of technical knowledge with the aim of converting this knowledge into the broadest possible right.
Patent applications, as all legal documents, need to meet various requirements. The patent-granting procedure often lasts for years and it is not possible to add new aspects to the application at a later date. This means that the invention must be described accurately when the application is filed. A number of basic rules apply to the formulation and wording, which is part of the expertise of a patent attorney.
If you do not have experience with correctly describing the technical knowledge for which you are filing the patent, there is a high chance that the text will fall short after going through a granting procedure that lasts many years. For instance, this may be because the application no longer protects the required product or process, or that a patent cannot be obtained because the invention has not been sufficiently disclosed, even if the invention meets all of the substantive requirements.
The speed depends greatly on where one would like to obtain a patent, which procedure one follows, and the strength of the invention that one would like to protect. The patent-granting procedure is extremely predictable for Dutch and Belgian patents.
The patent is granted around eighteen months after the application has been filed. This patent is not formally tested for validity, but it is provided with a novelty report, including a written opinion issued by the European Patent Office EPO. The patent can even be granted after a shorter period of time if requested by the applicant. Legally speaking, the patent can be granted from the moment that the patent application meets all of the formalities for granting the patent.
The patent-granting procedure for German patents does include a formal substantive assessment. The granting procedure takes an average of three years, provided that a request to extend the term has not been submitted. The granting procedure for European patent applications which can also be granted for the Netherlands, Belgium, and Germany takes an average of two years, although in exceptional cases it can take as long as 10 years.
The applicant has a significant influence on the speed of the procedure. For instance, if a patent is required quickly, it is possible to apply for an accelerated assessment.
However, there are advantages to slow granting procedures, as they allow many of the costs to be delayed. A slow granting procedure also makes it more feasible to estimate the commercial value of the invention and to coordinate the granting procedures accordingly. There is not a one-size-fits-all patent. Patents vary widely in type, complexity, scope of coverage, length of description, etc. The question of cost, therefore, depends upon certain key factors. Perhaps the most important cost factor is choosing between a design patent or utility patent.
A utility patent will incur substantially greater costs than a design patent, in terms of both the initial filing and the ongoing prosecution.
Initial filing costs are generally easier to estimate than ongoing costs. Keep in mind that these ballpark initial filing estimates do not cover patent searches or responding to rejections. There are two main components that make up the initial cost of filing a patent application:.
Assuming that you qualify as a small entity, here are ballpark cost estimates for filing a US patent application:. Though much cheaper, design patents do not protect any functionalities of your concept how your invention works. Provisional applications will not lead to any granted patent rights unless you follow through with a nonprovisional application. I am litigating such an exception right now where the inventor should collect millions of dollars.
However, he stands to win because the invention was good and if he wins it will be despite his patent application not because of it. Fortunately, he eventually hired the author of that book, a patent prosecution whiz, to straighten out his mess and get him the patent even though he had filed second. Due to the mess he spent nearly 7 years trying to convince any contingent fee patent litigator to take his case.
In America, fat cats rule Washington. Until we get public funding of elections American government will continue to be just a tool of the rich and be more the problem than the solution. Sadly everything you say here is all too true, much to my regret. I heard one report that MickeySoft alone spent about a hundred million to try to buy the legislation in that cycle. Why would they do that you might ask, but the answer is very simple really when you consider the math.
Not a bad investment from their perspective dontcha think? The really sad part about this is that even at that level of loss, it would only amount to about One Percent of their Profit Margin. That is much less than a rounding error for most businesses, but still they had to try to jam it through to make more billionaires for a few more years.
Meanwhile all the rest of the inventors in the US would have lost nearly half of the value of their patent rights, but why should they care at all, as long as they make several or dozens more billions in profits? Kind of a no-brainer for general or legal counselors for the interested corporations, nicht whar? Even if Mr. The good old boys thing, where nothing is in writing or on the books. Large corporations have already sent many of our manufacturing jobs overseas, and they have no real reasons to change their behavior the way things are unfolding, and still very few in Congress seem to be able to figure out where all our jobs went to??
Is this what George Jr. We need to break the cycle. Inventors have the potential to break the cycle by creating disruptive technology and displacing the fat cats.
And, while it might seem that is really off the topic of why patent applications cost so much, it is not at all. Unless small inventors lobby harder the fat cats and their tools will continue to be the ipwatchdogs of the fat cats. The founders had a simple patent system that was designed to level the inequality of rich and poor by rewarding inventors for their creative efforts rather than the privileged friends of the king.
Unfortunately, our laws are now doing just the opposite and rewarding fat cats and stifling the small guy. High patent costs to perpetuate economic domination by fat cats is foolish of America, emblematic of our current corrupt political system. Bruce- Your point about them trying to get rid of independents or small entities is well taken here.
Larger corporations generally allow internal innovation to occur only if they can get past their cost effectiveness committee, so to speak, because they are terrified of not making as much profit as they possibly can.
If another upstart like Steve Jobs and the Woz were to come along, it might make their whole deal obsolete, so of course they will do anything possible to try to avoid that if they can, including destroying the future possible value of US patent rights to support their own obsolete business models. Your article on costs to file a patent application is very interesting.
I cannot justify charging more. If patents appear to be expensive, then I wonder what they are being compared to.
An inventor should have an overall business plan for developing an idea into a practical invention. This includes development costs, sales, marketing etc. The guy fixed it in 3 minutes by diddling one bolt and a knob. The answer was, you are right. So learn your stuff so you know which knobs to diddle. For me I am offended by the charges for drafting patents, which is why I seek out those skilled in the art who do NOT charge for every staple, hole punch, and need to answer Office Actions from errors on their own part.
View More…. Advertise Here. Our website uses cookies to provide you with a better experience. Read our privacy policy for more information. Accept and Close. Tags: independent inventor , independent inventors , nonprovisional patent application , nonprovisional patent applications , patent application , patent application filed , patent applications , Patent Drafting Posted In: Inventors Information , IP News , IPWatchdog Articles. There are currently 37 Comments comments.
That way, you too can enjoy the Prior User Rights gift in due time, of course. Sure, the professional would still be necessary to refine the Claims if not completely write. Gene Quinn December 12, pm Jodi- Is a competent engineer equipped with the knowledge of Federal Circuit cases that deal with how inventions should be described in a patent application?
Gene Quinn December 12, pm Mike- I agree with you. Gene Quinn December 12, pm Come on David. Stan E. Delo December 13, pm David B- I got a huge kick out of your Chinese water torture story, which I can certainly understand, after having run an inventors group for a few years. Mike Coblenz December 14, pm Jodi: I would also add that there is no magic to writing patents, and there are scientists, engineers and individual inventors that do it themselves.
Delo December 14, pm jodi- As a fellow inventor, I still remain a bit skeptical. Bruce Burdick December 15, am I saw this in a PIA posting, so thought it would be interesting to see the reaction Gene got when he described why patents cost so much to draft.
Thanks for all your efforts during the year — Happy Holidays! Get well Renee! Delo December 17, pm BD- I checked the morning after on her facebook page, and apparently everything went very well during the surgery. Delo December 19, pm Bruce- Your point about them trying to get rid of independents or small entities is well taken here.
Mark Smith December 20, pm Your article on costs to file a patent application is very interesting. Mark Nowotarski March 5, pm If patents appear to be expensive, then I wonder what they are being compared to. Varsity Sponsors. In summary the patent specification has to be fit to put before a judge. It is not the sole work of the attorney who cannot and should not be expected to pull rabbits out of hats. It was their team effort that resulted in a successful outcome.
Most inventions cannot justify a full team of this kind, but the need for team effort and inventor involvement cannot be overlooked. Recent Supreme Court and Federal Circuit decisions show, if nothing else, the dangers of over-optimistic main claims. If the point of novelty in claim 1 is a broad functional statement devoid of supporting detail, the court may derive an indelible impression of excessive scope, and all may be lost.
Almost certainly the generalization that is needed to obtain grant e. The first filed application, and the subsequent international text, are the most important and critical documents. Everything else depends on them. Although the initial cost may appear daunting, in the overall scheme of things it is relatively minor, and going the extra mile will be abundantly repaid later on. They wanted patent specifications drafted and prosecuted on behalf of a research unit in a major UK university town.
More importantly, the whole inventor contact time for both the drafting and prosecution stages was not to exceed 1. My friend spoke eloquently about the multi-meeting back and forth discussions that were crucially needed to identify the real invention in the field which was software , and declined the invitation.
Sure, additional filings can be made both additional provisionals and Continuations-In-Part , but both of these face a later priority date than the original pacing items. There is NO law that says that clients must have the best possible application written. But in the context of the Supreme Court — and the largest and most dangerous developments in patent law, I look most particularly at your point 4. And yet, a close read of the Supreme Court writings indicate no such clear overruling — and arguably the opposite reading — but only if one considers that the full body of Supreme Court writings are an irreconcilable and hopelessly conflicted mess.
There will be NO clarity as long as the Supreme Court feels the ability and has the ability to play scriviners themselves. ALL signs point to a continuing and perhaps exacerbated wax nose mashing period. In a very real way, it is your lunch that is being taken!
A surprising number now farm out initial application preparation to India, and a number of others now outsource application prep and prosecution on a low bid basis. Nor is time the only issue with in-house or outsourced application preparation by young associates needing supervision and guidance from senior patent attorneys. Too often now they do not get that, especially with the billing pressures on partners in large law firms these days. Customers would be a better term.
Needless to say, I did not even reply. The solicitation did not specify whether they wanted Provisionals or Non-provisionals. I assumed Provisionals. At that price, the most a prosecutor could do is prepare the forms and slap a cover paragraph or two around a writeup from the inventor. A little investigation revealed that one of those TV ad law businesses — wills, contracts, patents, etc.
Half of that went to a pair of California lawyers not admitted before the PTO. As Mr. Morgan may or may not know, any outsourcing to India prior to obtaining the appropriate export clearance is problematic.
Morgan may be unaware of this, given his statements that he long ago relinquished his registration number and in no longer involved in the practice of law involving prosecution before the Office.
Ethical considerations aside for the moment and you do touch on some of them tifoso, including those not registered involved with patents and patent law , the mechanics related to prizing of which you speak are just not against the law. That is why good patent engineers eventually go to law school to become a well paid attorney. The attorney reviews and edits and signs-off on filing. It lowers the cost of preparing the application while increasing the quality significantly. The money problem is of course that it takes a couple of years to train the engineer into a patent engineer.
It takes a while for companies to figure out the actual cost of low quality patents. I suspect that we will see more of this as the bottom in quality hopefully has been reached and the courts and PTAB will continue to punish low quality patents, which I would like to stress are not synonymous with low quality inventions. I was not claiming it was illegal. Gene wrote about why patent applications cost so much.
He referred to a race to the bottom. I was giving an example of that race. I am reminded, again, of something a colleague told me about 35 years ago. He had received a call from a prospective non-patent client whose main concern was price. As we all have learned the hard way, clients whose sole concern is price are never satisfied. They will be trouble. If such options are to be dissuaded, then they must be done so in proper read that as legal manners.
Thank you yes — my reply was less critical of you than the reading may indicate. But I heard much later, after I was no longer involved, that it is being done by several large companies, so presumably they have some kind of arrangement that avoids that problem. I mainly used it in the colloquial sense. The inventor fulfilled the obligation of inventing and disclosing the invention.
For most inventors there is little influence on the application, once it is in the hands of an attorney, especially if the inventor is a novice in this field who has to rely on the attorney, who expects a certain level of compensation for a certain amount of work.
The quality of patents before the courts and the PTAB is not always good, to say the least. Cuozzo being a case in point, wherein Justice Breyer criticized the quality of the invention, but not the work of the attorney. Cuozzo made a good invention. I suggest a wider involvement of patent engineers to help the inventor place the application in better condition for post-issuance procedures and wherein a major portion of the work goes to the engineer. The billing and compensation structure at law firms do not support this model of extensive preparation work by engineers and that is why you see it mainly at companies and yes, sometimes not in the USA, though I doubt if that increases the quality, but it lowers the price.
You just cannot buy bottom level prices and expect a Ferrari. Your suggestion of patent engineers is a notable suggestion and an option that people should take note of — but again, that has nothing to do with the topic I am discussing. One thing that I always make clear when dealing with inventors within a corporation is that I am NOT representing the inventor as a person unless, I am — and then I am not representing the corporation.
The important point that I am making that is crossing over you without being noticed is the level of control of just what is submitted is very much in control of the client. If the client is the corporation and the corporation has struck the price-point deal — then THAT is the deal and not the deal that you are thinking of. The law fully allows non-Ferraris on the road.
THAT is fully — and only — the role of the examiner.
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