Provisional Patent Filing Fee: Everything You Need to Know
A provisional patent filing fee is the cost associated with filing a provisional patent application with the USPTO.12 min read
A provisional patent filing fee is the cost associated with filing a provisional patent application with the USPTO. This process is long and complex and has a wide range of variables. You'll need to know how to do your research, what exactly you're trying to patent, and specifically why you need a provisional patent application instead of a regular one.
Calculating Patent Cost
It is difficult to properly estimate the cost of a patent in the United States. So much of your estimate will depend on what technology is involved. Unfortunately, just answering this question with “it can vary” won't satisfy anyone or provide much direction. Therefore, we'll attempt to outline the process and provide as much clarity as possible.
You must first understand a simple fact: a patent's very nature means you must have invented something completely unique when compared to what is known as “prior art.” It is extremely challenging to properly describe every characteristic that distinguishes your invention from everything else on the market, and sadly, laws governing this matter are getting more complicated each year.
When filing your patent, you'll have to read documents full of dense legalese from the federal United States Court of Appeals, the US Patent and Trademark Office (USPTO), and the Supreme Court. That said, technological advances have made the process of actually obtaining a patent easier than ever, especially compared to a decade ago. Although the information is readily available, making a compelling case to defend your patent is not cheap.
Let's talk about the application process. First, you should examine exactly what factors will impact your application. The cost of preparing and filing a provisional patent with the USPTO will largely be determined by the type and complexity of the invention itself. These two factors will determine everything from the patent search for prior art to the number of drawings you'll need to include in your application.
The trouble for most inventors is that, because they came up with the idea, they think that what they've invented is actually quite simple to explain. If this were true, defending such a patent application should only take a few hours and shouldn't cost much. Unfortunately, even if the invention is relatively simple, the process of filing a patent is long and complex. Take a look at any recent patent application (they are all public record), and you'll see just how dense the text is. You'll also see the sheer number of drawings that accompany the application and notice how much of the text is so archaic; it would be impossible to understand by anyone without training in patent law.
Most inventions range from the relatively simple to the minimally complex. However, if your invention is any sort of advanced electronic device, for example, your application is guaranteed to be more complex regardless of your invention's specific form and function.
Patent applications for software are also complex. Any software invention is guaranteed to be considered highly complicated because courts are continuing to increase the amount of technical jargon and detail demanded by the application. To have any hope of getting, let alone maintaining, a software patent, your application will need to be overwhelmingly detailed.
Nonprovisional Patent Costs
If you want your patent approved, you'll have to file what's called a nonprovisional patent application. The cost of this type of application varies wildly based on the complexity of the invention. However, there are a few known quantities. Any independent inventor or small business will at least have to pay a minimum government filing fee of $730. The fee is a minimum of $400 for anything classified as a micro entity. However, you should note that the fee will increase based on the number of claims contained within the application.
You will also have to pay for professional drawings. Technically you can do the drawings yourself, but if you want your application to look professional, you'll likely pay anywhere from $300 to $500.
Ultimately, the cost of your patent application will depend mostly on what you intend to do with that patent and exactly what market opportunities exist for your invention. If there are actually realistic opportunities in the market, you may want to increase your spending even if your invention is comparatively simple.
You could pay a cheap attorney to create a broad, simple application that won't hold up to any significant scrutiny, or you can invest thousands and in return get yourself an ironclad defense against any and all issues of infringement. This is because patent strength is mostly determined by the number of claims in the application and the amount of detail in the technical disclosure. The more you can explain options, variations, alternatives, and different embodiments, the wider reach your patent has in protecting your invention. Naturally, adding claims and greater detail to your application means you have to pay for more attorney time. However, the more time and money you invest in your patent's application, the better protected that patent will be.
If your company depends on its intellectual property to remain competitive, you have to make sure it remains protected. Without your IP, you'll never be able to earn funding from investors. Without investors, your company can't grow and expand.
When a company is looking to cut corners and shave costs off of their patent application, the first place they usually look is the patent search. However, cutting costs on this step will come back to bite you in the end. It's such a dangerous risk that many law firms refuse to represent anyone who skips a patent search. The only way they'd even consider representing such a client is if he signed a waiver stating that he had been advised of the dangers of skipping the search and chose to go against the advice of his legal counsel.
In fact, a patent search is so important to the application process that Micky Minhas, Chief Patent Counsel for Microsoft, has stated that his company does “prior art searches on every one of [its] cases.” Even though they perform a search for every application, they still find past art they weren't expecting. Missing previous art will slow the patent process and leave your invention vulnerable; it's a risk you cannot afford. Further, conducting a patent search will give you an idea if there's even room in the market for your invention at all.
All that being said, it's important to understand that there are no guarantees with a patent search. When conducting a search, the goal is to reach an 80 percent “level of confidence.” It's virtually impossible to get any higher confidence level without investing such a large amount of money it would essentially invalidate the patent process.
Some prior art is literally impossible to find in a search because there are actually patents that are required to be kept secret by law. You cannot plan your application based on prior art you cannot see, so trying to identify if this art exists is totally pointless for the purpose of your application. For this reason, you have to have a reasonable expectation of your patent search. You must be thorough, but understand the limitations of the process.
You may now feel like the search is less worthwhile, but even an 80 percent confidence makes a huge difference for your patent application. Without any knowledge of prior art, you have no point of reference to describe and distinguish your invention.
You'll want a professional patent searcher involved in the process, along with an attorney-written opinion. This will typically fall in a range between $1,000 and $3,000. Much of this will vary based on how much written analysis is necessary for your specific invention. Yes, the cost of hiring these professionals can be high, but having a competently performed patent search accompanied by an attorney's solidly written analysis will be the most useful investment you can make for your application.
In this article, there have been a lot of numbers and “what ifs” thrown around, but we can break it down more specifically to give you a better understanding. The estimates below are purely hypothetical and will assume that the application is of a higher caliber and that you have filed the application with the sole intent of securing a powerful, well-protected patent.
For example, these are the costs for the patent application for a computer-implemented process for facilitating some specific internet functionality:
- Patent search with an attorney opinion = $2,500 to $3,000
- Provisional patent application fully prepared and filed = $6,000
- A filing fee paid to the USPTO for the provisional patent application = $130 (small entity)
- Nonprovisional patent application which is based off the provisional filing = $10,000 to $12,000
- Filing fee paid to the USPTO for the nonprovisional patent application = $800 to $1,250 (for a small business)
- Professional illustrations purchased for nonprovisional patent application = $500
- TOTAL = $19,930.00 to $22,880 (if the provisional patent application process is skipped, then the cost would be $130 less)
In addition to the costs above, make sure you set aside between $5,000 and $7,500 for any additional fees and litigation that come up. We fully understand that these high costs may make the application process prohibitive for some inventors. However, it is better to understand the costs and possibly delay the process rather than get a cheap patent that won't protect your invention. The level of protection will be directly proportional to the money invested.
USPTO Current Fees
The USPTO's fee schedule is constantly changing. For instance, the fee schedule was last revised in May of 2017. Because fees can change, it's important that you research the current fee schedule so that you can be certain that you are paying the USPTO the correct amount.
The most important thing to understand about the fees charged by the Patent and Trademark Office is that the amount you will pay will depend on which of the three classifications your business falls into:
- Micro entity
- Small Entity
- Large entity
A large entity will need to pay the entire USPTO fee, a small entity will pay 50 percent of this fee, and a micro entity will pay 25 percent of the large entity fee. You should be aware, however, that there are certain patent fees for which micro and small entities will not receive a discount. For instance, if you need to request a challenge after your patent has been granted with the Patent Appeal board, you will need to pay a flat fee.
Micro entities first received a patent fee discount in 2013, but they must meet certain qualifications to receive this fee discount:
- Be eligible as a small entity.
- Have not appeared on more than four applications already filed.
- Have a gross income that's less than three times the previous year's median income.
- Are not obligated to provide ownership of the patent to a party that doesn't fulfill the previous requirements.
The current max income for eligible micro entities is $155,817. A Certification of Micro Entity status will be issued if you meet these qualifications. Unfortunately, independent inventors that file a large volume of patents cannot qualify as a micro entity, because they will likely have been named on over four applications. If you are an inventor employed by a company, and your employment requires you to grant patent rights to your invention, you would not be considered "named" on the patent.
Certain small businesses are eligible for the fee discount. The definition of a small business can be found in the Small Business Act. Nonprofit organizations and independent inventors may also qualify for this discount. Generally, a business with 500 employees or less would be considered a small business. However, there are exceptions to this rule. Regardless of their size, universities are considered small entities and are entitled to the discount. However, in order for a university, nonprofit organization, or small business to qualify for the small entity discount, they cannot have given patent rights to another organization that would not be eligible for small entity status.
If you file a nonprovisional patent electronically, and you are an independent inventor that is not eligible for a micro entity discount, your filing fee will be $70. Small businesses that are eligible for the small entity discount will pay the same fee. At one time, the small entity filing fee was $395. Although it can be easy to make this mistake, you should not assume that the USPTO has lowered its fees significantly. Historically, the USPTO has preferred charging multiple fees for a patent, and there has been no recent evidence that they plan to abandon this preference.
Small entities that wish to file a nonprovisional patent application, for example, can expect to pay a $300 search fee and a $360 examination fee on top of the required filing fee. You should also be aware that your starting fee covers only three claims in the independent format and up to 20 claims total. If your patent application has over 20 dependent and independent claims or includes more than three independent claims, you will need to pay an additional fee. For every independent claim over the initial three claims, you will need to pay $210. Once you exceed 20 claims, every additional claim will result in a $40 fee.
The USPTO also requires that you pay an issuance fee before they will issue your patent. Currently, there is a $480 issue fee for small entities applying for a utility patent. If you decide not to hire an attorney to help you apply for your patent, and you qualify for the small entity discount, the least you will pay is $1,210.
Unfortunately, it's likely that you will end up paying much more than this due to the lengthy patent prosecution process. During prosecution, some of your claims will get rejected, and others accepted. If this occurs and you decide to have your patent issued with only the approved claims, you will need to immediately pay your issuance fee. You can, however, respond to the rejected claims with the hope that they will ultimately gain inclusion in your final patent.
Deciding to respond to these rejected claims means you need to file an additional application, which means you will have to pay another filing fee. However, if you drop the rejected claims, you won't need to pay any fees associated with them. If you appeal these claims as a small entity, you will need to file a Notice of Appeal, which costs $400. You may also need to hire an attorney to help with your appeal, which can increase your costs. Small entities that want a verbal appeal hearing need to pay a $650 fee.
During a patent examination, the USPTO will give you a period to respond to any rejected claims without needing to pay a fee. If you are unable to respond to the USPTO during this free period, you must pay an extension fee. By paying this extension fee, you will receive one additional month to respond to the USPTO notice. After receiving a USPTO notice, you have a period of two months to get in touch with the USPTO without needing to pay a fee. Responding after six months is not allowed. If you wait until just before the six-month deadline to respond to a USPTO notice, you would need to pay for four extra months. Needless to say, this can end up being very expensive, so it's important to respond to rejected claims as soon as you can.
Because of the way that the USPTO responds to patent applications, you should be able to stagger your extension fees. After submitting your initial application, you will need to wait a few months before receiving a response. During this period, you should try to anticipate rejected claims so that you can respond as soon as you receive a notice.
What Does it Cost to Patent an Idea?
For the typical invention and patent process, the cost of a patent looks something like this:
- File provisional patent application - USPTO fee $65 (for most inventors, assumes micro entity status)
- File non-provisional patent application - USPTO fees (filing fee, search fee, etc.) about $400
- Patent Issue fee - USPTO fee $450
- Maintenance fee (due 3.5 years after your patent is allowed) - USPTO fee $400
- Maintenance fee (due 7.5 years after your patent is allowed) - USPTO fee $900
- Maintenance fee (due 11.5 years after your patent is allowed) - USPTO fee $1,850
You will not have to pay all these fees at the same time, but the process is expensive. It may be helpful to create a timeline so you can visualize the costs and when they'll come up. Most of your costs will fall into three distinct categories: USPTO filing fees, drawing fees, and attorney fees. The largest of these will always be the attorney fees. The only way to potentially reduce this cost is to hire a patent attorney to teach you how to create and file a patent application on your own. This plan could save you thousands of dollars and, if you learn it well, still yield a quality patent application in the end.
In the end, there's no way to give a fair and accurate estimate of how much your patent will cost. However, with an understanding of the full process, you'll be better equipped to do the research and ask the right questions that will give you an idea of what your final cost might be.
If you need help investigating a provisional patent filing fee, 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.