Unless there is an unusual urgency or deadline, preparation of the best possible utility patent application, where no prior provisional application has been filed, for the fee estimated, usually requires about 6 to 12 weeks, providing the client cooperates in providing promptly any information which is needed. Our fee estimates include our fee for preparing the application, draftsman fees, mailing costs, etc. Patent Office filing fees (currently a minimum of $500, if you are a “small entity”, plus fees for claims in excess of 20, plus fees for pages in excess of 100) are over and above our fee estimate. Usually, the client provides one-half the estimate immediately, and the balance at the time the application has been approved for filing. When the application has been filed, the client has a “patent pending”, and may so mark goods containing the invention. Also, many clients, having filed their application, choose at this time to seek licensees, seek capital, do marketing, etc.

After the filing of the application, the Patent Office, normally within about eight to fifteen months after filing, mails an Office Action, to which a response is required within an additional three months. Several months after we respond to the first Office Action, usually, we receive a second Office Action, which also requires a response.

Even for an application on which a patent is allowed and issued, the prosecution period is likely to be at least two years; and the additional cost (over the application costs) to the inventor, including Office Action responses, the Patent Office issue fee (currently $700-$1000 for a small entity) as well as legal fees, through issuance, is likely to be about the same amount as the fee for originally filing the application.

Should the Patent Office mail a “final” rejection of the patent application, there are several courses of action still open (depending on the particular facts), such as an appeal, or the re-filing of the application in the same or an improved form, etc. Of course, the client, at every point in the prosecution, is provided with cost estimates of the next required step, and the client will make the business decision whether or not to proceed. Although there are no guarantees about results, we make the client aware of our opinion of probabilities based upon the prior art thus far uncovered, etc.

After issuance of a utility patent, increasing maintenance fees (beginning at $450 for a small entity) are due at 3 ½ years, 7 ½ years, and 11 ½ years. The penalty for non-payment is early termination of the patent rights (now lasting 20 years from the date the application is filed).

If you have any questions about the “usual course” of a patent application, please do not hesitate to contact us. We can also assist in negotiations, sales, or licensing transactions.