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Brown & Michaels
Budget Estimator for Patents

Many of our clients have asked for a way of estimating what costs and time periods to expect when pursuing a patent on their inventions. This estimator should serve as a guide, and is as good an estimate as we can prepare, but you should realize that the fees you will actually pay may vary widely from these, depending on the individual circumstances of your invention. 

While some fees are standardized, and we have indicated these fees below, others can be billed on an hourly basis or on a fixed fee agreed upon in advance. We are happy to provide firm quotes for specific work once we have reviewed your disclosure or the work to be done.  

If you have already filed a patent application in a country other than the USA, and are planning to file an application in the US Patent and Trademark Office based on that foreign application, we have a special section of this estimator for those fees. Most USPTO fees can be expected to change (usually increase) over time. 

On June 3, 2008, the USPTO announced proposed fee increases which would go into effect on October 1, 2008 (73FR 31655). Since there were several sets of fees, depending on legislative action, we will not post the new fees until they are announced in their final form. A copy of the Notice of Proposed Rulemaking may be found on the USPTO website. 

Note that all patent and trademark office (PTO) fees listed are "Small Entity" fees - for individuals, nonprofit entities and small companies. Double most PTO fees if you do not qualify for Small Entity treatment. See our page "How do I tell if I am a Small Entity?" for more information

For a complete list of PTO fees, large and small entity, look here. A complete copy of the USPTO's fee schedule is also available from their website  

Table of Contents

• Patent Searching
• Utility patents
• After filing your application...
• Provisional applications
• Design patents
• PCT and Foreign Patent Applications based on US patent applications.
• Filing foreign patent applications in the US
• Other services
• Billing and fee policies

The process of searching patents has changed dramatically since our firm began over twenty years ago. The USPTO now offers patent searching capability to the public at http://www.uspto.gov/patft/index.html  In most cases our clients do their own preliminary searches online through that site before they contact us. For that reason, most of our search work is follow-up to a preliminary search done by the inventor. We often quote this service as part of drafting a patent application, or charge hourly to review and/or expand the search strategy and results. 

We can still do complete patentability searches, if you need that service. The cost of a complete patentability search of US patents and published applications starts at $950 for a simple mechanical invention, and is more expensive for more complicated technologies. We would be happy to provide a specific quote for a search of your invention. Please e-mail or call for a quote.

The cost of the search covers the initial consultation, the search report with copies of  the patents and other references we found, a patentability opinion, and a meeting after the search if the inventor requests it. The search fee must be paid in advance. 

Timing: In most cases, we can complete the search in three to four weeks. . 

Rush Searches: We believe we can offer superior service to our clients through being able to actually interact with the inventor before and after the search, so if the time is not a major issue we prefer to do the search ourselves. If there is a need for faster service, we can arrange for a service in Washington to do the USPTO search, with results in two weeks or so. The cost may be slightly higher, depending on the timing. Call or e-mail if you need a quote on a rush search.

Note: this section deals with Patentability Searches - that is, a search for patents which would affect the patentability of your invention. Infringement and validity opinions (does your product infringe a given patent?) or clearance opinions (does your proposed product potentially infringe any currently valid US patent?) are much more expensive and time consuming. See "other services" below for rates. 

• Fee Quote: We will provide a firm quote for your application once we've had the opportunity to review your written disclosure. The actual fee which you will be quoted after we review your disclosure will vary based on the field of the invention, the complexity of the invention, the state of the art, etc. The quote will cover the work through filing the patent application, including one round of revisions to the draft. Additional drafts are covered within the quote if they are necessary to prepare the finished application based on the disclosed invention, but not if the nature of the invention has changed or if you decide to add more or different embodiments beyond those initially described. If the invention is a "work in progress", requiring many revisions to the application as the invention evolves, this work will be considered outside the quote, and you can expect to spend much more.  
  
• Hourly Rate: You will be charged for the time spent in preparing and filing the application at the hourly rate of the attorneys or agents working on the case. Hourly rates range from $225 (agents) to $325 (partners). We can provide an estimate of cost on this plan, but it should be understood in advance that an estimate is just that - an estimate, not a cap or firm quote. What you will pay is the actual time spent times the hourly rate(s) of those spending the time. 

Most of our individual and small business clients prefer the fee quote approach, while large corporations prefer hourly billing. On average, the fixed fee might be slightly higher than hourly rate, but you avoid the risk that the time spent exceeds the estimate. We feel that for the less experienced inventor this provides the best service, since we can expend the time needed to work with the client without increasing the cost unduly. It's your choice. 

The following fees are broad ballpark estimates based on past experience, and assume that you have supplied a detailed description and (if appropriate) drawings of your invention. 

• Mechanical or electrical invention of average complexity: $4,000-8,000.
• Complex electronic or computer inventions: $6,000-10,000.
• Biotech or Chemical inventions may be expected to cost upwards of $7,500 with the required DNA sequence listings, etc.
• Internet Business Method inventions - $6,500 to $9,500. Note that these applications are encountering longer than normal processing delays in the Patent Office, due to the huge volume being filed and the sensitivity of the PTO to criticism of some recently issued patents.

To some degree, the cost of preparing the application is under your control - the more work you do before we start, and the better thought-out your disclosure is, the less time we have to spend drafting the application, and hence the lower the fee will be. Put another way, the closer what you give us is to a finished patent, the better. 

Allow 2-3 months for preparation of application. Faster service is possible, if there is a need, but may cost more.

Patent Office Fees: When the application is filed, certain fees are due. Note that the fees below are for "Small Entities" (individuals, nonprofits, companies with under 500 employees). If the applicant is a "large entity", or has licensed rights to a "large entity", most of these fees are doubled. If you are not certain if you qualify for "small entity" treatment, see our "how to" pages.  A full Patent Office fee schedule is available on this website.

For filing any utility application, the following fees must be paid when the application is filed: 

• Basic Filing fee: $155 for up to 20 claims, including 3 independent claims.
• Search fee: $255 
• Examination fee: $105 

Additional fees, as required: 

• More than 20 claims: For each claim over 20, add $25. 
• More than three independent claims: For each independent claim over 3, add $105.
• If there are any multiple-dependent claims add $180 ($185) (use of multiple dependent claims is not recommended)
• Long applications: If the application is over 100 pages, add $130 per additional 50 pages. 

Assignment: If your application is to be assigned (that is, it will be owned by someone other than the inventor(s)), add $175 legal fees and $40 recording fee per application or patent being assigned. 

Electronic Filing: Brown and Michaels began e-filing applications within a week after EFS-web became available, and we are now e-filing all of our filings which can be filed electronically.  Currently, EFS-web supports filing of most US provisional, utility, and design applications, and national and international stage PCT applications. Most prosecution activities such as filing responses to office actions, IDS's, and payment of issue and maintenance fees, can also be done through electronic filing. The cost of e-filing is, at most, the same as conventional filing - you save the Express Mail postage to mail the application, and (for small entities, only) there is even a $75 discount in the PTO basic filing fee for new applications.   

There are advantages to electronic filing:  

• The documents are on file immediately, and we can check within a few hours on the USPTO PAIR system and see the "papers" on file in the PTO. If there are problems, they can be corrected immediately. 
• For new applications, you get an instant filing acknowledgement receipt with a serial number, so assignments can then be e-filed immediately instead of having to wait up to four or six months for a paper filing receipt. 
• This should get your application to the Examiner faster, since there will not be any need to have the paper scanned by USPTO contractors. Office Action replies filed through EFS-web should appear immediately on the Examiner's desk, without having to go through Mail Room or Tech Center sorting. 
• There should be fewer errors due to scanning or data-entry problems, since there should be no scanning or manual entry of data - the e-filed application is generated electronically from the original PDF files and a special fillable PDF Application Data Sheet.
• The application can be e-filed on a holiday, or after the Post Office has closed for the day, so last-minute filings will not miss their deadlines. (But please, don't put this to the test - we really appreciate having some notice, and if the USPTO's server is down or there's an Internet glitch, you'd be out of luck).   

Some filings cannot be done through EFS-web, as it is currently configured.  Among other, less common, things, the following cannot be e-filed:

• Any application which requires color or photographic drawings
• Plant patent applications
• Some prosecution paperwork where the original needs to be filed in the USPTO - certified copies of some foreign applications, for example.

If you have any questions on e-filing, feel free to ask Brown & Michaels. 

After your application is filed...

"Patent Pending": Total elapsed time from application to issued patent is currently averaging about 18-24 months (longer for internet business applications). During that time you can claim "patent pending" status. 

Information Disclosure Form: The USPTO requires the filing of an Information Disclosure Form with copies of all relevant publications (patents or otherwise) known to the inventor. The IDS is usually filed after receiving the official filing receipt from the USPTO, about three months after filing the application. Our fee for preparing and filing the IDS is $300, plus $5.00 per reference. There might be additional fees from document suppliers, if you cannot supply a copy of a reference and we need to procure it elsewhere. We strongly recommend that you provide us with copies of all publications you know about before we file the application (preferably, before we prepare the first draft). Note that if you become aware of any references which are relevant to patentability during the pendency of the patent, for example if a foreign patent office cites patents against a foreign counterpart of the US application, a Supplemental IDS should be filed with the references. 

Office Actions: About 9-18 months after you file your application, your application will be examined by a Patent Examiner, and almost always will be rejected to some extent (85% or more of applications receive at least one office action). The rejections may be as to matters of form, or the Examiner may have found patents in his search which he feels are identical to your invention, or which might render your invention obvious. 

You will have 3 months to respond to the Office Action by amending the claims, arguing against the rejections, or both. It is not possible to have a set fee for such responses, because the office actions vary so widely in content. Our fees for preparing a response are based on our time - if possible, we will provide a quote for responding to an office action when we send the action to you. 

As a very general ballpark estimate, a response to a relatively uncomplicated office action is usually in the $800-$2,000 range. If there are a large number of claims to amend, or many references cited by the Examiner, or if we need to prepare affidavits from experts or have personal interviews with the examiner, or if appeals, etc. are required, there will be additional time and PTO fees involved, which are impossible to estimate in a general way. 

Finally, of course, there is no guarantee as to the number of times which we may need to respond to the Patent and Trademark Office (USPTO), or if it may become necessary to appeal a rejection, or if your patent application will ever issue as a patent at all.

Note that the 18 months is measured from the earliest filing date in the history of the application, so if you filed a provisional application first, the utility application will be published 18 months after your provisional filing date. 

Non-Publication: You may request that the application should not be published. However, you may only make this request  at the time of filing the application, and only if the application has not been, and never will be, filed in a foreign country which requires publication, or through the PCT. If you later change your mind and file foreign or PCT applications, you must inform the USPTO immediately or the US application will be abandoned.  

Issue: Once the examiner has determined that the application may issue as a patent, you will have 3 months to pay an issue fee, currently $720. If the application was published, the publication fee of $300 is due with the issue fee.  Legal Fees are $500 for preparation and filing of papers with the issue fee. Allow 3-4 months after paying the issue fee for the patent to issue.

Maintenance Fees: Once the patent issues, it will be valid for up to 20 years from the date of filing the application (from the date of the earliest non-provisional application in the chain, if this is a continuation, continuation in part or divisional application). During the life of the patent, you have to pay periodic maintenance fees to keep the patent from expiring. These fees are currently as follows, but of course, you will have to pay the fees which are in effect when the payment is due. Our office charges a fee (currently $250) for tracking these fees and reminding clients when it's time to pay them, and filing the fee. The currently applicable maintenance fees are as follows: 

• 3.5 years after patent date: $465
• 7.5 years after patent date: $1,180 
• 11.5 years after patent date: $1,955 
  Note: "patent date" means the date on which the Patent Office issued or granted the patent - this date is printed on the patent, usually in the upper right-hand corner of the first page, with the code [45].
• Note that the maintenance fees listed are "Small Entity" fees - for individuals, nonprofit entities and small companies. Double most PTO fees if you do not qualify for Small Entity treatment. See our page "How do I tell if I am a Small Entity?" for more information

Provisional Applications

Because a Provisional needs to be as complete as a "regular" application, if it is to be considered "enabling" (that is, if you can rely on it later for the filing date), if we prepare the application from a disclosure, the cost is not much less than a conventional application. The difference will be made up later, and probably more, when we prepare the conventional application based on the provisional.

Legal Fees: Assuming we will prepare a provisional application which is basically a complete utility application except for the claims, the cost of preparing a Provisional is not much less than that for a normal utility application. The actual fee is based on time spent, and will vary based on complexity of the invention, state of the art, number of revisions required, etc. - as with a utility application (see above) you can choose whether you prefer fixed fee or hourly billing.  The more work you do before we start, the less time we have to spend. 

For a minimal provisional application, where you prepare a disclosure which is as complete as you can make it, and we review and edit the disclosure and file it without major modification, our fee is $1,200

If you want us to take whatever you give us and prepare the necessary paperwork to file it as a provisional application, without review or editing of any kind, our service fee is $975. This includes the service of docketing of the date for filing a utility application and reminding you of the date as it approaches.  

Preparation of Conventional Application based on previously filed Provisional: the cost will depend on how complete the Provisional Application was. If we wrote the Provisional Application, there were few if any changes since the filing, and the provisional application was complete with claims, our charge would be $975 to prepare the forms, refile the provisional as a utility application, etc.

More often, by the time the utility application is filed, there are significant changes and additions to the disclosure, and the inventor has come up with additional embodiments which will require additional drawings. Most Provisional Applications are filed without claims, so it is necessary to write claims, and this often requires revisions to the application and drawings to provide support for the claims you want to file. The sketchier the Provisional Application was, and the more additional material added in the final application, the more the final application will cost - up to the cost of preparing the application from scratch, in some cases, which is why we usually recommend filing the conventional application in the first place. 

In the end, preparation and filing of a utility application based on a Provisional is more like preparing a brand new application based on a fairly good disclosure than just writing claims, and the cost is not much different from that. As noted above, we can either quote a project fee for the work or charge on an hourly basis. Contact us for information on your specific situation.  

USPTO filing fees, drafting, etc., for filing a utility application based on a Provisional will cost as above. 

A design patent covers the novel appearance of a useful item. Because the format of a design patent application is fixed by regulation, the fee for filing such an application is standardized. 

Legal fees for preparation and filing Design Patent Application: $975

Drawing: Since a design patent covers the appearance of an object, it is very important that the drawings are acceptable to the PTO and show the novel features of the object. We usually recommend the use of a professional drafting service - the one we use charges $100-175 per page. 

PTO Fees: The following fees are to be paid at filing:

• Filing Fee: $105 

• Search Fee: $50

• Examination Fee: $65

Office Actions: About 6-9 months after you file your application, your application will be examined by a Patent Examiner, and almost always will be rejected to some extent (85% or more of applications receive at least one office action). The rejections may be as to matters of form, or the Examiner may have found patents in his search which he feels are identical to your invention, or which might render your invention obvious. 

You will have 3 months to respond to the Office Action by amending the application, arguing against the rejections, or both. Our fees for preparing a response are based on time, and are usually in the $700-1,200 range. If affidavits from experts, personal interviews with the examiner, appeals, etc. are required, there will be additional time and PTO fees involved, which are impossible to estimate in a general way. Finally, of course, there is no guarantee as to the number of times which we may need to respond to the Patent and Trademark Office (USPTO), or if it may become necessary to appeal a rejection, or if your patent application will ever issue as a patent at all.

Issue Fee: $410. Legal Fees are $500 for preparation and filing of papers with the issue fee. Allow 3-4 months after paying the issue fee for the patent to issue.

Filing in other countries
based on your US Patent Application

There is no such thing as an "international patent", as such, although there are a few regional patents covering some countries - EPO for the European Union countries, ARIPO and OAPI in Africa, and Eurasian Patent covering Russia and some of the former Soviet republics. You will need to file for a patent in each country in which you will want patent protection. 

A budget of $10,000-$15,000 would be realistic for a single foreign country, other than Canada. Please note that while we do not mark up foreign agents' bills - you are responsible for paying their charges as they bill them - we do charge a fee of $975 per country at the time of filing to cover our time spent corresponding with foreign agents, assembling documents, docketing deadlines and so on. Expect additional costs later on for analyzing and responding to foreign office actions, docketing and paying maintenance fees (annuities), etc. Many countries have extra fees to request examination, and most have annual fees (annuities or maintenance fees) payable during the pendency of the application and/or after the patent issues. 

Europe: If you are interested in filing in three or more European Union countries, significant savings can be achieved by filing an EU patent application through the European Patent Office (EPO). The application may be filed in English. The cost to file is similar to that for filing in one single country ($10,000-$15,000). Once the EPO patent issues, it may then be registered in those European countries in which you will want protection, and will need to be translated into the appropriate languages for those countries. Additional costs of $3,000-5,000 per country may be expected at that time (translation costs are a major part of this), and maintenance (annuity) fees are due in both the EPO and most European countries.  

If your application is in the fields of biotechnology, telecommunications or business methods, special rules might apply, and some such applications are not accepted by the EPO - we can advise you (with help from our European agents) if your invention falls into these fields. 

The cost to file a PCT application is approximately $4,000, mostly in government fees - contact Brown & Michaels for a specific quote on your application. 

Please note that Brown & Michaels (in fact, any US patent firm) can only file PCT applications for US nationals or residents. All others must file PCT applications in the WIPO office in the Hague, or in the country in which they are nationals or residents, using agents qualified in that country. Also, you can only file through the PCT if you are a resident or national of a country which is a member of the PCT. While there are over 120 countries who are members of the PCT, not all are - check if your country belongs to the PCT before considering PCT filings. 

Exchange Rate Buffer: Most foreign agents expect to be paid in their home currencies, but our clients pay us in US Dollars. This will always be a problem because exchange rates will differ between the time the agent's bill is prepared and the time the bill is paid. It is your responsibility to pay the agent the full amount due in whatever currency they request - we cannot insure against unfavorable shifts in exchange rate. Therefore, if a foreign agent sends an invoice in other than US Dollars, we will add 20% to the equivalent US Dollar amount of the agent's bill at the exchange rate on the day it is received, as an exchange rate buffer to allow for shifts in exchange rates. Once the fee is actually paid to the foreign agent, any overpayment will be applied to other outstanding fees, or if there are none, refunded or held against future fees at your option.  

We can file US counterparts to foreign patent applications, and handle the US National Phase of PCT applications filed in other countries. Patent applications written for other countries, or originally filed in other languages and translated, will usually need revision to meet US Patent Office standards, especially in the claims section. 

Some clients prefer us to file their applications as they were filed in their own countries, using translations prepared by their translators, and have us do nothing more than review the claims for form and obvious mistranslations. Others prefer to have us essentially rewrite the application in colloquial technical English and US claim form and structure. We can provide either form of services, or an in-between level, in which we review both the claims and the specification (description) and drawings, and "clean up" the translation as needed, but not actually rewrite the application. Our fees for these services will depend upon what level of services you request.

We will provide project quotes on individual cases, when we have seen the foreign application and can properly estimate the work involved. If you are requesting a quote for National Phase filing of a PCT application, be sure to provide the PCT publication number (WOxxxxxx) when requesting the quote - we can get a copy of the PCT publication online to help us estimate the cost. If the foreign application is in another language than English, please indicate how many claims there are, and how many of the claims are independent, if possible, so that we can calculate the USPTO filing fee correctly. 

• Initial Consultation: $100 - Note: if a search and/or application is ordered, this will be applied to the fees for those services.
  
• Recording Assignments and other documents: If patent or application is to be assigned, add $200 legal fees and the USPTO recording fee of $40 per assignment (that is, $40 per patent or application assigned, not per document recorded). The same fees apply to security interests, licenses, etc., which you might want to record in the USPTO. 
  
• Infringement Opinions: If you are concerned that you might be infringing a known patent, or if you have been approached by a patent owner who has accused you of infringement, you will want to get an infringement opinion. We will review the file history of the patent to interpret the claims, and then compare the claims of the patent against your product to see if you are infringing. An infringement opinion can be expected to cost $7,500-25,000 depending on the complexity of the patent and the extent of the file history. 
   
• Validity Opinion: A validity opinion is somewhat related to an infringement opinion, and the two are often combined, but it analyzes the claims of a patent against the prior art (rather than a specific product) to see if any of the claims are invalid. This usually involves reviewing the file history of the patent and doing a prior art search, possibly involving foreign patents and other references which might not have been considered by the Examiner. As with infringement opinions,  a validity opinion can be expected to cost $7,500-25,000 depending on the complexity of the patent and the extent of the file history. 
  
• Clearance Search: A clearance search (or "right to use" search) attempts to find any currently existing and valid patents which might be infringed by a product. The distinction with an infringement opinion is that here you do not know if you are infringing any patents. Clearance searches are seldom done by any but the largest companies because of the very large expense of trying to find any patent which could possibly be infringed. Contact us for a quote if you are considering a clearance search, but be prepared to spend $25,000 or more in such a study.
  
• Other Services are billed at up to $325 per hour, plus expenses, on a time spent basis. We can help you with license agreements, non-disclosure agreements, incorporations, etc.
  
• Trademark Fees and Copyright Fees are on separate fee schedules. The current U.S. Patent and Trademark Office official Patent and Trademark fees are also separately listed.

Billing and Fee Policies

• All fees are due when billed.
• We accept VISA, MasterCard and American Express. If paying by credit card, please provide the card number, security code (3-digit number from the back of the card), expiration date, account name and billing address, and an authorization to charge your card for a specific amount. 
• We can accept payment by wire transfer - e-mail for details. If you are paying by wire transfer from outside the USA, please add $25.00 to the transfer to cover the incoming bank fees. Also, please be sure to include your name and the matter number and/or statement number in the "comments" on the wire transfer, so that we can correctly apply the payment.  
• We can accept payments by PayPal - e-mail for details.
• Amounts unpaid after 30 days will be charged a service charge at the rate of 1.5% per month.
• Returned checks are subject to a $25 fee, plus any applicable bank fees.
• All outstanding patent application fees, including the PTO fees, must be paid before filing of the patent application, unless a payment schedule has been worked out in advance of starting the preparation of the patent.
• All PTO fees must be paid by the client before they are due - we cannot advance fees for clients, by PTO regulations. 
• The charges listed on this page do not include direct out-of-pocket costs incurred on behalf of clients. Clients are responsible for out-of-pocket expenses, such as postage or other express carrier costs, bank fees, telephone fees, copying, draftsman's or foreign agent's fees, etc., in addition to the fees listed above, unless a fee inclusive of such expenses has been agreed to in advance. Expenses are billed at cost - we do not mark up third party bills. 
• Fees are subject to change without notice.

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Brown & Michaels, PC
400 M & T Bank Building
118 North Tioga Street - The Commons
Ithaca, NY 14850
Phone: (607) 256-2000 · Fax: (607) 256-3628
e-mail: bpm@bpmlegal.com

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