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Costs to Expect during the Patent Application Process

By: Christopher Heer, Ryan De Vries, Daryna Kutsyna | Last updated: August 15, 2018
As with any step or component of a business plan, the value of seeking a patent must be evaluated in light of associated costs. A patent application process can often take a couple of years, with professional and government fees arising at various stages.

In the following we discuss costs associated with a typical application process, some additional considerations when applying in foreign jurisdictions, and a few ways to manage costs.

1.0 A Typical Patent Application Process

1.1 Pre-Drafting

As a preliminary step, prior to preparing an application, many inventors have a patentability assessment conducted. A patentability assessment is a chance for an inventor to get an idea of whether their invention is likely to be considered new and inventive, and therefore patentable.

At a high level, most patentability assessments involve summarizing the key features of an invention, searching for public disclosures of something which includes those key features, and an opinion on whether the invention is likely to be considered novel and inventive as compared to the closest public disclosures uncovered.

A variety of patentability assessment services are usually available to an inventor, from a brief search resulting in a set of unexplained patents for the inventor to review on their own to a thorough review of public disclosures resulting in a written opinion on patentability. Corresponding costs can range from a few hundred dollars to several thousand.

When deciding how much to invest in a patentability assessment, consider that all future patent expenditures as well as decisions to proceed with investing time and money into the development of the product may be based on the results of this initial assessment.

1.2 Drafting and Application

Regardless of whether an inventor starts with a patentability assessment, the inventor will need to prepare an application to be filed. Most jurisdictions require that applications include a detailed description of the invention which would enable a person who understands the field of the invention to make and use the invention. A set of claims clearly defining the boundaries of the invention or the more particularly the scope of exclusive rights sought will also be required.

Drafting an application is an exercise in precise writing with carefully thought out intent. Many applications are rejected for being unclear, and many applications result in very narrow patent protection as a result of describing the invention in too limited a way.

The cost of drafting an application typically depends on the complexity of the invention itself. Where the invention is a complex or technically advanced invention, the application may need to contain a greater amount of description than usual drafted in order to sufficiently describe how to make and use the invention. The cost of drafting an application can accordingly range from several thousand dollars to ten thousand or more.

The cost of drafting an application also depends on the degree of formality required. Many applicants choose to start the patentability process with a provisional application, which can be used as a priority document for a later regular patent application. Provisional patent applications are not examined and can often be much less formal than regular applications, and accordingly cost less to draft.

1.3 Filing an Application

Filing an application typically involves preparing the required forms, gathering the required documentation, and submitting the application to the patent office. Most patent offices charge a filing fee of several hundred to a couple thousand dollars. Professional fees are also associated with preparing and filing the required filing documentation that accompanies a copy of the patent application.

1.4 Examination

Some patent offices, most notably the United States Patent Office, examine an application automatically. In such cases, the offices often include examination fees as part of filing fees. Other offices, such as the Canadian Patent Office, allow inventors a period of time to choose when to request examination, allowing investors to wait and see what happens in other jurisdictions. Where requesting examination is not part of filing, the cost to request examination is usually several hundred dollars in government fees and a few hundred dollars in professional fees.

During the examination process, a patent office will likely correspond with an applicant through their agent. Such correspondence is likely to include one or more prior art-related or formality-related objections from the office, to which an applicant is typically permitted to respond with a combination of arguments and amendments. Professional fees associated with the costs of reviewing, advising on, and responding to correspondence often come to several thousand dollars over the months and years of the examination process.

1.5 Issuance

When a patent office decides to grant a patent, they typically require a final issuance fee to be paid. Such fees depend on the entity size of the applicant or patent owner can likely come to a few to several hundreds of dollars, and related professional fees can also come to a few hundred dollars.

1.6 Maintenance

One cost of the patent process that is often overlooked is the cost of maintaining an application or issued patent. Many patent offices begin requiring maintenance fees within the first couple of years of an application being filed, with fees coming due periodically while the application is pending and also periodically if it has been granted. Failure to pay maintenance fees can result in the application or patent becoming abandoned.

Maintenance fees in some jurisdictions are due annually, while in others they are due every few years. In addition, fees often start in the low hundreds and then increase with each periodic payment, such that fees near the end of the life of a patent are in the high hundreds or few thousands of dollars.

2.0 Seeking Protection Internationally

2.1 An International Application

Often when an applicant intends to seek patent protection in multiple jurisdictions, the applicant begins with an international application under the Patent Cooperation Treaty (PCT). While applicants will still be required at some point to seek protection separately in each jurisdiction, an international application allows an applicant to delay the deadline for beginning the jurisdictional process by a period of time, and can help to coordinate multiple applications. However, professional and government fees associated with an international application typically come to several thousand dollars, and most fees associated with filing in each jurisdiction are not reduced as a result of beginning with a PCT application.

2.2 Foreign Filings

Whether filing directly in a foreign jurisdiction or entering your international application into a foreign jurisdiction, you are likely to encounter a couple of costs associated with foreign filings. Many patent offices require that the application, or at least the claims, be translated an official language of the jurisdiction. In addition, many foreign offices also correspond in the language of their jurisdiction. Translations costs can often come to several thousand dollars. Often there are also professional fees associated with coordinating several foreign filings, typically in the range of a few hundred to a few thousand dollars.

3.0 Managing Costs

3.1 Preparing for the Patenting Process

One way to reduce fees associated with the patent process is to be prepared. Review public patent databases to see if your invention has already been disclosed; many inventions have not been commercialized, but the patent office does not only consider commercially available disclosures when assessing patentability. Develop a business plan outlining which jurisdictions are important to you, so that you do not incur expenses in irrelevant jurisdictions. Work on your invention until you are able to differentiate between core features of your invention and additional features which are handy but not essential and be able to describe why particular features were chosen.

3.2 Seek Funding Opportunities

There are many grants and loans available to aspiring inventors in Ontario and Canada, both through government and non-government organizations; you can check out some of them here. In addition, most inventors seek patent protection in able to help them in commercializing an idea, making the process a great fit for investors seeking a return on investment.

One thing to bear in mind when seeking investment is the possibility of disclosing your invention in a manner that could be considered public, and thus destroying the novelty of your invention. A judicious use of non-disclosure agreements, research agreements, and practical safeguards should be employed to protect the confidentiality of an invention prior to a patent application being filed.

3.3 Small Entity Status

Many jurisdictions provide for small or even micro entity status for qualifying applications, allowing applicants to pay only a fraction of the usual government fees. For example, a qualifying small entity in the United States is entitled to 50% off many government fees, and a qualifying micro entity in the United States is entitled to 75% off many government fees. Over the entire patent process, qualifying for small entity status can save an applicant several thousand dollars.

4.0 Conclusion

While the patent process can be expensive, expenses typically arise over a period of a few years and often form a necessary part of the expense of running a commercial enterprise. While it may seem tempting to cut corners early on in the process, correcting mistakes made in the patenting process can be particularly difficult and expensive, resulting in government and professional reinstatement fees or even the loss of potential patent protection. A good patent strategy will include at least a rough assessment of the associated costs.