Non-provisional patent applications (popularly referred to as ‘utility’ patent applications) claim functional aspects of systems, methods, chemical compositions, and apparatus. They are relatively difficult to obtain, but often extremely valuable. Non-provisional applications must: (1) provide sufficient information to enable one of ordinary skill in the art to make and use the invention (enablement requirement); (2) describe the best way that the inventor knows how to embody the invention as of the filing date (best mode requirement); and (3) provide sufficient information to demonstrate that the inventor was in possession of the claimed subject matter (written description requirement). Non-provisional applications usually cost anywhere from $7,000 to $10,000 or more to search, draft, and place on file with the patent office, and anywhere from $10,0000 – $15,000 or even $20,000 through issuance.
Non-provisional patent applications (popularly referred to as ‘utility’ patent applications) claim functional aspects of systems, methods, chemical compositions, and apparatus. They are relatively difficult to obtain, but often extremely valuable. Non-provisional applications must: (1) provide sufficient information to enable one of ordinary skill in the art to make and use the invention (enablement requirement); (2) describe the best way that the inventor knows how to embody the invention as of the filing date (best mode requirement); and (3) provide sufficient information to demonstrate that the inventor was in possession of the claimed subject matter (written description requirement). Non-provisional applications usually cost anywhere from $7,000 to $10,000 or more to search, draft, and place on file with the patent office, and anywhere from $10,0000 – $15,000 or even $20,000 through issuance.
A provisional is a placeholder patent application. Provisionals are never examined, and expire one year from their filing date. To proceed towards an issued patent, one must file a non-provisional claiming priority to the provisional, within the one-year window from the filing date of the provisional.
Provisionals can be anything from a single paragraph and a hand-drawn figure, up to a full blown (non-provisional) patent application, which for whatever reason is filed as a provisional. The process and the cost very much depend on what disclosure an inventor provides. At one extreme inventors provide only a single sentence to an idea, and at another extreme inventors might provide dozens of pages of disclosure, or even a draft application.
The process and the cost of searching, drafting and filing a patent application also depends on how much prior art needs to be circumvented. The simpler the invention, the harder it is to draft a good application. Sometimes a patent practitioner will file with little or no prior art searching, and sometimes much of the effort in filing a provisional is actually spent searching the prior art to discover what might be patentable. Still further a given idea might be filed as a single provisional, multiple provisionals filed about the same time, or a series of provisionals filed over several months. Bottom line, there is a huge variation in both process and the cost, depending on the circumstances, goals, and strategy of the applicant.
Typically, a provisional costs between $1500 and $4000 to get on file. This compares with a non-provisional application that typically costs $8K – $10K to research, brainstorm, draft, and file. Optional filing with Track One to get a quick office action typically costs an extra $2500 or so in government fees. Most of the time the cost of a non-provisional is greatly reduced by the cost of a provisional to which the non-provisional claims priority.
Design patents are restricted to claiming ornamental (i.e. nonfunctional) aspects of things. The squiggles at the bottom of silverware, for example, could be the subject of a design patent because their only function is decoration. Design patents are relatively easier to obtain, but are difficult to enforce and can often be circumvented. On the other hand, some design patents, such as the rounded edges of an Apple iPhone, have been work hundreds of millions of dollars. Design patents typically cost about $1,000 to place on file, and possibly $2,500 or more through issuance. There are no maintenance fees due for design patents in the US, but they only last 14 years from earliest claimed priority date.
Plant patents cover new and non-obvious varieties of plants, provided the plants are asexually reproduced other than by tuber propagation. This includes sports, mutants, hybrids, and transformed plants. Sports or mutants may be spontaneous or induced. Hybrids may be natural, from a planned breeding program, or somatic in source. While natural plant mutants might have naturally occurred, they must have been discovered in a cultivated area. Algae and macro fungi are regarded as plants, but bacteria are not.
Plant patents cost about $1,000 to place on file, and possibly $2,500 or more through issuance.
The PCT is an international treaty dealing with patent protection. A PCT application is basically a door stop that extends the foreign filing deadline from the usual 12 months under the Paris Treaty, to 30 or 31 months in PCT countries, as measured from the earliest claimed priority filing. PCT applications are examined, and proper use of the PCT process can greatly reduce foreign filing charges. The examiner usually issues a combination Search Report / Written Opinion within 5 – 15 months of the earliest claimed priority date, and an Int’l Preliminary Examination Report (IPER) by about 18 or 19 months. If the applicant pays an extra fee (Chapter II fee), the PCT examiner will consider the applicant’s arguments against the Written Opinion in preparing the IPER.
Although applicants can file international and regional applications, almost all patents are only national in scope. Thus, applicants must obtain patents in each individual country of interest. Applicants file int’l applications (PCT or regional applications) chiefly because (1) doing so pushes back the costs of filing national phase applications, and (2) they provide for a single prosecution rather than parallel prosecutions in each individual country. The main international application of interest is a PCT application, which covers more than 150 member countries. PCT filings cost about $2,500 for previously drafted applications. The main regional applications are filed through the European patent office (EPO), the African Regional Industrial Property Organization (ARIPO), and the Eurasian Patent Organization (includes former USSR states). Regional applications usually cost between $5,000 and $7,000.
Statutory Invention Registrations (SIRs) were filings with the USPTO used to make sure that (a) an inventor gets credit for having invented the technology, and/or (b) blocks subsequent inventors from claiming the invention. The America Invents Act (AIA) repealed the statutory provisions for SIRs, effective March 16, 2013.
Only about 2100 SIR were ever published, all of which can be accessed through the usual USPTO patent database. They are given “H-numbers”-such as H342.