Provisional Patent Attorney Fees: What Are They?

Provisional patent attorney fees relate to the cost of obtaining a legal document filed in the United States Patent and Trademark Office (USPTO) that establishes an early filing date. This does not mature into an issued patent unless and until the applicant files a regular non-provisional patent application, which must be done within a 12 month period from the date when the provisional patent application is filed.

Provisional Patent Overview

A provisional patent application may be better suited for your invention than a non-provisional application. A provisional patent is a more cost-friendly way of patenting your invention. A provisional patent application is both less detailed and less costly.

Immediately after you file your provisional patent application, you can state that your invention is patent pending on any prototype. During this time period, you can also still file a utility or design patent. But, you have 12 months to develop your product even further and turn your non-provisional patent application into a formal provisional patent application.

There are two things to be mindful of when filling out a provisional patent application, which include:

  1. Avoid using restrictive language in the description of your invention, i.e. “essential,” “necessary,” etc.
  2. Be broad (while also being precise) in your description.

Benefits of Hiring a Patent Attorney

When provisional patent applications are poorly drafted, it may not be successful. While there are seminars and workshops you can attend, you just won’t be as trained or well-versed in this area as a patent attorney is.

While provisional patent applications are easier to do on your own than a non-provisional application, inventors often forget that there are still requirements that must be met in order to be successful in protecting your invention.

A patent attorney can make the process go more smoothly. Most importantly, a patent attorney will do the legwork for you, ensuring that you have a well-drafted application to increase your changes of receiving protection.

While a lot of inventors would love to hire a patent attorney to help them through the process, some don’t feel comfortable working with someone who isn’t familiar with the invention, or may not be able to afford an attorney.

That is why it is important for someone to know what a patent attorney charges for preparing a provisional patent application. If the provisional application is drafted well, changing it to a non-provisional application in the future will be easy. The only addition in a non-provisional application is the ‘Claims’ section. Therefore, a majority of the work is already completed at the provisional stage. So, if you choose to file a non-provisional application thereafter, it will be a rather quick process in terms of drafting the application.

Generally, legal fees associated with a provisional patent application are roughly 80 percent of what an application for a non-provisional patent will be. Therefore, you will have 20 percent savings on legal fees. According to the Report of the Economic Survey conducted by the American Intellectual Property Law Association (AIPLA) in 2013, the typical legal costs in the U.S. for organizing a provisional patent application are $4,500, not inclusive of the USPTO filing fee or patent drawings. However, be mindful that the legal fees will also depend on the complexity of the invention, and the length of time the patent attorney spends on the application.

Some experienced attorneys will charge $400/hour, which can add up quickly, depending on how long it takes the patent attorney to do his or her work. If, however, an attorney quotes you an overall price, make sure you do the math to identify the total fee/hour. That way, if the attorney spends additional unforeseen hours on the application, you won’t be surprised if the attorney charges more than the initial upfront cost. You may also want to have an agreement in writing before hiring the attorney to do the work.

Options for Filing a Patent

An inventor who seeks patent protection has three options when seeking protection, including self-drafting, hiring a patent attorney, or hiring a cheap patent service.

Drafting a provisional patent application yourself involves the inventor spending a great deal of time learning the process, drafting drawings of the patent, and preparing the invention description. If choosing to self-draft, you should be mindful of the risks associated with choosing to do it alone.

You can choose to hire a professional service, someone other than a patent attorney, which is generally much cheaper than hiring a patent attorney costing around $2,000. But be careful with this option. There are many companies claiming to provide legitimate services with the intent of scamming people and charging them money for poorly drafted patent applications.

If you choose a professional service, you’ll want to make sure that you ask certain questions before hiring the company. First, you’ll want to know if the individuals working for the company are licensed with the USPTO. If so, you should ask for their registration numbers so you can confirm this information. You should ask how many years of experience each individual has. If hiring a non-patent attorney who works for such a company, he or she cannot draft a provisional patent application for you; therefore, you shouldn’t use his or her service. In addition, you should consider the value of your invention. If you believe you have a highly valuable invention, you should choose a licensed patent attorney to assist you in the process.

As previously noted, you can hire a licensed patent attorney. An attorney, while more costly than the other two options, can prepare a well-drafted patent application, which can help you in the long run.

Potential Consequences of Not Hiring a Patent Attorney

To help demonstrate the significance of having professional help when filing a patent application, take the following example. Assume you created something that has four unique features to it. You choose to file a cost-friendly provisional patent application on May 1, 2016, that contains the following features included on your invention:

Feature 1, Feature 2, Feature 4. These three of the four features were identified in your May 1, 2016, provisional patent application. However, you failed to identify the third feature in your application. The following year, you choose to employ a patent attorney to organize a non-provisional patent application on your behalf. This subsequent application will include exactly what was identified in the provisional application, but now including Feature 3 in the application. This non-provisional application is then filed on December 15, 2016. Therefore, the filing date for Features 1, 2, and 4 is May 1, 2016, and the filing date for Feature 3 is December 15, 2016.

Now, let’s say that a competitor files an application for a non-provisional patent that represents a similar invention on May 10, 2016, that includes the following features: Feature 1, Feature 2, Feature 3, and Feature 4. Therefore, all four features of the similar invention are filed nine days after you filed your provisional application, which only included three of the four features (excluding Feature 3). Therefore, due to the fact that the competitor’s application properly included all four features, he or she is entitled to patent protection of Feature #3 since the competitor’s filing date is prior to the filing date of your provisional application, which included Feature #3.

Two-Step Rule

When determining whether to file a provisional or non-provisional patent application, you should think of the provisional route as a two-step process whereas the non-provisional route is a one-step process.

Below are the two steps you as an inventor would take when choosing to file a provisional patent application for your invention:

Step 1

The first step is to file your provisional patent application. You’ll also be required to pay the filing fee, which is generally $125 for a small company. Note that the provisional application will not include the ‘Claims’ section, which specifically includes a claim or declaration, that the invention is yours and that you are unaware of any similar types of inventions that already have patent protection. What is, however, required in this application is a description of your invention. You should be detailed and specific as to all aspects and features of your invention. To reiterate, while you are not required to include a ‘Claims’ section in your provisional patent application, you can do so if you wish. This can help you succeed in your non-provisional application should you choose to file it within 12 months after the filing of the provisional application.

Step 2

After filing for a provisional patent, you’ll have 12 months to then file for non-provisional patent protection. After filing this application, the non-provisional application claims the benefit of the provisional application. Therefore, you should make sure that your provisional application is specific and detailed. While it is a rather straightforward and easy application, take it seriously because all items in that provisional application will be put into the non-provisional application.

Keep in mind that provisional applications are not examined. Only non-provisional patent applications are placed in a queue and subsequently examined.

If you need help applying for a patent or if you are unsure whether or not you should file for a provisional or non-provisional patent, you can post your legal need on UpCounsel’s marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies like Google, Menlo Ventures, and Airbnb.